Prof. Jane C. Ginsburg,1 Columbia University School of Law
March 15, 2011

The U.S. Constitution empowers Congress to “secur[e] for limited Times to Authors  … the exclusive Right to their … Writings. 2  Accordingly, the U.S. Copyright Act generally vests creators with the copyright in their works.3  The Constitution makes no explicit reference to authors’ subsequent transfers of their exclusive rights, but the patent-copyright clause’s adoption of the phrase “limited Times” appears to hark back to the policy underlying the dual periods of duration established by the first copyright act, the 1710 English Statute of Anne.4  Parliament there provided that, should the author still be living at the end of the initial 14-year copyright term, “the sole right … shall return to the Authors” for an additional 14-year term.  The statutory reversion of rights evidences Parliament’s awareness that authors would likely assign all their rights during the first term; “return[ing]” the rights to the authors would enable them to profit from their works’ commercial success.5

In the U.S. Constitution, the phrase “limited Times,” and the first U.S. Copyright Act’s implementation of a second 14-year period of copyright conditional upon the author’s survival through the first 14-year term,6 thus suggests that the Framers were similarly cognizant of authors’ alienation of their rights, and similarly sympathetic to authors’ need for a fresh start.  But the Constitution does not otherwise address the scope of authors’ contractual grants.  By the same token, the first U.S. Copyright Act constrained the form of the contract by requiring a signed and witnessed writing,7 but in no way regulated its substance.  While many other countries’ copyright laws contain elaborate dispositions limiting the nature and scope of authors’ contracts in the authors’ interests,8 provisions concerning authors’ contracts in U.S. copyright law remain sparse, nor are they always author-protective.

In earlier columns (“Public Licenses: The Gift That Keeps On Giving” (June 11, 2009), and “Authors’ Contracts: Don’t Give Away the Store!” (Feb. 19, 2009), I addressed some legal and practical issues concerning “viral” contracting, and authors’ bargaining position relative to professional publishers.  I have also discussed authors’ inalienable statutory right to terminate transfers of copyright, see “‘The sole right … shall return to the Authors’: Part II: Implementing Authors’ Recapture Rights Under the 1976 Copyright Act” (Feb. 26, 2010).

This column will consider other features of the 1976 Copyright Act that directly concern authors’ contracts, along with state-law contract rules that supplement the federal regulation.  Relevant provisions of the federal statute relate to authorship status and to conditions of form predicate to the validity of a transfer of exclusive rights (and, by negative inference, to the validity of a license of non exclusive rights).  In addition, in a subsequent installment of IP Viewpoints, I will examine statutory presumptions as to the scope of a transfer.  Because there are very few of these, courts generally look to the general contract law of the states whose law governs the transfer in order to assess how broad a grant the author has made, particularly in the context of modes of exploitation unknown at the time the contract was concluded.

Authorship status

Although in most instances U.S. copyright vests in the work’s creator,9 the statute departs from that default by designating two other kinds of first owners of copyright, employers, for whom the work was created in the course of the creator’s employment, and, subject to certain formal conditions, persons or entities who commission certain kinds of works.10  In both instances the statute denominates the works “for hire,” and, in perhaps cynical deference to the constitutional direction of exclusive rights “to Authors,” bestows upon the employer or commissioning party the status of “author.”11  But a commissioning party acquires this status only if the work falls within one of the nine limitatively listed categories of commissioned works capable of being “works for hire,” and only if the commissioning party signs a written agreement also signed by the creator stating that the work shall be “for hire.”  In other words, if the commissioned work is on the list, then its authorship status becomes the object of contractual transfer.  If the formal conditions are met, then the actual creator would have no rights under copyright.  Moreover, as we will see, the actual creator would enjoy no statutory right to terminate any grant of rights.12

Transfers of rights: formal requirements

The 1976 Act establishes some rules relevant to the validity and scope of transfers of exclusive rights.  Section 204(a) requires that these be in writing, and signed by the transferor.  The 1976 Act, however, sets out no rules regarding the conditions for a valid grant of non-exclusive rights.  Courts have held that these may be oral or inferred from conduct.13  On the other hand, relevant state statutes of frauds, such as those applicable to agreements whose value exceeds $500,14 might nonetheless require certain transfers of non-exclusive rights to be in writing.  Given the author-protective policy of Section 204(a),15 it would be perverse to interpret the 1976 Act’s silence on non-exclusive grants as preempting a state-law requirement of a writing.16  Where the Copyright Act articulates no specific rules regarding copyright contracts, the general contract norms of the state whose law governs the contract, including the statute of frauds, would apply.

Returning to exclusive rights, Section 201(d) specifies that the rights within copyright may be divided and owned separately.  While rights under copyright thus are “divisible,”17 neither Section 201(d) nor any other provision of the 1976 Copyright Act prohibits assignment of the totality of the author’s rights.18  As a result, so long as the agreement is in writing and signed by the author, she can validly grant all her rights, including with respect to exploitations developed after the contract’s conclusion, for a lump sum or even no payment at all.

If the author makes such a grant, the contract will unambiguously convey all her rights.  By contrast, if the contract withholds some rights, or leaves room for doubt as to its scope, the contact will be open to interpretation.  Whether federal- or state-law rules guide that interpretation, and if so, to what end, will be one of the topics examined in the next installment of this column.