Posted by Post Authored by Ashley Rovner Watson
British Reversionary Rights allow an author’s heirs to automatically regain control of copyrights 25 years after the author’s death.[1] These sneaky provisions, found in the United Kingdom, Canada, and other British territories, often slip past lawyers and copyright heirs, because copyrights are either transferred by contract or entered into the public domain 70 years after the author’s death. This right applies even if there are contracts giving third parties ownership rights for 25 years after the author’s death.[2] While there are few recent cases dealing with reversionary rights, those numbers could increase in the near future.[3] Comparing U.S. copyright laws to the U.K.’s laws shows a stark difference in how copyright transfer and termination functions around the world.
In the U.S., authors retain ownership of their copyright(s) for their lives plus an additional 70 years.[4] During that time, an author may transfer copyright ownership to another person or entity.[5] However, if that copyright owner transfers their interest, they may terminate the transfer after 35 years to get a “second bite at the apple.”[6] Copyright ownership then reverts back to the original owner.[7] Reversionary rights also allows authors, songwriters and recording artists to terminate poorly bargained transfers made in the beginning of their careers.[8]
In the U.K., copyright reversionary rights were first illustrated in the Copyright Act of 1911.[9] The Act’s goal was to eliminate “imprudent decisions” authors made as “weaker part[ies]” during copyright contract negotiations.[10] Notably, this reversionary right required neither the grantee to receive timely notice of the reversionary right nor the notice filing itself.[11] However, when the U.K.’S 1956 Copyright Act replaced the 1911 Copyright Act, reversionary rights were held to apply only to grants made by the author on or before June 1, 1957, and is still in effect today.[12] As a result, unless the author’s heirs knew that the copyright assignment automatically reverted back to them 25 years after the author’s death, then they do not know that the assignee is unfairly exploiting their copyright.[13] If authors’ heirs know about this reversionary interest, any contracts made by the author that extend ownership of copyright assignments more than 25 years past the author’s death are null and void. Therefore, copyright ownership can automatically revert to the author’s heirs if the author was the first copyright owner of the work, the author made the terminating grant, and the grants made to the author’s heirs are valid under the 1911 Copyright Act.[14]
While reversionary rights are not included as a part of the bundle of rights a U.S. copyright owner has, that owner could sue for copyright infringement in the U.S. or in former British Commonwealth countries that apply the reversionary right.[15] But, in order to even discuss reversionary rights in U.S. cases, the copyright at issue must be registered in countries that use the reversionary right. As a result, copyrights that are registered only in the U.S. are still bound by U.S. law and do not have the reversionary right. Because copyright holders have a reversionary right in the U.K. and other former British Commonwealth territories, contracts that alter those specific copyrights can be voided. Thus, it is of the utmost importance to counsel your clients and ensure they are the proper owner of their copyright around the world.
[1] Paul Torremans, Reversionary Copyright: A Ghost of the Past or a Current Trap to Assignments of Copyright?, 2 I.P.Q. 77, 78 (2012), http://eprints.ucm.es/15652/1/TRAP_-_IPQ_2012-2.pdf.
[2] Lisa Atler, Copyright Reversions: Protecting Your Musical Copyrights (Sept. 26, 2016 at 2:45 pm), Wixen Music Publishing, Inc., http://www.wixenmusic.com/publishing-101/copyright-reversions/
[3] Bob Tarantino, Long Time Coming: Copyright Reversionary Interests in Canada, Développments récents en droit de la propriété intellectuelle 2013, volume 275, at 1.
For more information on United States’ cases discussing reversionary rights to heirs of copyright holders, see In the Matter of the Estate of Igor Stravinsky, Chester Music Ltd., v. Schott Musik International GMBH & CO. and Denise Stravinsky et al., 2003 WL 25584873 (N.Y.A.D. 1 Dept.) (Appellate Brief); Melodie Hollander v. BMG Music Publishing, Inc. et al., 2003 WL 23983767 (Cal. Superior) (Trial Pleading); Elvis Presley Enterprises, LLC, et al. v. Carlin Music Corporation, 2006 WL 4048425 (S.D.N.Y.) (Trial Pleading).
[4] 17 U.S.C. § 302 (1976).
[5] 17 U.S.C. § 204 (1976).
[6] 17 U.S.C § 203 (1976); Adam Holofcener, The Right to Terminate: A Musicians’ Guide to Copyright Reversion, Future of Music Coalition (Sept. 26, 2016, 10:05 AM), https://futureofmusic.org/article/fact-sheet/right-terminate-musicians%E2%80%99-guide-copyright-reversion.
[7] Holofcener, supra note 6.
[8] Id.
[9] Torremans, supra note 1, at 78.
[10] Id.
[11] Alan J. Hartnick, Stanley Rothenberg: Final Thoughts on the Dickens Provision, 54 Copyright Soc’y U.S.A. 565, 565.
[12] Id.; Atler, supra note 2.
[13] Torremans, supra note 1, at 79.
[14] Atler, supra note 2.
[15] Hartnick, supra note 11, at 567.
About the Author:
Ashley is an Associate Attorney at Amin Talati Upadhye, LLP. She is a part of ATU’s trademark group, working exclusively with trademark preparation, application, registration, and maintenance both domestically and internationally. In previous positions, Ashley also worked on trademark matters before the World Intellectual Property Organization, successfully drafting and arguing various Uniform Domain-Name Resolution Policy complaints. In addition, Ashley helped draft settlement agreements, motions for default judgment, and substituted service of process in trademark infringement matters.
As an avid lover of music and Broadway shows, Ashley is a member of the Lawyers for the Creative Arts, with a keen interest in learning more about the music and entertainment law industries. She is a co-chair of the Chicago Bar Association’s Young Lawyers Section IP Committee, and is also a member of Chicago Women in IP, the Illinois State Bar Association, and the Intellectual Property Law Association of Chicago.
When she isn’t hard at work with her incredible trademark team, Ashley enjoys learning as much as she can about wine. From attending tastings around Chicago, to attending seminars discussing the wine industry and the intersection of wine and the law, Ashley is very interested in constantly learning more about the nuances of wine making. When she’s not learning about wine, she enjoys playing board games with her friends, playing with her little dog, Lola, and satisfying her never-ending desire to travel all around the world.