In “The Problems with ‘Old’ Contracts”, I described the way the copyright act handled the issues surrounding who had the right to renew copyrights in older works whose copyrights were required to be renewed to remain effective.

        A case out of the Tenth Circuit Court of Appeals presents these issues within a very interesting, if somewhat esoteric, set of facts but which case helps explain the renewal issues quite clearly.  In Michael Foundation, Inc. vs. Urantia Foundation et. al., these were the facts as described by the Court:

In approximately 1900, an unknown patient ("the Conduit") sought psychiatric help from Dr. William Sadler. [footnote]  The Conduit behaved strangely in his sleep, and during sessions with the Conduit, Dr. Sadler became convinced that the Conduit was channeling "celestial personalities."  At some point, the Conduit began presenting Dr. Sadler with handwritten "papers," purportedly consisting of the fruits of his communion with these celestial beings.  Sometime later in the course of his treatment, Dr. Sadler opened up his sessions with the Conduit to a group of relatives that referred to itself as "The Contact Commission."  During its sessions with the Conduit, the Contact Commission prepared stenographic notes of the Conduit's celestial dialogs, but it destroyed most of them.  The notes formed no part of The Urantia Book. [emphasis added]

In 1924, after approximately twenty years of treatment and generating "papers," the Conduit announced that he would compose The Urantia Book.  He solicited questions from the Contact Commission to present to the celestial beings during his psychiatric sessions.  Dr. Sadler formed a subgroup of the Contact commission ("the Forum") to prepare these questions.  Between 1935 and 1942, in response to these questions, the Conduit delivered a foreword and 196 handwritten "papers" that together constitute The Urantia Book.  The Contact Commission reviewed the papers and typed them. It did not change their arrangement or edit them in any way other than to correct spelling and capitalization errors.  It also destroyed all documents related to the questions presented to the Conduit.  The Conduit was never compensated for his efforts in creating The Urantia Book. [emphasis added]

Urantia Foundation registered its copyright in 1956 and currently holds the original and the 1983 renewal certificates as The Urantia Book's "author."

        The Michael Foundation published a work “which reprints verbatim seventy-six of the 196 papers constituting The Urantia Book.”  Thus the issue was whether the renewal of the copyright by the Urantia Foundation was a valid renewal or whether the work went into the public domain because it was not properly renewed.

The Statute

        The Court summarized the legal issues thusly:

Under the governing renewal provisions, as a general rule, only the author or the author's heirs could renew the copyright in a literary work at the expiration of the initial term, regardless of whether the author had conveyed those rights for the duration of the initial term.  17 U.S.C. 304(a)(1)(C). [footnote]  The parties agree that neither the Conduit nor his heirs renewed the copyright in The Urantia Book.  [emphases added] Urantia Foundation advances two theories to support its claim that it holds valid renewal rights in The Urantia Book under exceptions to the general rule:  first, that The Urantia Book is a composite of discrete, individual works by the Conduit, rather than a unified work, and that Urantia Foundation, as proprietor of the copyright in that composite,[footnote] was entitled  to renew the copyright in both the compilation and in the underlying works; and second, that The Urantia Book is a commissioned work because Urantia Foundation's predecessor in interest specially commissioned the Conduit to write The Urantia Book, entitling Urantia Foundation to renew its copyright as The Urantia Book's "author" under a judicially created corollary to a statutory exception governing works created for hire. [footnote]
        The Court noted in the first above mentioned footnote:
While the relationship between the Conduit and the Contact Commission is defined by provisions of the 1909 Act and relevant caselaw, renewal of subsisting copyrights still in their first term as of 1978 (e.g., Urantia Foundation's  copyright in The Urantia Book) is presently governed by section 304 of the 1976  Act, as amended.  17 U.S.C.  304.
The Composite Work Theory

        In order to prevail on its first theory the Urantia Foundation would have had to show that the work was not the work of a single author, in this case the Conduit.  The difference is significant since the owner of rights in a composite work can renew the copyright in the composite.  17 U.S.C. Section 304(a)(1)(B)(i).  That said code section provides:

(a) Copyrights in Their First Term on January 1, 1978.-

(1)(A) Any copyright, in the first term of which is subsisting on January 1, 1978, shall endure for 28 years from the date it was originally secured.

(B) In the case of-

(i) any posthumous work or of any periodical, cyclopedic, or other composite work upon which the copyright was originally secured by the proprietor thereof, …
the proprietor of such copyright shall be entitled to a renewal and extension of the copyright in such work for the further term of 67 years.

        The Court stated the factual burden of proof that the Urantia Foundation would have to demonstrate as to the above argument as follows:
The Conduit composed The Urantia Book, then assigned his  interest in it to Urantia Foundation's predecessor in interest prior to The Urantia Book's publication in 1955, making Urantia Foundation the proprietor of the rights in The UrantiaBook, and

The Urantia Book is a composite work, entitling Urantia Foundation to renew its copyright in 1983 under the proprietor  exception to the usual renewal provisions.

