Amicus Curiae Brief — Fantasy, Inc. v. Marascalco

Supreme Court brief1992

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Y No. 91-1542

IN THE

me rs Supreme Court of the Anited States

OCTOBER TERM, 1991

FANTASY, INC., d/b/a

JONDORA/PARKER MUSIC,

Petitioner,

VS.

JOHN MARASCALCO, d/b/a

ROBIN HOOD MUSIC,

Respondent.

PETITION FOR WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

MOTION FOR LEAVE TO FILE AND BRIEF

OF AMICI CURIAE TWENTIETH CENTURY

FOX FILM CORPORATION, TURNER

ENTERTAINMENT CO., COLUMBIA PICTURES

INDUSTRIES, INC., and TRI-STAR PICTURES, INC.,

IN SUPPORT OF PETITIONER

WALTER COCHRAN-BOND

Counsel of Record

JON A. BAUMGARTEN

CAROLE E. HANDLER

LOIS D. THOMPSON

PROSKAUER ROSE GOETZ & MENDELSOHN

2121 Avenue of the Stars, Suite 2700

Los Angeles, California 90067

(310) 557-2900

Attorneys for Amici Curiae

(Additional counsel listed on back of cover)

Lawyers Brief Service * Appellate Brief Printers * (213) 613-1013 * (714) 720-1510

OF COUNSEL

PROFESSOR ROBERT A. GORMAN

UNIVERSITY OF PENNSYLVANIA LAW SCHOOL

3400 Chestnut Street

Philadelphia, PA 19104

(215) 898-5000

MARY ANNE HARRISON, ESQ.

Senior Vice President and

Assistant General Counsel

WILLIAM H. LOCKARD, ESQ.

Counsel and Director, Copyright/Trademark

TWENTIETH CENTURY FOX FILM CORPORATION

Administration Building, Room 110

10201 West Pico Boulevard

Los Angeles, CA 90035

(213) 203-1527

ANNE R. GRUPP, ESQ.

Vice President - Litigation

TURNER ENTERTAINMENT CO.

1888 Century Park East, 12th Floor

Los Angeles, CA 90067

(310) 788-6920

JARED JUSSIM, ESQ.

Executive Vice President

VICKI SOLMON, ESQ.

Senior Vice President and

Assistant General Counsel

COLUMBIA PICTURES INDUSTRIES, INC.

TRI-STAR PICTURES, INC.

10202 West Washington Boulevard

Culver City, CA 90232

(213) 280-8000

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MOTION FOR LEAVE TO FILE

BRIEF OF AMICI CURIAE

Applicants' respectfully move for leave to file the

attached brief in this case amici curiae. The consent of

counsel for the Petitioner has been obtained, but counsel

for Respondent has refused consent.

Applicants produce and distribute motion pictures

and television programs. These works are often produced

from or incorporate other works -- plays, books, musical

compositions -- protected by the copyright laws of the

United States. Applicants’ authority to make these motion

pictures and programs or utilize such works is derived from

the validity of the copyrights held by the owners of the

underlying creative works.

The ruling in this case by the Court of Appeals and

the submissions to this Court from the parties address only

the particular interests of those who desire ownership of a

particular renewal copyright. Applicants seek to present

the views of those whose creative works derive from or

incorporate such original works. The ability of Applicants

to utilize these original stories, novels, or musical

compositions is undermined by the holding of the Court of

Appeals. That opinion creates great uncertainty with

respect to the ownership and exploitation of music and

separately copyrighted material that might be incorporated

into such works. Contrary to the clear statutory language,

the Court of Appeals’ ruling requires a renewing author to

live into the commencement of the renewal term

notwithstanding the fact that the author may have already

‘Twentieth Century Fox Film Corporation, Turner Entertainment

Co., Columbia Pictures Industries, Inc., and Tri-Star Pictures, Inc.

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applied for a renewal of the copyright and received a

certificate attesting to this renewal from the Copyright

Office. Applicants will be unable to determine whether the

author will live into the renewed term and experience the

vesting of the renewal copyright in an incorporated original

work, nor will they know with which of the author’s heirs

or successors to negotiate for their rights of exploitation.

