G.I. Joe: The Rise of Cobr-COPYRIGHT Transfer Terminations

The last time G.I. Joe had this tough a fight was when “The Rock” battled “Acting” in GI Joe: Retribution . . . and lost. This time, Joe, and his manufacturer Hasbro, face a different, more nuanced foe: the alleged creator of the then-unnamed G.I. Joe action figures, Stanley Weston. Weston, 82, claims that he “created the original idea of manufacturing and selling male action figures wearing and carrying miniaturized versions of the uniforms, insignias, emblems and equipment of each of the different branches of the United States armed forces.’’ His pitch emphasized that, like disposable razors, the various accessories that come with the figures would create a steady revenue stream after the initial figure was purchased. Weston claims that in 1963 he pitched the idea to Hasbro’s (then Hassenfeld Bros., Inc.) VP of Research and Development, who loved the concept and created a prototype at Weston’s direction. According to the complaint, Weston was consistently referred to as the creator and owner of the rights, and at the time, there was never an allegation that Hasbro owned the rights in and of itself. Furthermore, Weston claims they signed a contract allowing Hasbro to manufacture the toys, although in the fifty years since its execution neither party has been able to locate a copy.

Do ya SMELLLLLL, what THE ROCK is COOOKINNNNNNN

Dwayne “The Rock” Johnson in G.I. Joe: Retaliation – Courtesy of Fastlanemag.com

Yo, Joe! Authorship in Copyright Law

Generally in copyright, the author of a work is its owner. However, authorship is broader than the mere physical creation of a work. The author of a work is the person whose intellectual conceptions and visions are captured in physical form. This means that even if the expression of an idea is transposed by mechanical or rote transcription into a tangle form under the authority of a party, the authority figure is the author, not the person who followed directions. Lindsay v. RMS Titanic, 52 U.S.P.Q. 2d 1609 (S.D.N.Y. 1999). It is similar to Michelangelo having his apprentices work on the Sistine Chapel, he gets the credit and authorship even if he did not do all the physical work.

Similarly, even if Weston did not create the physical prototype of what would become, G.I. Joe, he directed its creation. He pitched his idea using sheets of oak tag, and directed the creation of initial drawings, and eventually the actual prototype. Weston offered to pay the expenses of prototype production, but was instead assured that Hasbro would “recoup any such expense in setting the purchase price of the rights,” and that if Weston did not sell the rights he would reimburse them. Thus, Weston assumed the financial burden of the prototype creation, and is the “author” and copyright owner of G.I. because it was his intellectual conceptions that were captured in physical form.

Go, Joe!

Original G.I. Joe action figures released in 1964 and the African American Soldier released in 1965 – Courtesy of Neatorama – http://www.neatorama.com/2010/04/30/10neat-facts-about-g-i-joe/

Termination of Copyright Transfers

Two sections of the Copyright Act of 1976 govern the transfer and recapture and copyright interests, § 203 governs transfers made after the effective date of the Act (Jan. 1, 1978), and § 304 governs transfers or renewal interests made before the effective date. The principle purpose of the original renewal format under the 1909 Act was to assure that a transferred copyright could be recaptured by the author or their surviving family after a reasonable time, which granted a new estate in the copyright complete with the opportunity to license or assign the work for new consideration.

Under § 203, a termination or transfer of license requires advanced notice within a specific time limit and under specific conditions; however, the rights cannot be contracted away or waived, and it does not have a retroactive effect, the transfer must date Jan. 1, 1978 or later. Generally, a grant may be terminated if (1) the grant lasted at least thirty-five years in duration; and (2) the termination occurs during the five years following the expiration of the initial grant execution. However, if the grant covered the right of publication of the work (the distribution of copies of the work to the public), then the period begins either at the end of thirty-five years from the date of publication of the work under the grant, or at the end of 40 years from the date of execution of the grant, whichever term ends earlier.

Ssss!

G.I. Joe’s enemy Cobra Commander – “Remember, a Cobra is a snake and snake is sneak spelled sideways,” – Courtesy of Blastr.com – https://www.blastr.com/2015-3-13/image-day-time-cobra-commander-received-key-city-springfield

The effective date must be stated in the advance notice, and must fall within the five years following the end of the applicable thirty-five or forty year period; however, the advance notice itself must be served even before that date. Under § 203(a)(4)(A), the advance notice must be served, at earliest, ten years before the effective date, or at latest, two years before the effective date. The effect of termination is that the rights covered by the (terminated) grant reverts to the owners of the termination interests, usually the author or their family. Importantly, the effects of termination do not extend to derivative works, and “a derivative work prepared earlier may continue to be utilized under the conditions of the terminated grant.”

Section 304(c) operates similarly to § 203 but with several key differences, including that it only covers grants by the author covering the renewal right in statutory copyright or a nineteen-year extended renewal term executed before Jan. 1, 1978. The beginning of the five-year termination period starts either at the end of fifty-six years of copyright protection or Jan. 1, 1978, whichever is later; and if the owners of the termination right fail to exercise it at the end of the fifty-six years, they have another opportunity at the end of seventy-five years of copyright protection. Lastly, if the copyright reverts to several beneficiaries, then they are treated as tenants-in-common with the right deal separately except where the dead author’s authors rights are shared, then majority action under a per stirpes basis as to that author’s share controls.

So, Weston’s termination is clearly governed by § 304. According to the complaint, Weston sent notice on January 8, 2015, and the effective date of termination is February 29, 2020. However, it’s hard to know if these dates are accurate when the physical contract is missing. Regardless, it is interesting to see someone make use of an aspect of copyright law that is largely unknown to the public. The termination of copyright transfers is a powerful tool in the author’s arsenal, and can serve to reward an author who may not have realized their work’s true value. Don’t let valuable IP assets slip through your fingers, now you know, and knowing is half the battle!

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