Case in point: In 2008, when the heirs of Superman’s co-creators were locked in a bruising legal battle with DC Comics, the court in Siegel v. Warner Bros. Entertainment held that “the statutory text could not be any clearer on this subject,” namely that a terminating party is only entitled to recapture domestic rights to the copyright in question, leaving any grant of foreign rights intact.
But now, more than fifteen years later, a new case out of Louisiana is challenging the prevailing view that copyright termination can only result in a recapture of U.S. rights, and—at least for now—the court seems to be buying the plaintiffs’ argument. Last week, Middle District of Louisiana Chief Judge Shelly Dick expressly declined to follow the reasoning of the California district court in Siegel and held that the plaintiffs presented a plausible claim to recapture both domestic and foreign rights to the song “Double Shot (Of My Baby’s Love).”
Bruce Springsteen, one of many artists to cover “Double Shot,” called it “the greatest fraternity rock song of all time.”
Vetter v. Resnik
The Facts
The case is Vetter v. Resnik, and it involves both renewal rights under the 1909 Copyright Act and statutory termination rights under the 1976 Act. The facts are a bit complicated, so I’ll try to simplify as much as possible:
In 1963, Cyril Vetter and Don Smith, co-authors of “Double Shot,” assigned their copyright interests to Windsong Music. They granted exclusive worldwide rights for the full term of copyright protection, including a contingent assignment of all renewal rights then in effect under the Copyright Act of 1909. The song gained popularity, and in 1966, Windsong obtained a U.S. copyright registration.
Smith died in 1972, and in 1994, Vetter and Smith’s heirs obtained a renewal copyright in the song. Under Supreme Court precedent, an assignment of renewal rights under the 1909 Copyright Act was enforceable only if the author was living when those rights vested. Since Vetter was alive at the time the renewal rights vested, the contingent transfer of his rights to Windsong was enforceable. However, because Smith had died before his renewal rights vested, his heirs inherited the renewal rights free and clear of the previous assignment to Windsong. Vetter and his company thereafter purchased the Smith heirs’ rights in the song. Windsong’s rights were later sold to the defendant, Robert Resnik.
In 2019, Vetter served a termination notice on Windsong and its successors in interest under Section 304(c) of the 1976 Copyright Act, terminating the 1963 assignment and recapturing the rights he and Smith had previously assigned, effective in 2022. At the end of that year, a licensing representative for ABC approached Vetter to request an expanded synchronization license to use “Double Shot” in digital versions of a 1987 Moonlighting episode. While Vetter provided ABC with a quote representing that he owned rights in the song exclusively throughout the world, Resnik took the position that Vetter’s renewal interest (acquired through the Smith purchase) and recaptured rights (acquired through the termination) were both limited to the United States.
The Dispute
Vetter’s complaint (read here) sought a declaration that he’s the sole owner of both the renewal copyright interest and recaptured rights in the song worldwide, not just in the United States. The lawsuit appears to be squarely directed at making new law in this area, with Vetter noting in his complaint that his legal theories have not been “judicially tested or analyzed in any significant way.”
Resnik disputed Vetter’s characterization. He filed a motion to dismiss, pointing to the language of the termination statutes themselves and citing the Siegel case for support that termination notices only affect U.S. rights. Resnik also emphasized that the authors of two leading copyright treatises, David Nimmer and William Patry, both agree that termination under U.S. copyright law does not impact foreign rights. According to Resnik, these authorities support the clear statutory language that termination only applies to domestic rights, leaving any foreign rights granted under previous agreements unaffected.
Resnik argued that this interpretation aligns with copyright’s territoriality principle, which recognizes that copyright protection in one country doesn’t extend to or affect protection in any other country. While the United States has treaty relations with many foreign countries through the Berne Convention and the Universal Copyright Convention, these treaties don’t themselves confer copyright protection. Instead, protection is conferred by each country’s internal copyright laws. Because copyright has no extraterritorial effect, the theory is that U.S. law can’t terminate rights based on foreign copyright laws.
While Vetter acknowledged that U.S. copyright law can’t remedy extraterritorial infringement, he countered that this case concerns ownership, not infringement. Citing the Second Circuit’s ruling in Itar-Tass Russian News Agency v. Russian Kurier, Vetter argued that ownership issues are distinct from infringement issues and should be determined by the law of the country where the work was created—in this case, the United States. Opposing Resnik’s theory of multiple and separate copyrights, Vetter argued that there is only one copyright in a given work, granted by the issuing country and then recognized by other countries pursuant to the Berne Convention and other treaties.