TIMELINESS OF THIS MOTION AND

AMICI BRIEF

This Motion and Brief were filed by first-class mail

pursuant to Supreme Court Rule 29.1 and postmarked April

24, 1992. This date is 30 days after the Petition for Writ

of Certiorari was received and docketed by the Clerk of the

Supreme Court on March 25, 1992. Although Rules 37.2

and 15.2 state that an amicus curiae brief must be filed

within 30 days of the actual date of receipt of the Petition

by Respondent, Respondent’s counsel has not ‘been

forthcoming in providing this date. See Declaration of

Carole E. Handler at 44 1-8. After telephone calls to the

Clerk’s Office, Applicants submit that this Motion and

Brief have been timely filed as they have been sent to the

Clerk by first-class mail and postmarked within the 30 day

time period that began with the receipt of the Petition by

this Court.

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CONCLUSION

For the reasons set forth above and in the Petition

for Writ of Certiorari, Amici respectfully request this

Court to grant the Petition and consider on its merits the

issue presented for review.

Dated: April 24, 1992

Respectfully submitted,

WALTER COCHRAN-BOND

Counsel of Record

PROSKAUER ROSE GOETZ &

MENDELSOHN

JON A. BAUMGARTEN

CAROLE E. HANDLER

LOIS D. THOMPSON

Counsel for Amici Curiae

-la-

DECLARATION OF CAROLE E. HANDLER

IN SUPPORT OF

MOTION FOR LEAVE TO FILE

BRIEF OF AMICUS CURIAE

I, CAROLE E. HANDLER, declare:

l. I am an attorney and a partner in the

law firm of Proskauer Rose Goetz & Mendelsohn,

attorneys for Applicants Twentieth Century Fox Film

Corporation, Turner Entertainment Co., Columbia Pictures

Industries, Inc., and Tri-Star Pictures, Inc. The facts

herein are of my own personal knowledge, and if called

upon to do so, I could and would competently testify

thereto.

- It is my understanding of Supreme

Court Rules 37.2 and 15.2 that a potential amicus curiae

has thirty days after Respondent receives the Petition for

Writ of Certiorari -- the same amount of time Respondent

has to oppose a petition -- in which to file its amicus brief

and motion.

3. I directed Michael R. Wilner, an

attorney at my law firm, to contact the company that

printed the Petition to determine on what date Respondent

received the brief. The printer, Lawyers Brief Service,

sent the Petition to Respondent on March 23, 1992, by

first-class mail from Los Angeles, California. The printer

did not request a return receipt showing the date

Respondent in fact received this Petition.

4. First-class mail sent from another

address in Los Angeles generally takes at least two days

(often three) to arrive in my office. Respondent’s

t..

counsel’s mailing address is in a similar commercial urban

neighborhood near my office.

B Mr. Wilner spoke with several

personnel in the Office of the Clerk of the Supreme Court.

They directed him to contact Respondent’s counsel directly

and ask on which date the Petition was received. On April

23, 1992, I telephoned Evan Cohen of the law firm Cohen

and Luckenbacher, attorney for Respondent, to obtain this

information. He told me that there was no stamp or other

marking on the brief to indicate the date on which it was

received. Mr. Cohen stated, however, that, because the

petition had been mailed on March 23, he “assumed” that

he received it on March 24, without providing any support

for this statement.

6. Later that day, Mr. Cohen stated to

me, after expressing his lack of consent to the filing of a

brief amicus curiae by Applicants, that he "knew" that he

had received the Petition on March 24, 1992.

7. Upon further questioning of Mr.

Cohen and his co-counsel by telephone and fax,

Respondent still could offer no proof showing on which

date it received the Petition.

8. Mr. Wilner again called the Clerk’s

Office at my direction. He explained the circumstances in

this matter to the Chief Deputy Clerk of the Court, Frank

Lorson. Mr. Lorson informed us that the Clerk’s Office

received the Petition by mail and docketed it on March 25.

He suggested that, because we were unable to determine a

date certain from Respondent on which it received the

Petition, we could request the Court to find this Motion

and Brief timely filed as it has been filed with the Court by

-3a-

mail within 30 days of the date on which the Court

received the Petition.

I declare under penalty of perjury under the

laws of the United States that the foregoing is true and

correct.

