Copyright Renewal Rights Must be Transferred with Specificity

Under the 1976 copyright act, artistic works still in their initial term of copyright protection on January 1, 1978 were given two terms of protection.  An initial term of 28 years and a renewal term of 67 years.

Gary Friedrich, the creator of the popular Ghost Rider comic book character first published by Marvel Comics in 1972, sued Marvel claiming copyright infringement of by Marvel for publishing Ghost Rider works after 2000, the expiration of the initial 28 year copyright term for Ghost Rider.  Friedrich claimed that any transfer of his copyright in the works applied only to the first twenty-eight year copyright term, and not to the renewal copyright term.

The District Court granted Marvel’s motion for summary judgment, finding that Marvel had obtained all rights from Friedrich.  On Appeal, Friedrich argued that he did not transfer the renewal copyright term and therefore after the expiration of the initial 28 year copyright term, the rights in the works reverted to him.

On Appeal, the Second Circuit noted that the renewal copyright term is a separate property right,

The renewal term of a copyright is “not merely an extension of the original copyright term but a ‘new estate . . . clear of all rights, interests or licenses granted under the original copyright.'” P.C. Films Corp., 138 F.3d at 456-57 (quoting G. Ricordi & Co. v. Paramount Pictures, Inc., 189 F.2d 469, 471 (2d Cir. 1951)). Its purpose is “to ‘provide authors a second opportunity to obtain remuneration for their works'” and “‘to renegotiate the terms of the grant once the value of the work has been tested.'” Id. at 457 (alteration omitted) (quoting Stewart v. Abend, 495 U.S. 207, 217, 218-19 (1990)).

Moreover, the court noted, while an author may assign his renewal rights during the copyright’s initial term, there is a strong presumption against such a conveyance.

An author may assign his renewal rights during the copyright’s initial term, but “there is a strong presumption against the conveyance of renewal rights.” Corcovado Music Corp. v. Hollis Music, Inc., 981 F.2d 679, 684 (2d Cir. 1993). This presumption may be rebutted by an express assignment of “renewals of copyright” or “extensions of copyright,” or by “general words of assignment,” such as “forever,” “hereafter,” or “perpetual,” if the parties’ clear intent was to convey renewal rights. P.C. Films Corp., 138 F.3d at 457 (quoting Corcovado Music Corp., 981 F.2d at 684-85; Siegel v. Nat’l Periodical Publ’ns., Inc., 508 F.2d 909, 913 (2d Cir. 1974))

The Court of Appeals held that the language used in the Ghost Rider contract was at best ambiguous, in particular as to whether it conveyed renewal rights.  The court held that, “[t]he contract contains no explicit reference to renewal rights and most of the language merely tracks the 1976 Act’s definition of ‘work made for hire.’ ”

The Court of Appeals there reversed the District Court’s grant of summary judgment finding genuine issues of material fact regarding the parties’ intent to assign renewal rights in the agreement.