NEW RULES FOR USING PUBLIC DOMAIN MATERIALS

Reprinted with special permission from Lloyd J.Jassin, Esq.

NEW RULES FOR USING PUBLIC DOMAIN MATERIALS by Lloyd J. Jassin, Esq.

July 2002

Late last year, the President signed into law the Sonny Bono Copyright Term Extension Act. Under the new law—-which adds 20 years to most copyright terms-—no new works will enter the public domain until 2019. Enacted to ensure adequate protection for U.S. works abroad, the new act restricts access to works published after 1922. As this article points out, passage of the act has changed the rules for using public domain materials-a rich source of quality, inexpensive content for many smaller publishers. Unfortunately, those who rely on such materials will be adversely affected by these new rules.

What is the Public Domain?

Copyright protection does not last forever. That’s why copyright is often called a “limited monopoly”. When copyrights grow old and die, the works they protect fall into the public domain. The public domain (“PD”), therefore, refers, to works that are not protected by copyright. Subject to certain exceptions, public domain works may be freely copied or used in the creation of derivative works without permission, or authorization of the former copyright owners. Besides “expired” copyrights, the following categories of works are not eligible for copyright protection: (i) U.S. Government works, (ii) state judicial opinions, (iii) legislative enactments, and other official documents, (iv) unadorned ideas, (v) blank forms, (vi) short phrases, (vii) titles, and (viii) extemporaneous speeches.

The Proper Use of Public Domain Works

Whenever you rely on the PD status of a work, it is important to make sure that the particular version you want to use is actually in the public domain. Later versions or adaptations (e.g., translations, revisions, illustrated editions) of PD works, may be protected by a separate copyright. Copyright in that later version, relates to the fresh layer of creative material added by the second author. Therefore, it is prudent to use only the original PD version, not any later copyrighted versions without permission or authorization. Because of state and federal unfair competition laws, appropriate disclaimers may also be necessary. Although a work may be in the public domain for copyright

purposes, other forms of protection may be present. For example, book titles and characters can serve as valid trademarks. Likewise, identifiable people may have the right to control the manner in which their name or likeness is used. Similarly, works, such as databases, may be protected under trade secret or contract law.

How to Determine if a Work is in the Public Domain

Knowing when a copyright expires will allow you to take advantage of the abundance of material found in the public domain. Bear in mind, different rules apply to works created before January 1978, and those after. Pre-1978 works are governed by the 1909 Copyright Act, and may be protected for up to 95 years, provided certain renewal formalities were followed. Works created after January 1, 1978, are protected under the 1976 Copyright Act, for the life of the author plus 70 years. To determine when a copyright will expire, you must know the answer to four questions: 1. When was the work created? 2. Who created the work? (An individual? Two or more individuals? An employee?) 3. Is the author alive? If not, when did he or she die? 4. When was the work registered or published? And, if the work is a pre-1978 work, it may be necessary to determine whether the copyright owner filed a renewal copyright.

New Rules for Works Created on or After January 1, 1978

For works created on or after January 1, 1978, which were previously protected for the life of the author plus 50 years, the newly amended copyright term is now the life of the author plus 70 years. If two or more authors prepare a work as a joint work, the copyright will now expire 70 years after the death of the last surviving author. Copyright in works for hire, anonymous and pseudononymous works, now last for 95 years from first publication, or 120 years from the date of creation, whichever expires earlier.

New Rules for Works Created Before January 1, 1978

Works created before January 1, 1978, were previously protected for a total of 75 years, provided, certain copyright renewal formalities were followed. The new law amends the Copyright Act to extend the term of protection for works currently in their renewal term from 75 years to

95 years. Under the new law, any work published—or registered—in 1922, went into the public domain on January 1, 1998. Works published in 1923 that would have otherwise fallen into the public domain on January 1, 1999, will now remain protected until January 1, 2019. Therefore, any work published prior to 1923 is now in the public domain.

Copyright Renewal: Another Layer of Complication

Before January 1978, the duration of all copyrights was split into two consecutive terms. Under the 1909 Copyright Act, copyright only lasted 28 years from the date the copyright was originally secured. However, the copyright was eligible for renewal during the last (28 th) year of the initial term. If renewed, the copyright was extended an additional 47 years for a maximum of 75 years. If the renewal requirement was not complied with, the work fell in the public domain. For example, copyright protection for Frank Capra’s classic film, “It’s a Wonderful Life” (1946) was lost in 1974, because someone inadvertently failed to file a copyright, renewal application with the Copyright Office during the 28 th year after the film’s release or publication. In 1992 Congress amended the laws to make copyright renewal automatic. Today, any copyright secured after January 1, 1964 is renewed automatically. For copyrights secured before January 1, 1964, but not timely renewed, copyright protection expired at the end of their 28 th calendar year, despite passage of the automatic copyright renewal law in 1992.