Executed this 24th day of April, 1992, at

Los Angeles, California. 4,

G2bb ET feu Co__

CAROLE E. HANDLER

ide

TABLE OF CONTENTS

Page(s)

re DUS EE kee 5 sk 8 6 6 eae ES 2

URE SO CUE bb cea kaa weak ee 2

EI gk a kia fase eae whch cone ee 5

Peer BOs ak ks ek ke ee 5

A. THE LANGUAGE OF

Ses Oe ssa ie 5

B. THE LEGISLATIVE

1 erate 10

l. Changes in the

Act Over Time ......... 10

2. The Drafting of

2.3, 7. arr err 1]

_ COMMENTATORS .......... 13

D. ee a a a are eke 15

PA ek eee ek en a ee hee 16

oii

TABLE OF AUTHORITIES

CASES

Arlen v. Commissioner of

Internal Revenue,

51.0. COO CSG?) «ck ec examen

Community For Creative

Non- Violence v. Reiid,

490 U.S. 730,

109 S.Ct. 2166,

104 L. Ed. 2d 811

SE See es ee ee

Cresci v. Music Publishers

Holding Corp.,

210 F. Supp. 253

Ceaeee. Ws P90) hk ec eu

Fred Fisher Music Co. y.

M. Witmark & Sons,

318 U.S. 643,

63 S. Ct. 773,

87 L. Ed. 1055

cy Rarer earn aerate ite, xn

Frederick Music Co. v. Sickler.

708 F. Supp. 587

Sees ORME se oul eieleta cue

Marascalco v. Fantasy, Inc.,

953 F.2d 469

Fe Se SES es Se eee

Page(s)

-ill-

Rose v. Bourne, Inc.,

: 176 F. Supp. 605

(S.D.N.Y. 1959),

aff'd 279 F.2d 79

(2d Cir.),

cert. denied,

364 U.S. 880,

81 S. Ct.170,

5 L. Ed. 2d 103

REE sg ws se 15

Rossiter v. Vogel,

134 F.2d 908

a 15

Stewart v. Abend,

495 U.S. 207,

110 S. Ct. 1750,

109 L. Ed. 2d 184;

TPN sy a yy ye l

FEDERAL STATUTES

pp ee 1, 5-16

Act of July 8, 1870,

ee 10, 15

Act of March 4, 1909,

ch. 320, § 24, 35 Stat.

I 10, 12

LEGISLATIVE REPORTS

H.R. Rep. No. 94-553 (1976)... ke ce cc ws 14

H.R. Rep. No. 94-1476 (1976) . ve were *

TREATISES

P. Goldstein,

Ci py rj ehit Pr ;

Law and Prac [ ( se 1 BR 14

M. Nimmer & D. }

Nimmer on Ci +

OTHER AUTHORITIES

Barbara Ringe r Ne

Pat. Trademark & Copyn

J. (BNA) No. 144, at A-2]

it ae ee eek eee 12

New Register, Copyright L. Rep

(CCH) § 20,073 (May 4, 1980) ............. 12

BRIEF OF AMICI CURIAE IN SUPPORT

OF PETITION FOR WRIT OF CERTIORARI

"Congress’ paramount goal in revising the 1976

[Copyright] Act [was to] enhanc[e] predictability and

certainty of copyright ownership." Community For

Creative Non-Violence v. Reid, 490 U.S. 730, 749, 109

S.Ct. 2166, 104 L. Ed. 2d 811 (1989) (hereafter "CCNV")

(citing H.R. Rep. No. 94-1476, p. 129 (1976)). This

Court should grant the Petition for Writ of Certiorari to

resolve a conflict between the circuits, give force to the

plain meaning of the Act, and thereby restore to that Act

the predictability and certainty Congress strove so mightily

to attain.

Amici, who regularly acquire from authors licenses

in works that are subject to copyright, recognize that as a

consequence of this Court’s decision in Srewart v. Abend,

495 U.S. 207, 110 S. Ct. 1750, 109 L. Ed. 2d 184 (1990),

they cannot be certain that they actually have acquired

rights to a copyrighted work in its renew al term unless the

author lives to the renewal period. Courts in the Second

Circuit have determined that the operative event which

vests those renewal rights is the filing of the renewal

application with the Copyright Office; the Ninth Circuit

now says it is survival to the beginning of the renewal

term. Amici request that the writ of certiorari be granted

to resolve that conflict.

They urge this Court to reject the Ninth Circuit's

view of when the right to the renewal term vests both

because it could well have the unintended effect of casting

works into the public domain and because it reduces

predictability and certainty of copyright ownership. Since,

under the Ninth Circuit’s view, filing of a renewal

application during the one-year renewal period proceeding

the commencement of the renewal term is not sufficient to

vest the renewal rights, if a filing author dies before the

renewal term, no one will have the renewal rights, and the

work then will enter the public domain. If, to avoid that

possibility, all possible successors also file renewal

applications, no one thereafter searching the records of the

those official records who actually holds the rights.