        The Court reviewed the statute for a definition of composite works and compilations (read “Copyright in Compilations”)  The Court stated:
The leading treatise on copyright law defines the composite category as a subcategory of compilations, but distinct from compilations in that each individual work within a composite must be independently copyrightable, whereas there is no such requirement for a compilation.  Nimmer on Copyright, [section] 3.02.   Individual works in a compilation need not come from the same author, as long as they are discrete, independent works.  Examples of compilations  include periodicals, catalogs, and encyclopedias.  Under both the 1909 Act and  the 1976 Act, the proprietor of a "periodical, cyclopedic, or other composite work" is entitled to renew the copyright it originally obtained in the work.  17 U.S.C. [section] 24 (repealed); 17 U.S.C. [section] 304(a)(1)(B)(i).
        The Court reviewed the facts regarding the status of the work as to whether or not it was a single unified work or such a composite.  In this process, the Court decided not to decide whether the intent of the author played any role in making such a determination (unlike the specific reference to the intention of the authors when it comes to a determination of whether a work is a joint work).  The Court found that there was sufficient evidence to support the jury’s findings that such work was in fact a single, unified work by a single author and not a composite work.  The Court distinguished a seemingly contradictory finding in a related case, which related case was the source of the dissent in this case.  Keep in mind that cases such as this are very fact-specific.

The Work Made for Hire Theory

        Under the alternative theory advanced by the Urantia Foundation, it claimed the right to renew the copyright because the work was created as a work made for hire.  17 U.S.C. (a)(1)(B)(ii).  That section provides:

(a) Copyrights in Their First Term on January 1, 1978.-

(1)(A) Any copyright, in the first term of which is subsisting on January 1, 1978, shall endure for 28 years from the date it was originally secured.

(B) In the case of-

(ii) 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 copyright in such work for the further term of 67 years.

        The Court stated the factual burden of proof that the Urantia Foundation would have to prove as to the above argument as follows:
The Contact Commission was the "author" of The Urantia Book because it specially commissioned the Conduit to write it, making The Urantia Book a commissioned work under a judicially created doctrine parallel to the work for hire provisions of the 1909 Act, and

Urantia Foundation, as the Contact Commission's predecessor  in interest, qualifies as the Conduit's employer, entitling it to renew The Urantia Book as a work for hire in 1983.

        The Court discussed this aspect of the law as follows:
The 1909 Act did not contemplate "commissioned works."  The Act did provide that "in the case of . . . any work copyrighted 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 copyright in such work."  17 U.S.C. [section]  24 (repealed); 17 U.S.C. [section] 304(a)(1)(B)(ii) (emphasis added).  Urantia Foundation does not argue that a traditional  employment relationship existed between the Contact Commission and the Conduit; rather, it argues that the Contact Commission specially commissioned The Urantia Book from the Conduit.
        The Court examined the facts that were the basis for the jury’s findings and concluded that Urantia Foundation could not satisfy the requirement that it in fact commissioned the said work and that the verdict of the jury was supported by sufficient evidence.

        The Court said:

The Urantia Papers arose, however, out of the Conduit's psychiatric sessions with Dr. Sadler.  The sessions occurred at the Conduit's instance, not Dr. Sadler's.  As Michael Foundation correctly points out, in the doctor-patient relationship, the doctor is the patient's fiduciary, not the other way around.  Furthermore, the Conduit began writing the Urantia Papers on his own initiative, and "announced to the contact group the plan to initiate the Urantia Papers" after having delivered papers of celestial origin to Dr. Sadler for twenty years. [footnote]  The Conduit himself requested the questions from the Contact Commission.  The Supreme Court has indicated that the test for whether a work is commissioned applies "at the time the commission is accepted."  Community for Creative Care Non-Violence v. Reid,  490 U.S. 730, 741 (1989) (discussing general principles of agency law while construing section 101 of the 1976 Act).  Upon review of the record, we agree that the Contact Commission's role in creating The Urantia Book was "little more than a reaction to an already ongoing process of creation."
        The Court rejected other arguments of the Urantia Foundation in this regard as well.

        Keep in mind that for copyrights taken out after January 1, 1978, there are no renewal issues since the term of the copyrights are life of the author plus 70 years (with other terms applicable to other situations).    Thus, in theory, the last time a renewal issue arose would have been December 31, 2005 (December 31, 1977 is the last date of copyright with renewals, plus 28 years).  However, cases indicate that a party is entitled to claim renewal rights without regard to any statute of limitations, meaning that the party or parties in whom the renewal rights vested at the onset of the 29th year retain the right to claim those renewal rights at any time.  There are certain equitable issues that may limit the right to claim back royalties, however.  In Stone vs. Williams (970 F. 2d. 1043), the Court held that a daughter of Hank Williams had the right to claim the renewal rights even though her claim was very late in being presented but she could not recover money for the exploitation of the compositions preceding the 3 year limitations period.

        The title of the article referred to in the opening paragraph of this article, “The Problems with ‘Old’ Contracts” says it all.  Although this case did not deal with an old publishing contract, the case does deal with issues related to old copyrights and thus the issues discussed in this case relate to the same set of problems.

Copyright © 2003, 2012 Ivan Hoffman.  All Rights Reserved.


This article is not intended as legal advice and is not legal advice.  This article is intended to provide only general, non-specific legal information.  This article is not intended to cover all the issues related to the topic discussed.  The specific facts that apply to your matter may make the outcome different than would be anticipated by you.  This article is based on United States law.  You should consult with an attorney familiar with the issues and the laws of your country.  This article does not create any attorney client relationship.


No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.



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