Unpublished and Uncopyrighted Works Created Before 1978

Works created before January 1978 (including very old works), but neither published nor copyrighted are subject to special rules. These works include unpublished diaries and manuscripts found in attics and trunks.

Copyright in these works lasts for the life of the author plus 70 years (or 95/120 years for works for hire), but in no case will their copyrights expire before December 31, 2002. As an incentive to get these unpublished works published, if they are published before December 31, 2002, as a bonus, they are guaranteed at least 45 years of protection (until December 31, 2047). Before passage of the Copyright Term Extension Act, the bonus term only ran until December 31, 2027. Thus, if scholars were to locate an unpublished sonnet by William Shakespeare written in 1616, the year he died, it would remain protected, until, at least, December 31, 2002. And, if the sonnet was published before December 31, 2002, it would be guaranteed additional protection until December 31, 2047.

Does the New Law Restore Copyright Protection to Works that are already in the Public Domain?

No. Works by authors that are already in the public domain because of a pre-March 1989 failure to include a proper copyright notice, or failure to renew a pre-1964, do not receive retroactive protection under the new law. Similarly, works published before 1923, do not receive retroactive protection, and remain in the public domain.

Beware! Many foreign works that were previously in the public domain for failure to comply with technical requirements of United States law (including copyright notice and renewal requirements) were restored to copyright in 1996 under the GATT and NAFTA international trade treaties. In order to be restored, the foreign work had to be under copyright in the “source” country, and not first published in the United States. Revived works, which are no longer in the public domain, cannot be used without permission of the copyright owner.

Termination of Publishing Agreements Under the New Act

The Copyright Act is very paternalistic toward authors (and their families), granting them a second chance to make a better deal with publishers. Under the Copyright Act, an author, or his or her heirs, has a chance to renegotiate the terms of the sale or licensing of their copyrighted works (other than works-made-for- hire). For example, under the two-term system of the 1909 Copyright Act, at the end of 56 years from the date of publication, authors may terminate their publishing agreements, by serving advance written notice upon their publisher at least two years (but not more than ten years) prior to the effective date of the termination. The termination provision allows authors the opportunity to bargain for the benefit of a 19-year term extension provided under the 1976 Copyright Act. Under the Copyright Term Extension Act, 20 years have been added to that 19-year term extension, for a total copyright term of 95 years (28 + 28 +19 +20 = 95). Under the new Act, subject to certain exceptions, an author may terminate a pre-1978 license agreement, anytime during five years beginning at the end of 75 years from the date the copyright was originally secured. This provision allows authors who missed the opportunity to recapture the 19-year term extension provided under the 1976 Copyright, to reap the benefits of the 20-year windfall afforded under the 1998 Copyright Term Extension Act. Keep in mind that special rules apply to derivative works, such as motion picture versions of books. It is also important to note that works-made-for-hire, and grants made by will, cannot be terminated.

Works in the Public Domain for Failure to Affix Proper Copyright Notice

Once upon a time, works published with an improper copyright notice (i.e., the little c in a circle), went into the public domain upon publication. Many works now in the public domain are there because of inadvertent publication without notice. However, since March, 1, 1989, copyright notice is no longer required. Be aware, that if notice was omitted in error on copies distributed between January 1, 1978 and March 1, 1989, copyright was not automatically lost, if certain preventive measures were taken to cure the oversight.

Conclusion

If you are trolling the public domain for works to reuse, or republish, be aware that there are many traps for the unwary. If you are unfamiliar with the intricacies of copyright law, you should consider hiring an intellectual property attorney or qualified rights clearance person. While there are still PD gems out there, be aware that all that glitters may not be gold. As suggested by this article, licenses may still be needed from rights holders as well as identifiable persons.

NOTICE: This article represents copyrighted material and may only be reproduced in whole for personal or classroom use. It may not be edited, altered, or otherwise modified, except with the express permission of the author. This article discusses general legal issues of interest and is not designed to give any specific legal advice pertaining to any specific circumstances. It is important that professional legal advice be obtained before acting upon any of the information contained in this article.

LLOYD J. JASSIN is a New York-based publishing and entertainment attorney in private practice. He is coauthor of the bestselling Copyright Permission and Libel Handbook: A Step- by-Step Guide for Writers, Editors and Publishers (John Wiley & Sons, Inc.), available at bookstores or at www.copylaw.com . Mr. Jassin has written extensively on negotiating contracts in the publishing and entertainment industries, and lectures frequently on contract and copyright issues affecting creators. He is counsel to the Publishers Marketing Association and Vice Chair of the Small Press Center. He may reached at Jassin@copylaw.com or at (212) 354-4442. His offices are located at 1560 Broadway, Suite 400, New York, NY 10036.

© 1999 – 2000. Lloyd J. Jassin. All Rights Reserved.

This article originally appeared in the March 1999 issue of the Publishers Marketing Association (PMA) Newsletter.