ISSUE PRESENTED

The issue presented is straightforward: does the

right to a renewal copyright vest in an author on the date

when the copyright certificate is issued upon timely

application, assuming the author is alive on that date and

has filed for renewal during the appropriate statutory

period, or does the right vest only at the commencement of

the renewal term, provided that the author survives into

that term? The Ninth Circuit held that renewal is not

sufficient to vest the nght to renewal copyright. Rather,

the Court held, filing of the renewal is a condition

precedent. The renewing author also must live into the

commencement of the renewal term.

INTEREST OF AMICI

Amici produce and distribute motion pictures and

television programs. While many of their productions are

entirely original works, large numbers of the motion

pictures and television programs they produce are

derivative works based on novels, short stories, or other

works that are subject to copyright. Additionally, many of

the motion pictures and television programs they produce

incorporate music and songs that have been separately

created and are subject to copyright protection. Amici

license these musical works for use in the motion pictures

and television programs they produce. Amici also own

substantial television and film libraries.

The Ninth Circuit’s decision affects their business

in at least three ways.

(1) New Works - As noted, Amici frequently

acquire the rights to novels, short stories, or other works

on which to base their television programs and motion

pictures, and incorporate contemporary popular music into

those productions. If the Ninth Circuit decision stands,

given the number of years and substantial financial

investment it takes to develop and fully exploit a television

series or motion picture, Amici are less likely to consider

securing rights in any works published between 1964 and

1978 (that is, works presently in their initial term of

cannot be certain that they will be able to exploit for a

commercially reasonable period of time their own motion

pictures and television programs that incorporate other

works whose copyrights will expire. In fact, in some

circumstances, Amici have elected not to license such

works, notwithstanding they would prefer to do so. The

effect of the Ninth Circuit decision, therefore, is to restrict

Amici’s artistic choices and to depress the value of literary

work and music created between 1964 and 1978 since

Amici and others in the motion picture and theatrical

industry are less likely to participate in any significant

market for such works.

(2) Clearing of Rights - When Amici acquire

motion pictures for distribution, commence the production

of motion pictures or television programs, OF seek to

incorporate music or other copyrighted materials into their

own work product, they regularly “clear” the rights in

those materials. Amici frequently do not obtain their rights

of exploitation directly from the author of a work. Rather,

they often secure those rights from other licensees whose

existence and licenses do not necessarily provide

information concerning the status of the author. They

"clear" those rights by searching the records in the

If the Ninth Circuit decision stands, such a search

will not be sufficient to assure the existence of the desired

rights. Amici, and those similarly situated, will not be able

to determine from the face of the records of the Copyright

Office whether an author who renewed his copyright during

the renewal period survived into the renewal term and

thereby experienced the actual vesting of such rights.

Further, if the Ninth Circuit’s ruling leads to

multiple filings during the renewal period, a search of the

records will not permit one readily to determine who holds

the nghts. Amici’s ability to conduct their business and the

reliability of the Copyright Office’s records both will have

been impaired.

(3) Libraries - To the extent Amici have in their

libraries motion pictures and television programs the public

wishes to view, the risk of continuing to exploit these

works becomes financially prohibitive and the public is

denied access if there is enhanced uncertainty concerning

the ownership of music and other separately copyrighted

material that may be incorporated in those works. The

Ninth Circuit decision adds to the uncertainty since Amici

cannot be confident that an author who renewed his

year lived to the twenty-ninth year. Amici therefore cannot

be certain that they will be permitted to exploit the

incorporated work at all or on the terms negotiated with the

author should the author not have survived into the renewal

term. Since many motion pictures incorporate a number of

different musical works copyrighted at different times by

different authors, the problem Amici confront is that much

more complex.

ARGUMENT

INTRODUCTION

The Ninth Circuit held that the right in the renewal

term, provided the author has survived into that term. That

holding is at odds with the plain meaning of the statute, the

legislative history of the 1976 Copyright Act, and the views

of the commentators, including, significantly, the Register

of Copyrights at the time the 1976 Act was debated and

approved. Certiorari should be granted and the Ninth

Circuit’s holding reversed because it leads to a result that

confounds, rather than promotes, the congressional goal of

predictability and certainty of copyright ownership.

