Comment: Foreign Contracts and U.S. Copyright Termination Rights: What Law Applies?

Abstract

The U.S. Copyright Act gives authors the right to terminate assignments ofcopyrights in works other than works for hire, executed on or after January 1, 1978,after thirty-five years, and to do so notwithstanding any agreement to the contrary.Given that agreements which are subject to the laws of other countries can assignU.S. copyrights, and purport to do so in perpetuity, U.S. law’s preclusion ofagreements contrary to the author’s right to exercise her termination right can giverise to a difficult choice of law issue. Two recent cases which came before courts inthe U.S. and England respectively, Ennio Morricone Music Inc. v. Bixio MusicGroup Ltd. and Gloucester Place Music Ltd v. Le Bon illustrate the problem. Inneither case was the choice of law question disputed by the parties, and hence neithercourt had occasion fully to analyze it. Nevertheless, the Court of Appeals for theSecond Circuit in the Morricone case made an observation about the nature of U.S.copyright which has a potentially important bearing on the matter. In this article weconsider the choice of law issue from the perspectives of U.S. law and English law.Under either law, the key question is what law governs the permissible scope ofan author’s grant. Given that copyright is territorial, as a matter of principle, onewould expect that law to be the lex loci protectionis, and that is essentially what bothU.S. law and English law stipulate. Where the copyright is a U.S. copyright,application of the lex loci protectionis in accordance with the conceptualizationsuggested by Morricone, concerning the inalienable character of the right, leads tothe conclusion that § 203 cannot be overridden by a contract subject to a differentlaw. We do not conclude, however, that a multinational grant will incorporate everynational law limitation on the scope of the grant. Limits on the scope of the grantwhich are substantive, when characterized in accordance with the lex lociprotectionis, must be given effect, but not limits which are evidential or procedural.