The intersection of state and federal law with respect to copyright has long been problematic, even though the grant itself is entirely federal. The difficulties arise in many areas, such as personal jurisdiction (there is no provision in the Copyright Act on service of process, which leads to application of state law on personal jurisdiction); subject matter jurisdiction (when is a dispute one really arising under the Copyright Act or when is it say a dispute over royalties due, a state law matter?); and contract interpretation. Into this last category fall things that obviously are questions of state law (was there a meeting of the minds?), things that may or may not be questions of state law (does one construe a future technologies clause according to perceived federal policies or state policies?), and questions that are clearly federal, like compliance with the 17 USC Section 204(a) requirement that there be a written agreement signed by the transferor of rights. Today's blog deals with Section 204(a).
The terms of Section 204(a) are absolute: "(a) A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner's duly authorized agent." This is one of those wonderful provisions of law in which Congress, like Horton the Elephant, declared "I meant what I said and I said what I meant; an elephant's faithful, 100 percent."
Sometimes litigants think otherwise, and rely on state law concepts like performance and accepting benefits makes something a contract. Not true, as the purported transferee of exclusive rights from the copyright owner of the frightening VeggieTales found out. The parties had engaged in extensive negotiations and years of "performance." An officer of the transferor company agreed over the phone and in an internal memo that the agreement was "in force." Too bad, the Fifth Circuit recently said in Lyric Studios, Inc. v. Big Idea Productions, Inc, 420 F.3d 388 (5th Cir. 2005). It may not have to be the "Magna Carta," as Judge Kozinski quipped, and Hollywood may do lunches and not written agreements, as he also once wrote, but such a cavalier approach will have dire consequences: you don't own exclusive rights without complying with 204(a). Get it signed, sealed and delivered.