A. THE LANGUAGE OF THE STATUTE

The statute before the Court is Section 304(a) of the

1976 Copyright Act. 17 U.S.C. § 304(a). “The starting

point for ... interpretation of a statute is always its

language." CCNV, 490 U.S. at 739 (citing Consumer

Product Safety Comm'n vy. GTE Sylvania, Inc., 447 US.

102, 108, 100 S. Ct. 2051, 64 L. Ed. 2d 766 (1980)).

Yet, when it engaged in its own interpretation of Section

304(a), the Ninth Circuit ignored a portant portion of

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that statute. The full text of the section is set out in

footnote 1, with the critical language underscored. !

Focusing only on the second proviso of § 304(a)

(which commences with the language "And provided

further"), the Ninth Circuit concluded that the language

Stating that the renewing party "shall be entitled to a

renewal . . . when application for such renewal . . . shall

have been made" specified the time for registration, but not

‘Section 304. Duration of copyright: Subsisting copyrights.

(a) Copynghts In Their First Term on January 1, 1978. - Any

copynght, the first term of which is subsisting on January 1, 1978,

shall endure for twenty-eight years from the date it was onginally

secured: Provided, That in the case of any posthumous work or of any

periodical, cyclopedic, or other composite work upon which the

copynght was originally secured by the proprietor thereof, or of any

work copyrighted by a corporate body (otherwise than as assignee or

licensee of the individual author) or by an employer for whom such

work is made for hire, the proprietor of such copyright shall be entitled

to a renewal and extension of the copymyht in such work for the further

term of forty-seven years when application for such renewal and

extension shall have been made to the Copyright Office and duly

registered therein within one year prior to the expiration of the onginal

term of copynght: And provided further, That in the case of any other

copynghted work including a contribution by an individual author to a

penodical or to a cyclopedic or other composite work, the author of

such work, if still living, or the widow, widower, or children of the

author, if the author be not living, or if such author, widow, widower,

or children be not living, then the author's executors, or in the absence

of a will, his or her next of kin shall be entitled to a renewal and

extension of the copyright in such work for a further term of forty-

seven years when application for such renewal and extension shall have

been made to the Copyright Office and duly registered therein within

one year prior to the expiration of the original term of copynght: And

provided further, That in default of the registration of such application

for renewal and extension, the copyright in any work shall terminate at

the expiration of twenty-eight years from the date copynght was

onginally secured.

the time of vesting of the renewal right. The court further

concluded that the phrase in that section, “shall have been

made," modified the word "when," and signified “that

filing of a renewal application is a condition precedent to

vesting". Finding that the statutory language was

susceptible to more than one interpretation, the court then

turned to an analysis of legislative history and the writings

of certain commentators to conclude that vesting occurred

only if the author survived to the commencement of the

renewal term. ("Although commentators disagree, the

better view is that § 304(a) implicitly reflects the vesting

language of earlier statutes, requiring an author to survive

to the start of the renewal term in order for the renewal

Fantasy, Inc., 953 F.2d 469, 471 (9th Cir. 1991).)

Other courts and-commentators who have studied

that same statutory language have found its language clear.

In Frederick Music Co. v. Sickler, 708 F. Supp. 587, 589

(S.D.N.Y. 1989), the district court succinctly stated:

"The language of the statute is clear... . To this Court,

the language of the statute is unambiguous and thus needs

no clarification for legislative history." Professor

Goldstein concurs: "The plain language of section 304(a)

suggests that vesting occurs on the date the renewal is

registered ...." 1 P. Goldstein, Copyright: Principles,

Law and Practice § 4.8.1, at 451 (1989).

The flaws in the Ninth Circuit’s statutory

interpretation become apparent when one treats § 304(a) as

a whole. Precisely the same "shall have been

made"/"when" language used to govern renewal by the

author (or the widow, widower, or the children of the

author, etc.) also was included by Congress in that portion

of the statute governing renewal of a copyright held by a

corporate body, an employer for whom such work is made

for hire, etc. (The concern for successors found

determinative by the Ninth Circuit clearly is of no

relevance to the first proviso, although the language is the

same in both.) There has been no suggestion that the time

for issuance of a certificate, upon timely application for

renewal, and the time of vesting of the renewal rights are

bifurcated when a corporate body seeks to renew. Nor has

it ever been suggested that a renewing corporate copyright

owner must refrain from changing its corporate structure or

engaging in a merger between the time of renewal and the

commencement of the renewal term lest the successor or

Surviving corporation find itself bereft of its copyrights

because the renewing corporation had not survived until the

commencement of the renewal term.