The Court’s Ruling
In an order issued last week, the court denied Resnik’s motion to dismiss (read here), holding that Vetter presented a plausible claim for relief regarding the worldwide scope of the renewal and recaptured interests in “Double Shot.”
Renewal Rights
Regarding renewal rights, the court found Vetter’s argument—that there is only one copyright recognized globally under the Berne Convention—plausible. The court highlighted that the Berne Convention requires member countries to recognize and protect copyrights from other member states, which suggests a single overarching copyright, rather than multiple, separate copyrights in each country.
In addition, the court noted that the plaintiffs’ interpretation aligns with the legislative intent to give authors and their families a second chance to benefit from their works. Therefore, it was plausible that all of the defendant’s rights, both domestic and foreign, were cut off when renewal rights vested, creating a completely new property interest that extends worldwide.
Termination Rights
The court also found it plausible that a U.S. copyright termination could result in the recapture of foreign copyrights. This part of the ruling required the court to interpret the phrase “arising under this title” in the Copyright Act’s termination provisions (a statutory termination right “affects only those rights covered by the grant that arise under this title, and in no way affects rights arising under any other Federal, State, or foreign laws”).
Vetter argued that “under this title” conveys no geographic implications for an author’s termination rights, citing the Supreme Court’s 2013 decision in Kirtsaeng v. John Wiley & Sons. In that case, the Court held that the phrase “under this title,” as used in the Copyright Act’s first sale doctrine, has no geographic significance and simply means “in accordance with” or “in compliance with” the Copyright Act.
The court found Vetter’s argument that foreign rights to the song “arise under” the United States Copyright Act, rather than the domestic laws of each individual country where the song may be exploited, to be plausible. Since the terminated grant was the initial assignment of worldwide rights from Vetter to Windsong, “[i]t plausibly and logically follows that a termination of a worldwide grant results in the recapture of worldwide rights; in other words, worldwide rights were covered by the terminated grant, so worldwide rights revert upon termination.” The court found that “this result effectuates the Congressional intent to provide the author a second chance to enjoy the benefits of his work and to mitigate the effects of early unremunerative transfers.”
The court expressly declined to follow the Central District of California’s ruling in Siegel, holding that the phrase “in no way affects rights arising under any other Federal, State, or foreign laws” could plausibly be interpreted, not as a geographical limitation, but rather as a distinction between categories of rights, ensuring that non-copyright-related contractual obligations remain intact.
My Take
As an initial matter, the court’s repeated invocation of the “plausibility” standard—a Supreme Court test for assessing the sufficiency of factual allegations in a complaint—seems misplaced in the context of legal issues involving statutory interpretation. If the court wasn’t yet ready to rule on these issues, it could have simply said so, instead of viewing legal arguments through the Supreme Court’s Iqbal/Twombly plausibility lens. As a result, the court’s opinion reads much more like an endorsement of Vetter’s legal theory, whether intended or not.
On the merits, while the plaintiffs’ arguments are clever, it’s unlikely they’ll ultimately hold up. It’s true that courts (at least those that follow the Second Circuit’s Itar-Tass opinion) look to the law of the country of origin to determine copyright ownership—that is, initial copyright ownership. However, the issue in the Vetter case is more properly seen as a question about the law applicable to the scope of a copyright assignment, a question the court in Itar-Tass expressly declined to consider. Professor Jane Ginsburg has argued persuasively that this should be decided by the lex loci protectionis—the law of the country (or countries) in which protection is claimed. Because copyright is territorial, the U.S. copyright may be recaptured via statutory termination, leaving foreign copyrights governed by the law of each country in which protection is claimed.
The necessary corollary to the principle of territoriality is that the termination of a U.S. grant of rights does not affect the ownership of rights granted for use in other countries. Vetter’s notion that “there is only one copyright, afforded in the work’s country of origin and then recognized by the international community pursuant to treaty obligations” isn’t really accurate. Treaties are designed to harmonize national copyright laws, not to create them.
Whether “plausible” or not, Vetter’s legal theory isn’t supported by the text or legislative history of the Copyright Act, which means that while he may own the copyright for “Double Shot” in the United States, the assignment of rights in other countries should remain intact.
