Prof. Jane C. Ginsburg,1 Columbia University School of Law
April 20, 2011

This is the second of two columns on authors’ contracts and the U.S. copyright law.  (For the first see Part I.) In this column I will address copyright rules governing the scope of the rights that authors may grant.

General presumption regarding interpretation of the scope of the grant

The combination of the 1976 Copyright Act’s provisions for divisibility and signed writings may (in this writer’s view, should) justify a presumption that, when the author assigns something less than all her rights, the scope of a grant made in or after 1978 should be interpreted narrowly.2   Because Congress has now clarified that “any of the exclusive rights comprised in a copyright, including any subdivision of any of the rights specified by Section 106, may be transferred … and owned separately,”3 it should follow that the grant of any of the exclusive rights, for example, the right to reproduce the work in copies,4 does not, absent express statement in the signed writing, carry with it the right to perform the work publicly.5

By the same token, given the statute’s specification that “subdivisions” of exclusive rights can be the object of a transfer, it should follow that the grant of the exclusive right to perform a work through one medium of communication, such as broadcasting, does not extend to other media, such as webcasting.  The author may, of course, authorize exploitation in multiple media, but if the contract does not clearly cover the exploitation at issue, the proposed presumption would exclude it from the scope of the transfer.

Specific statutory presumptions

The 1976 Act does set out two specific presumptions concerning grants of copyright.  First, Section 202 establishes a distinction between transfer of ownership of a material copy of a work (including the original or sole physical rendering of the work), and ownership of the incorporeal rights under copyright.  Section 202 provides that “Transfer of ownership of any material object, including the copy or phonorecord in which the work was first fixed, does not of itself convey any rights in the copyrighted work embodied in the object….”6   Thus, a separate agreement is required to transfer rights under copyright.  Moreover, pursuant to Section 204(a), there can be no transfer of exclusive rights unless the agreement is in writing.  As a result, not only is the author presumed not to have alienated her incorporeal rights, but also the showing required to overcome that presumption is particularly high, especially for a grant of any exclusive rights (even as infinitesimally subdivided).

Second, in the case of contributions to collective works such as newspapers and other periodicals, Section 201(c) reserves the copyright to the author of the contribution.  In lieu of a de jure transfer of rights to the publisher of the collective work, Section 201(c) adopts the lesser course of a presumption: “In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.”

The Supreme Court construed the meaning of the revision privilege in its decision in 2001 in the case of New York Times Co. v. Tasini.7   This was a battle between the titans of the newspaper and magazine publishing business and the president and members of the National Writers Union on behalf of the community of freelance authors, who write occasional articles for a variety of such newspapers and magazines.  Publishing grants were made years before, when hardcopy publication was the principal (indeed the only) form of distribution of the writers’ articles.  The writers objected, and asked for additional remuneration, when the newspapers and magazines placed their articles with digital distributors, which operated over the Internet and on CD-ROMs.  Because nothing had been said about electronic publication in the pertinent contracts, the question became whether there was, or was not, a statutory presumption that such publication rights were to be deemed transferred to the New York Times and other publishers by virtue of the revision privilege.

The Supreme Court took the freelance authors’ side of the matter, holding that a user’s capability to make a direct and individualized retrieval of a particular article took that article out of the context of the initial hardcopy publication, so that there was no “revision” thereof.  The same determination had been made by a court of appeals with respect to the retained rights of freelance photographers in their photos.8   It has also been held that a journal’s statutory privilege does not embrace the making of even facsimile copies (and presumably digital copies) of individual articles for delivery to customers.9   By contrast, when the digital version preserves the selection and arrangement – the “context” of the print original – the digital iteration has been deemed a “revision.”10

Caselaw construing the scope of the grant

The Tasini controversy was just one example of how the development of new technologies of communication and entertainment has provoked disputes concerning the extent to which contractual agreements negotiated before the electronic or digital revolution should be interpreted so as to transfer new rights of commercial exploitation to publishers – or whether those rights should be understood to have been retained by the author.  Although, at least with respect to contracts concluded before the effective date of the 1976 Act, this issue is governed principally by conventional rules of contract construction (and thus of state law), federal statutory rights remain at issue.

Of course, this is not a new problem.  Grants by authors to stage producers of the right to dramatize yielded litigation years later when the producers asserted that they had also impliedly taken the right to create screenplays for theatrical motion pictures, both silent and talking.11  And in the 1976 decision in Bartsch v. Metro-Goldwyn-Mayer, Inc., the Court of Appeals for the Second Circuit held that a 1939 license of motion picture rights to a play included the right to exhibit the resulting motion picture on television.12  The court there endorsed a pro-transfer philosophy, stating that “if the words are broad enough to cover the new use, it seems fairer that the burden of framing and negotiating an exception should fall on the grantor,” at least when the new medium is not completely unknown at the time of contracting.13   This approach (typically in tension with the traditional maxim that contracts are to be construed against the drafter) tended to work against the author.