Since the operative language is identical, there is no

basis on which to conclude that when applied to corporate

holders of copyright that language covers both the act of

renewal and the vesting of the renewal copyright but, when

applied to human beings, the language creates only a

condition precedent to vesting.

That a renewing human being need not both file an

application of renewal and survive to the commencement

of the renewal term in order to have secured the renewai

§ 304(a) ("and provided further, that in default of the

registration of such application for renewal and extension,

the copyright in any work shall terminate at the expiration

of twenty-eight years from the date copyright was

Originally secured"). Had Congress intended to require the

human being seeking to renew to survive until the

commencement of the renewal term, this last proviso

should have stated "in default of the registration of such

application for renewal and extension and in default of the

survival of the author of such work, or the widow,

eR ee

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widower, or children of the author, etc. until the

commencement of the renewal term, the copyright in any

work shall terminate. . . ." 17 U.S.C. § 304(a) (emphasis

added). Plainly, however, no such language appears in the

statute and may not be implied in the face of Congressional

silence.

Presented with provisions of the Copyright Act

relating to works for hire, this Court in CCNV unanimously

considered and rejected an argument that it rely on

legislative silence in interpreting the 1976 Copyright Act.

Petitioners there, like the Ninth Circuit here, contended

that Congress’ failure to state, either in the Act itself or in

the legislative history, that it intended to jettison a position

suggested that it intended no such result. This Court

demurred, writing, "We are unpersuaded. Ordinarily,

‘Congress’ silence is just that -- silence.”” CCNV, 490 U.S.

at 749 (citing Alaska Airlines, Inc. v. Brock, 480 U.S. 678,

686, 107 S. Ct. 1476, 94 L. Ed. 2d 661 (1987)). Here

too, silence is just that, not an implicit perpetuation of a

requirement once explicitly stated in the Act.

The statute is clear. It provides that vesting of the

renewal copyright occurs upon the issuance of a certificate

of renewal upon timely application to the Copyright Office,

not survival until the commencement of the renewal term.

Therefore, this Court may well conclude that it need not

rehearse the applicable legislative history. Should it

nonetheless undertake an analysis of that legislative history,

it quickly will conclude that the Ninth Circuit’s

understanding of the legislative history was as flawed as its

reading of the statute.

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B. THE LEGISLATIVE HISTORY

l. Changes in the Act Over Time

In its opinion, the Ninth Circuit quoted the renewal

provisions contained in all the copyright acts that preceded

the 1976 Copyright Act. While it noted that the Act of

1870,’ unlike its predecessors, failed expressly to require

that an author must be alive at the beginning of the renewal

term in order to continue to enjoy “the same exclusive

rights" enjoyed during the original term, it quoted

commentators to the effect that no substantial changes were

intended in that act and concluded that survival into the

renewal term therefore remained an implicit requirement

for renewal. In so holding, the court overlooked the

significant shift from earlier Acts, which embodied a public

interest in releasing works into the public domain, to the

1870 Act, which focused not on whether a copyright would

be renewed at all, but rather, on who would own that

renewed copyright. With the 1909 Act, Congress extended

the period for applying for renewal from six months to one

year.

If, in fact, Congress had intended to require an

author to survive until the commencement of the renewal

term in order for the interest in the renewal copyright to

vest, it simply makes no sense for Congress also to have

expanded the time in which the author could file an

application for renewal with the Copyright Office. Under

the Ninth Circuit's interpretation, even if the author were

to renew on January2 of the renewal year, no

commercially significant exploitation of the work could

occur for twelve months, until after December 31 of that

year since no motion picture producer, no book publisher,

*Act of July 8, 1870, ch. 230, 16 Stat. 212.

occur for twelve months, until after December 31 of that

year since no motion picture producer, no book publisher,

no music publisher, etc. could be certain that its license to

exploit the work would remain effective if the author died

anytime between January 2 of the renewal year and the end

of that year.

Presumably, in extending the period in which

renewal applications could be filed, Congress recognized

that the value of a copyrighted work diminishes as the

exploitation and availability of the copyrighted work will be

enhanced the sooner the copyright can be renewed.

