33 F.4th 131
2d Cir.2022Background
- "Can’t Help Falling In Love" was co-authored by Hugo Peretti in 1961; the song’s original copyright was governed initially by the 1909 Act and later by the 1976 Act for renewal purposes.
- In January 1983 Hugo Peretti, his wife June, and their daughters signed an assignment transferring their contingent renewal-term interests in the composition to the Aberbachs (predecessors to Authentic Brands).
- Hugo died in 1986, before the 1989 renewal term vested; the renewal was later registered by Hugo’s widow and daughters.
- In 2014 Hugo’s widow June and daughter Valentina served a §203 termination notice purporting to terminate the 1983 Assignment; Authentic Brands disputed its validity.
- The district court dismissed the Perettis’ declaratory-judgment claim, holding the 1983 Assignment was not a grant “executed by the author” under 17 U.S.C. §203 and thus not terminable; the Second Circuit affirmed.
- The court’s holding turns on statutory text and §204(a): a transfer is “executed by the author” only when the author signs and conveys rights the author actually owns; Hugo’s signature did not convert his family members’ separate contingent transfers into an author-executed grant.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does a multi-party document bearing the author’s signature make the transfers "executed by the author" under §203? | Peretti: The author’s signature on the single grant document is sufficient; §203 uses “executed” not “made” or “signed.” | Authentic Brands: §204(a) requires execution by the owner of the rights conveyed; an author cannot execute transfers of rights he does not own. | Held: §203 requires a written transfer signed by the owner of the rights conveyed; Hugo’s signature only executed his own contingent interest, not his family members’. |
| Can separately owned contingent grants on a joint document be treated as a single author-executed grant? | Peretti: The 1983 Assignment’s joint-and-several language creates a single, indivisible grant executed by the author. | Authentic Brands: Each signatory conveyed only his/her own rights; joint-author rules in §203(a)(1) apply to joint authors who share the same underlying rights, not family members with separate interests. | Held: Transfers are severable; only grants of rights actually owned by the author qualify as grants "executed by the author." |
| Do the author’s statutory successors retain a §203 termination right when the author died before the renewal vested? | Peretti: The successors own the author’s termination interest and can exercise it. | Authentic Brands: If the author’s contingent renewal right never vested or was not validly transferred, there is no author-executed grant for successors to terminate. | Held: If the author’s contingent renewal right failed to vest and conveyed nothing, successors cannot terminate because there is no author-executed grant to terminate. |
| Does statutory purpose or legislative history require a pro-heir interpretation that allows termination here? | Peretti: §203’s purpose—to protect authors and heirs—supports a broader reading favoring termination when the author’s signature appears. | Authentic Brands: Text and legislative history limit §203 to grants executed by the author; Congress deliberately distinguished §203 (post-1978 author grants) from §304(c) (grants by others). | Held: Court adheres to text and legislative history; policy does not override the clear statutory limits of §203. |
Key Cases Cited
- Stewart v. Abend, 495 U.S. 207 (U.S. 1990) (explains authors’ renewal rights and limits on assignees when author dies before renewal)
- Fred Fisher Music Co. v. M. Witmark & Sons, 318 U.S. 643 (U.S. 1943) (enforceability of assignments of renewal expectancies)
- Miller Music Corp. v. Charles N. Daniels, Inc., 362 U.S. 373 (U.S. 1960) (renewal rights are expectancies until vesting)
- Penguin Grp. (USA) Inc. v. Steinbeck, 537 F.3d 193 (2d Cir. 2008) (distinguishes §304(c) and §203 termination regimes)
- Baldwin v. EMI Feist Catalog, Inc., 805 F.3d 18 (2d Cir. 2015) (interpreting pre/post-1978 grant effects on termination)
- Davis v. Blige, 505 F.3d 90 (2d Cir. 2007) (principle that one cannot convey more than one owns)
- Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881 (U.S. 2019) (courts must follow statutory text even if results frustrate policy expectations)