Terminating copyright transfers

return
“Return”, by Ldavis (CC BY-SA 3.0)

Someone in your family write something years ago that was a hit? Copyright transfer termination laws might let you get this old copyright back.  

US copyright laws contain certain author-friendly provisions that allow independent authors (authors who did not make their work for hire), who had previously assigned their copyrights, to eventually get their copyrights back.  The underlying idea is to give a second chance to young authors who, through inexperience or poverty, may have initially entered into unfavorable copyright assignment deals.

For example, the 1976 copyright act (17 U.S. Code § 203, effective 1978) states that under certain situations (such as if written notice is given 2-10 years in advance), the rights to previously assigned copyrights can be retrieved by the author (or heirs) during a limited 5 year time window that starts 35 years after the initial assignment or publication.

Although since 1978, there have been other substantial changes to US copyright law (e.g. the “Sonny Bono” Copyright Term Extension act of 1998), this 1976/1978 era termination right still exists.

Indeed the concept of author termination rights predates the 1976/1978 copyright act.  Previous copyright acts, such as the 1909 US copyright act, had independent author termination rights as well.  For example, under the 1909 act (in effect until 1977), copyright terms were 28 years, and the author had the option to renew the copyright one time, for a total of 56 years.  During this first renewal period, under certain situations, the author could also terminate his original copyright assignments at 28 years. But no more.

The 1976/78 copyright act changed the copyright term (for works not made for hire) from 56 years to the author’s lifetime plus 50 years, and later the renewal requirement was also dropped. The 1976/78 copyright act changed the author termination rules for pre-1978 works. These days, for pre-1978 works, under 17 U.S. Code § 304, independent authors (or heirs of independent authors) are now given a five-year window, starting at 56 years, to get their copyrights back.

Sound complicated?  This is the simplified version; the reality is even more complex!  For example, what is a “work for hire?” For non-employees, it is a work that someone has commissioned you to do, and these days this commission agreement must be in writing.  However, in the pre-1978 era, companies would try to incorporate “work for hire” clauses into assignments from even non-commissioned authors. The courts did not always buy this, as per a famous Marvel comics case involving Captain America.  Like to get the rights to this?

These rules are so complex that you almost need a computer program to sort through the various options.  Fortunately, this has been done.  The Authors Alliance, in conjunction with Creative Commons, now offers online software designed to give authors at least a rough idea of the feasibility of terminating their earlier copyright assignments.  This software is available at rightsback.org.

Hague international design patents

Hague countries, by L. tak: CC-BY-SA-4.0

The Hague system allows you to use one application to file design patents in many countries simultaneously, but it is quirky and doesn’t work everywhere.

Thinking of filing your US design patent application outside the US?  Although for some countries like Canada, China, and India, you will have to file locally, for Europe (EU), Japan, and Korea, consider using the Hague system.  In either case, think fast, because the deadline is often just six months after your initial filing.

What is the Hague system?  The Hague system (Hague Agreement Concerning the International Registration of Industrial Designs) is a series of international treaties allowing applicants from participating countries to directly register design patents in other participating countries.  If you or your company is not a resident of a participating country, you are out of luck.  You must get international coverage the hard way by finding a local representative and filing with the local patent office.

The US signed up in 2015.  Other countries are also in the process of joining but are not in yet. There are presently 66 countries participating.  So as the map shows, coverage is still rather uneven.

The rules are not totally uniform. The drawing requirements and extent of post-filing examination can vary between countries.  The EU, for example, limits design drawings to a maximum of seven views, but otherwise, acts as a registration system that doesn’t require much subsequent effort.  By contrast, like the US, Japan also requires examination as well, and the applicant must thus do additional activities and pay additional fees.

Unlike US design patents, the Hague system allows for multiple related designs to be registered at the same time in one application.  However for those thinking of gaming the system for US design patents, realize that the USPTO will require you to select just one design, and pay extra to examine any other versions.  Still, if you are feeling indecisive, this is an interesting option to consider.  However, note that the Hague system also publishes all design applications within six months of filing, while the US does not, so there can be less confidentiality.

Hague system registrations must be renewed every five years, and can generally be renewed up to a total of 15 years total coverage. By contrast, after a US design patent has issued, the USPTO will give you 15 years of coverage with no maintenance fees.

Like other patents, the USPTO will accept Hague system patent applications and forward them on to the international office in Switzerland.  This should be the default method for US applicants because even design patents must pass a security review and get clearance before the applicant has permission to apply elsewhere.