However, if an author who indeed renews his copyright

early in the renewal period has no vested rights in that

renewal until he has survived through that whole year and

into the renewal term, his early renewal will have been for

naught. No commercial ventures, including the motion

picture studio amici, will invest money to acquire rights in

or to exploit a work if they cannot be certain that they will

be able to enjoy the fruits of that investment for longer

than one year.

2. The Drafting of the 1976 Act

The Ninth Circuit's discussion of the legislative

history of the 1976 Copyright Act also reveals that its

understanding of the genesis of that Act is extremely

limited, and incorrect. This is particularly apparent in its

dismissive attitude toward Barbara Ringer's statement,

written in 1960, and published as part of the Copyright

Law Revision Study of the Senate Judiciary Committee, to

the effect that "[aJs soon as a valid renewal claim is

registered, the renewal is ‘vested in interest’ [creating] a

‘present fixed right of future enjoyment.’" In refusing to

consider this view, the Ninth Circuit stated: "The primary

aa.

difficulty with this argument is that the Ringer study was

presented to the 86th Congress, not to the 94th Congress,

which passed the 1976 Act some sixteen years later." But

the Ninth Circuit ignored the fact that the language of

Section 304 did not change at all during that period. It

also ignored the near identify of the renewal provisions of

the 1909 and 1976 Acts.

This Court, however, has recognized that the 1976

negotiation by representatives of creators and copyright-

using industries, supervised by the Copyright Office and,

to a lesser extent, by Congress." CCNV, 490 U.S. at 743

(emphasis added). Significantly, at the time of the adoption

of the 1976 Copyright Act, Ms. Ringer effectively was the

during the entire period the 1976 Act was being debated

and approved.’ See also H.R. Rep. No. 94-1476 at 47-48

(1976) (discussing the publication of 35 monographs on

most of the major substantive issues in copyright revision

through 1961, the role of the Copyright Office and the

reports prepared by the Register of Copyrights, all

culminating in the 1976 Act).

‘Although Ms. Ringer's position and significant role with respect

to the adoption of the 1976 Act does not appear to be a matter of

record in this proceeding, this Court may take judicial notice (as per

Fed. R. Evid. 201) of the fact that she served as Register of Copyrights

period almost continuously since 1949. See Barbara Ringer Named

144, at A-21 (Sept. 13, 1973); Copyright Office Appoints New Register,

Copynght L. Rep. (CCH) § 20,073 (May 4, 1980).

C. COMMENTATORS

As demonstrated in the Petition for Writ of

Certiorari, virtually every commentator who has considered

the subject has concluded that the renewal copyright vests

upon filing with the Copyright Office. (Petition at 25-28.)

Significantly, in his treatise entitled Copyright: Principles,

Law and Practice (1989), Professor Paul Goldstein of

Stanford University Law School looks at the very language

from Section 304(a) of the 1976 Act considered by the

Ninth Circuit ("the author . . . if still living . . . shall be

entitled to a renewal and extension . . . when application

for such renewal and extension shall have been made. . . .)

and concludes, "The plain language of section 304(a)

suggests that vesting occurs on the date the renewal is

registered... ." 1 P. Goldstein, Copyright § 4.8.1, at

451.

Goldstein goes on to observe that there are dicta in

some cases to suggest that vesting does not occur until the

beginning of the renewal term itself. (This, obviously

became the holding of the Ninth Circuit.) He then

concludes that this result “is so impractical that Congress

probably did not intend it." Jd. at 452. He describes the

impractical consequence as follows

Until the beginning of the renewal term,

there would be no way to know who was the

proper applicant for renewal. Under this

approach, if the author applied for renewal

in the twenty-eighth year but died shortly

before year’s end, the renewal would not

vest in her. At the same time, the proper

successor class -- her widower or children --

might not have the time to obtain a

-]4-

registration entitling them to the renewal

term.

Id. at 451-452. Ironically then, the net effect of the

approach adopted by the Ninth Circuit might well be to

deprive the very class the court sought to protect of any

right to the work, because there would be no vested

renewal, and the work would be cast into the public

domain.

The only commentator to suggest that Section 304(a)

of the 1976 Act might require survival by the renewing

author into the renewal term in order for ownership in the

renewal copyright to vest is Melville B. Nimmer. Nimmer

bases this conclusion largely on his reading of Fred Fisher

Music Co. v. M. Witmark & Sons, 318 U.S. 643, 63 S. Ct.

