- Court denies defendants’ motion for reconsideration in copyright infringement action involving the Superman character and works; court holds that plaintiffs’ termination notice with respect to certain works, which did not contain certain required information, was still effective as to those works because the omissions were “harmless error”
In August 2009, the court held that the plaintiffs had successfully served a termination notice to defendants for some of the Superman works, and that the omission of the title, name of one author, date copyright was secured and the copyright registration number for the two weeks’ worth of comic strips was harmless error because of the existence of a catch-all phrase in the termination notice, the unique nature of the copyrighted work, and its seventy years of exploitation in many media.
[E]ach and every work (in any medium whatsoever, whenever created) that includes or embodies any character, story element, or indicia reasonably associated with SUPERMAN or the SUPERMAN stories, such as, without limitation, Superman, Clark Kent, Lois Lane, Perry White, Jimmy Olsen, Superboy, Supergirl, Lana Lang, Lex Luthor, Mr. MXYZTPLK . . ., Ma and Pa Kent, Steel, the planet Krypton, Kryptonite, Metropolis, Smallville, or the Daily Planet. Every reasonable effort has been made to find and list herein every such SUPERMAN-related work ever created. Nonetheless, if any such work has been omitted, such omission is unintentional and involuntary, and this Notice also applies to each and every such omitted work.
The defendants moved for reconsideration of the court’s August decision, and in this proceeding the court denied the motion. In an exhaustive analysis of the “harmless error” rule contained in 37 C.F.R. § 201.10(e)(1), the court held that even though the plaintiff’s notice did not comply with the regulatory requirements by listing the title, name of at least one author, date copyright registration was secured and the registration number, the notice nonetheless was adequate for providing defendants a “reasonable opportunity” to identify what works were the subject of the termination notice.
Section 304(c) of the Copyright Act provides that a termination notice must “comply, in form, content, and manner of service, with requirements” prescribed by the Register of Copyrights. The Register of Copyrights provided such regulations which require that a termination notice contain a clear indication of: the name of each grantee whose rights are being terminated; the title and the name of at least one author of each work and the date copyright in such work was originally secured; if possible the copyright registration number; a brief statement reasonably identifying the grant to which the notice applies; and the effective date of the notice.
The regulation also contained a “safety valve that could operate to relieve terminating parties from mistakes or other traps for the unwary that would be created by requiring strict conformance to the regulation’s requirements.” Section 37 C.F.R. § 201.10(e)(1), called Harmless Errors, declares that “harmless errors in a notice that do not materially affect the adequacy of the information required to serve the purposes of section 304(c) of title 17, U.S.C., shall not render the notice invalid.”
After examining the language in the Copyright Act, the regulations promulgated under the Act, the legislative history of the Copyright Act of 1976, and the Register of Copyright’s commentary to the regulations, the court determined that its task was to examine the “purpose of the termination right contained in section 304(c), and what information is needed to adequately fulfill that purpose [which is] to provide authors or their heirs a meaningful opportunity to recapture the right to the extension of the copyright term afforded to such earlier works by the 1976 Act, while at the same time ensuring that reasonable notice is given to grantees (or their successors) and to the public so as to identify what work(s) are affected.”
The court noted that the termination notice was not completely devoid of information about the two weeks’ worth of comic strips at issue, and distinguished this case from Burroughs v. Metro-Goldwyn-Mayer, 683 F.2d 610 (2nd Cir. 1982), in which the court held that failure to provide the title of the work, the name of at least one author, the date copyright was originally secured and the copyright registration number was not harmless error. In this case, the court highlighted that the plaintiffs’ termination notice did contain some information about the works in question and that such information did enable the defendants to identify the particular works. The court stated that it is only the works in which the named elements (e.g., Krypton, Superman’s parents, etc.) were introduced that were subject to the termination notice. “[T]he copyrightable aspects of a character — the thing for which a notice is designed to declare its intent to recapture — are protected only to the extent the work in which that particular aspect of the character was first delineated remains protected, but not in the subsequent sequels in which that attribute is later repeated or used. . . . Thus understood, there can be only one work upon which plaintiffs could ever seek to recapture the copyright to ‘the planet Krypton’ aspect of the ‘Superman character’ – the work or series in which that aspect of the character was first explored.” According to the court, the information provided in the catch-all phrase was adequate for defendants to have had a “reasonable opportunity to identify” the work.
The court emphasized the iconic nature of the copyrighted works, their exploitation for over seventy years in all media, and the painstaking work done by the plaintiffs to identify all of the Superman works. The court also held that the plaintiffs’ failure to identify the two weeks’ worth of comic strips was inadvertent and that their notice was sufficient to provide the pubic with notice of which grants of copyright they were terminating.
The court summed up by saying “The Court is mindful that the information that was actually conveyed in the notice did not touch upon the specific types of information called for in the regulation. This fact has given the Court some pause, but in the end it is clear that recital of the precise incantation of information in (b)(iii) is not as important as whether the information (whatever it may be) that is contained in the notice in that regard serves to apprise the recipient of the work affected.”