With the advent of convenient technologies for personal recording and home viewing, the question arose whether transfers of rights to incorporate a work or a performance in a motion picture carried with it as well a transfer of the right commercially to disseminate the film in the form of videotapes for personal use.  The decided cases are rather inconsistent, with the Second Circuit Court of Appeals adhering to the Bartsch approach, to the disadvantage of the author or performing artist,14 while the other major copyright court, the Ninth Circuit, has tended to adopt a more author-protective presumption, and to place the burden of unclear contract language upon the recipient of the grant – generally the drafter of the instrument and thus generally the motion picture studio.15

Much the same tension between the respective rights of the author and her grantee has played out in the more recent move to digital media of commercial dissemination.  Book authors, having decades ago transferred publication rights to well-known hardcopy publishing houses, have attempted to transfer to other companies the right to distribute their works electronically, through Internet delivery.  In Random House, Inc. v. Rosetta Books, LLC,16 the federal trial court in the Southern District of New York – with the later endorsement of the Second Circuit Court of Appeals – ruled that the authors’ transfer of the right to publish in “book form” did not carry such e-book publication rights, so that the authors could renegotiate with electronic publishers and make what was presumably a more favorable deal than they had with their hardcopy publishers.  The district judge’s analysis rested almost exclusively on an interpretation of the language of the original publishing contract with the established hardcopy publishers, against the background of then-prevailing practices in the publishing industry, with very little reference made to the federal statute, but with some suggestion that, in this instance, the authors may have been better placed than the traditional publishers to exploit the new medium (by licensing a specialized publisher).

Statutory restrictions on alienability

The U.S. Copyright Act includes few restrictions on alienability.  The only limitations on what the author may grant by contract concern moral rights and the right to terminate transfers of economic rights.  We have already examined the “any agreement to the contrary” proviso of the statutory termination right, here. With respect to moral rights, it bears emphasis that only the creators of “works of visual art” (very narrowly defined as the original or a limited edition, signed and numbered, of a painting, print, or sculpture, or of certain photographs)17 enjoy statutory moral rights of attribution and integrity.  Thus, for most authors, the restriction is irrelevant: It does them no good to limit the alienability of rights they do not enjoy in the first place.

Under the Visual Artists Rights Act,18 moral rights are not transferable but they are waivable.19   The waiver provision is probably consistent with Article 6bis of the Berne Convention.  While that treaty specifies the independence of moral rights from economic rights, and further emphasizes that moral rights persist “even after the transfer of the said [economic] rights,” Article 6bis does not clearly prohibit the waiver of moral rights.20   On the other hand, the independence and persistence of moral and economic rights under Berne also implies that a grant of economic rights does not of itself entail a waiver of moral rights.  Rather, respect for the independence of moral rights suggests that any waiver, to be effective, must be stated with sufficient specificity to distinguish the moral rights waiver from affirmative transfers of economic interests.  Were a federal visual artists’ rights law to permit art owners and exploiters to shake off artists’ rights by means of a blanket, boilerplate waiver, then the United States would be honoring the precepts of the Berne Convention only in the most formalistic, indeed cynical way.  Happily, the law requires that any waiver be specifically set forth both respecting the work and the owner’s use.

The law protects artists by permitting waiver only

if the author expressly  agrees to such waiver in a written instrument signed by the author.  Such instrument shall specifically identify the work, and the uses of that work, to which the waiver applies, and the waiver shall apply only to the work and uses so identified.21

This language makes clear that an “all my right, title and interest” sort of waiver would be void.  The law thus denotes sensitivity to the specificity of moral rights, while introducing a degree of flexibility toward art-object owners and/or copyright exploiters permissible under Berne.  Moreover, under the law, the burden of securing a waiver falls on the party other than the artist.  If the art object’s owner, or the grantee of the copyright in the artwork, fails to obtain a writing from the artist executing the waiver, then the artist retains all moral rights.  It is up to the other party to secure the artist’s written agreement to change the initial allocation of moral rights.  Absent this legislation, most of an artist’s moral rights protections could be obtained, at the artist’s initiative, only by contract.  Because many artists may be poor negotiators, or may conduct their business rather informally, requiring artists to “contract into” moral rights often as a practical matter denied them the exercise of moral rights.  With VARA, the default is reversed, and thus the very informality of artwork commissions may work to artists’ advantage, for a handshake deal or a vague writing will not affect the waiver.  The law’s reversal of the initial position may therefore carry considerable favorable consequences for artists.22

Arguably, the requirement of specific waivers will in the long run simply enhance lawyers’ employment opportunities, for lawyers will be engaged to devise language sufficiently comprehensive and detailed to fend off every conceivable exercise of moral rights.  This would defeat the purpose of compelling artists and artwork owners to reflect on and negotiate over the genuine need to alter or destroy the work.  In anticipation of this possibility, the law intended to afford artists an additional safeguard by instructing the United States Copyright Office to conduct a study of the practice developed under the law’s waiver clause.23   The study found that almost a quarter of artists surveyed knew of artists asked to waive their moral rights, but ultimately concluded that the lack of awareness among authors and users about VARA rights made it too early to assess contractual practices in response to VARA.24   Despite Congress’s apparent intent to monitor the issue, the Copyright Office has not formally reported on moral rights waivers since issuing its original report in 1996.