773, 87 L. Ed. 1055 (1943). As Nimmer himself

recognized, however, that case does not expressly address

the question of when rights in a renewal copyright vest

and, in any event, was decided well before Congress and

the courts had the benefit of the comprehensive research

and studies of the United States Copyright Law expressly

funded by Congress in 1960 and 1961. See 2 M. Nimmer

& D. Nimmer, Nimmer on Copyright § 9.05[C], at 9-61

(1991); see also H.R. Rep. No. 94-553 at 47.

Recognizing the potential problem highlighted by

Goldstein for members of a successor class (that is,

widows, widowers, children, etc.) under his interpretation

of the renewal statute, Nimmer, in his treatise, advises

members of such a successor class to file their own claims

for renewal during the last year cf the initial copyright

term "even if members of a prior class have likewise filed

such a claim." 2 M. Nimmer & D. Nimmer, Nimmer on

renewals and the incongruous existence of multiple renewal

-15-

certificates that may not be effective hardly can be what

Congress intended when, as noted, it undertook to revise

the Copyright Act to enhance predictability and certainty of

D. THE CASES

Although no decision squarely addressed the issue,

for years courts in the Second Circuit issued decisions that,

in dicta, concluded that the right to a renewal copyright

vests upon filing with the Copyright Office during the

twenty-eighth year of the initial term. See, e.g., Rossiter

v. Vogel, 134 F.2d 908, 911 (2d Cir. 1943); Cresci v.

Music Publishers Holding Corp., 210 F. Supp. 253, 259

(S.D.N.Y. 1962); Rose v. Bourne, Inc., 176 F. Supp. 605,

610 (S.D.N.Y. 1959), aff'd 279 F.2d 79 (2d Cir.), cert.

denied, 364 U.S. 880, 81 S. Ct. 170, 5 L. Ed. 2d 103

(1960). Then, in 1989, in Frederick Music Co. v. Sickler,

708 F. Supp. 587 (S.D.N.Y. 1989), a district court in that

circuit addressed the issue directly and concluded that

renewal rights vest upon filing. /d. at 592.

The district court in Frederick Music first addressed

the statutory language, noting that it is unambiguous and

imposed no survivorship requirement. Jd. at 589. With

respect to legislative history, the district court pointed out

that "the early copyright laws merely conditioned renewal

upon the author’s survival past a single threshold point...

[t]hey did not embody the concept of the affirmative right

to renew during a statutorily created renewal period." Jd.

at 590. In short, the earlier laws, which embodied the

strong public interest in releasing works into the public

domain, focused upon whether a copyright would be

renewed at all, nor who would own the renewed copynght.

That concept was incorporated in the Act of 1870, which

eliminated a survivorship requirement, making a historical

approach based on analysis of the earlier laws inapposite.

The reasoning of Frederick Music applies to this case and

directly conflicts with the Ninth Circuit’s approach.

Prior to the decision at issue on this writ, only one

court, the Tax Court, reached a contrary conclusion,

interpreting the term "renewal period" to mean the

requirement into the renewal term in order to vest the

renewal in a particular statutory class. Arlen v.

Commissioner of Internal Revenue, 48 T.C. 640 (1967).

The Frederick Music Court properly determined that in

Arlen, the issue of when renewal rights vest was not

dispositive of the issue presented to that court and, that, in

any event, the case primarily concerned tax, as opposed to

little weight.

The Frederick Music decision, with its explication

of prior Second Circuit cases, clearly reveals a conflict

between that circuit and the Ninth Circuit on the issue of

when a renewal copyright vests. It is of great importance

that the conflict be resolved. The Copyright Act is a federal

Statute of general applicability and works subject to

the country, with no distinction between judicial circuits

possible.

CONCLUSION

The grant of the writ of certiorari will permit this

Court both to resolve a conflict between the circuits and to

restore to authors, their successors, and Amici certainty

with respect to an important aspect of copyright ownership

under the 1976 Copyright Act. Therefore, for the reasons

set forth above and in the Petition for Writ of Certiorari,

At.

Amici respectfully request this Court to grant the Petition

and consider on its merits the issue presented for review.

Dated: April 24, 1992

Respectfully submitted,

WALTER COCHRAN-BOND

Counsel of Record

PROSKAUER ROSE GOETZ &

MENDELSOHN

JON A. BAUMGARTEN

CAROLE E. HANDLER

LOIS D. THOMPSON

Counsel for Amici Curiae

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