Given the three year statute of limitations bar, there are only two relevant omnibus Copyright Acts relevant in litigation arising under 17 U.S.C.: (1) the 1909 Act (as amended), and, the 1976 Act (as amended). The easiest approach to the question of which act to apply would be to simply apply the 1909 Act to all questions about works created between March 1909 and December 31, 1977 (when that act was in effect), and to apply the 1976 Act to all works created on or after January 1, 1978. But even this simple approach has problems: what about works created before January 1, 1978, but not published or registered? Those works were previously protected under state law. One couldn’t say, “OK, for these works, state law will continue to apply” because Section 301 preempts equivalent state law.
There are lots of other questions too: how about the compulsory licenses? Should the Section 111 cable compulsory license and the Section 115 mechanical compulsory license (to name two prominent ones enacted in 1976) apply only to works created on or after January 1, 1978? That would be extremely difficult to administer, certainly in the case on Section 111. Or, how about damages? Should the statutory damages in Section 504 – which are quite different from their 1909 Act predecessors – only apply to works created on or after January 1, 1978? That would be easy to administer, but it would not be what Congress intended. How about the display right, which was granted only in the 1976 Act, or the limited right of public performance granted to sound recordings in Section 106(6)?
How about work for hire and joint authorship, which again were different under the 1909 Act, or, formalities, like notice? How about divisibility? Lets say a work was created under the 1909 Act, but the transfer in question – an exclusive license for a particular Section 106 right– was granted after January 1, 1978. The 1909 Act, with its principal of non-divisibility, precluded the assignment of less than the whole of the work as a license, meaning among other things that the licensee did not have standing to sue without joining the original copyright owner. Does an exclusive licensee of a 1909 Act have standing to sue today for infringement of the work? The Second Circuit has held yes, in Roth v. Pritikin, 710 F.2d 934, 938 (2d Cir. 1983). See also Essex Music, Inc. v. ABKCO Music & Records, 743 F. Supp. 237, 240-241 (S.D.N.Y. 1990).
Last summer, though, Judge Stephen Wilson of the Central District of California, in Nafal v. Shawn Carter (Beoynce’s maybe husband), 2007 WL 5022506 (C.D. Cal. Aug. 3, 2007)(No. CV 05-2480SVWPJWX), based on what he saw as Ninth Circuit precedent, held to the contrary, and adding insult to injury, loaded on this extra standing hurdle: “Even if Plaintiff is designated as a co-owner of an exclusive license, he could not join without joining” the original copyright owner and the other co-owners of the exclusive license. (p. *10).
There is no support in the statute for either proposition; as to the second one, Section 501(b) states plainly: “The legal or beneficial owner of an exclusive right under a copyright is entitled, subject to the requirements of section 411, to institute an action for any infringement of that particular right committed while he or she is the owner of it.” Under 1 USC section 1 – the very beginning of federal statutes, “In determining the meaning of any Act of Congress, unless the context indicates otherwise— words importing the singular include and apply to several persons, parties, or things.” This means “the legal owner of an exclusive license” also means “legal owners of an exclusive license.” One may say, “ah, but this means all legal owners,” but such a restriction is not found in the statute, and is contrary to legislative history stating Congress's intent to permit one joint owner of the whole to sue without joining the other joint owner. Since “copyright” under the 1976 Act is merely ownership of all or one or more exclusive rights, the distinction drawn by Nafal v. Carter is insupportable.
I have previously blogged about the death of divisibility; Nafal v. Carter is just another nail in the coffin. BTW, my answer to all the other questions is this: compliance with formalities, work for hire and joint authorship questions are governed by the Act in effect when the work was created, all the other questions (e.g., rights granted, applicability of compulsory licenses, damages) are governed by the Act in effect when the cause of action arose.