But that’s just what I think. Let me know what you think. Drop me a line in the comments below or @copyrightlately on social media.
Hi, Aaron. Hope you’re well. Interesting case. It supports the assertion that the termination provisions raise more questions than they answer! Given territoriality, I’ve often thought that a given non-US court can make what it will of the effect of US termination in its jurisdiction. It doesn’t seem that treaty obligations prevent that. The foreign court may or may not choose to follow US precedent, though as this case illustrates the state of that precedent is, at the moment, one of uncertainty. Berne could prevent the foreign jurisdiction from requiring formalities as a condition to protection, e.g., filing a renewal. But this case isn’t about conditions to protection, it’s about the effect of transfers. What do you think of this practical point? Best.
Hi Jeremy – I agree that Berne wouldn’t prohibit a foreign court from determining whether to apply U.S. termination law extraterritorially, but think there’s a big difference between foreign courts deciding which law governs in their countries vs. a U.S. court doing so.
Would welcome your further thoughts on that difference! Perhaps this is part of a larger question about US courts issuing judgments with purported worldwide effect? If a US court adjudicates an ownership dispute between two US parties, and declares that party A owns all rights worldwide because termination affects foreign rights,, to what extent is party B free to go to a commercially important foreign jurisdiction seeking a local judgment of its ownership in that territory? If party B does that, is it in some way violating the US judgment and subject to some remedial action from the US court? I’m afraid that goes beyond my retiree copyright lawyer pay grade (i.e., zero!) But I recall pondering the issue back in the day though the context escapes me. It does seem to me that the uncertainties involved in the issue make it difficult to give a client a truly definitive answer about foreign rights- But that problem has existed for a long time, e.g., in the Abend context.
I just don’t see on what basis a U.S. court could rely on U.S. law to purport to dictate what happens in foreign countries under foreign law. I suppose the U.S. court could attempt to apply the law of multiple foreign countries, but that would be a mess – each country’s internal copyright law and treaty obligations would need to be considered, and even then, there’s a pretty good chance the U.S. court would get it wrong. And if a foreign court in one of those countries were to disagree with the assessment, it seems that the foreign court should have the last word on the interpretation of its own laws.
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100% agree with you. There should not be extraterritorial impact of a termination effected pursuant to U.S. law.
Hi, Aaron. Hope you’re well. Interesting case. It supports the assertion that the termination provisions raise more questions than they answer! Given territoriality, I’ve often thought that a given non-US court can make what it will of the effect of US termination in its jurisdiction. It doesn’t seem that treaty obligations prevent that. The foreign court may or may not choose to follow US precedent, though as this case illustrates the state of that precedent is, at the moment, one of uncertainty. Berne could prevent the foreign jurisdiction from requiring formalities as a condition to protection, e.g., filing a renewal. But this case isn’t about conditions to protection, it’s about the effect of transfers. What do you think of this practical point? Best.
Hi Jeremy – I agree that Berne wouldn’t prohibit a foreign court from determining whether to apply U.S. termination law extraterritorially, but think there’s a big difference between foreign courts deciding which law governs in their countries vs. a U.S. court doing so.
Would welcome your further thoughts on that difference! Perhaps this is part of a larger question about US courts issuing judgments with purported worldwide effect? If a US court adjudicates an ownership dispute between two US parties, and declares that party A owns all rights worldwide because termination affects foreign rights,, to what extent is party B free to go to a commercially important foreign jurisdiction seeking a local judgment of its ownership in that territory? If party B does that, is it in some way violating the US judgment and subject to some remedial action from the US court? I’m afraid that goes beyond my retiree copyright lawyer pay grade (i.e., zero!) But I recall pondering the issue back in the day though the context escapes me. It does seem to me that the uncertainties involved in the issue make it difficult to give a client a truly definitive answer about foreign rights- But that problem has existed for a long time, e.g., in the Abend context.
I just don’t see on what basis a U.S. court could rely on U.S. law to purport to dictate what happens in foreign countries under foreign law. I suppose the U.S. court could attempt to apply the law of multiple foreign countries, but that would be a mess – each country’s internal copyright law and treaty obligations would need to be considered, and even then, there’s a pretty good chance the U.S. court would get it wrong. And if a foreign court in one of those countries were to disagree with the assessment, it seems that the foreign court should have the last word on the interpretation of its own laws.
Agree! Which is why it’s difficult to give worldwide advice to a client on this issue!! Thanks!