Examining 'Harmless Errors' Provision For Copyright Termination Notices

Part One of this article, last month, introduced the dispute between the heirs of Superman co-creator Jerry Siegel and Warner Bros. and discussed the “harmless errors” clause itself. Part Two discusses the Register of Copyrights' regulations and delves into the Siegel heirs and Warner Bros. Entertainment arguments, as well as related court rulings.

“Harmless errors” in copyright termination notices “that do not materially affect the adequacy of the information required to serve the purposes of” 17 U.S.C. ”304(d) and 203, which provide timetables for the recapture of assigned copyrights, “shall not render the notice invalid.” See, 37 C.F.R. '201.10(e)(1). Section 201.10(e)(2) lists “safety value” examples of information that can constitute “harmless errors” in a termination notice, such as “in giving the date or registration number” so long the errors were “made in good faith and without any intention to deceive, mislead, or conceal relevant information.”

The copyright termination notice that the heirs of Superman co-creator Jerry Siegel sent in Siegel v. Warner Bros. Entertainment Inc., CV-04-8400-SGL, included a statement that, along with specifically identified works, termination applied to “each and every work (in any medium whatsoever, whenever created) that includes or embodies any character, story element, or indicia reasonably associated with SUPERMAN or the SUPERMAN stories.” (Works for hire aren't affected by the Copyright Act's termination provisions; work for hire was a consideration in Siegel as well as, for example, in a recent lawsuit filed in the Southern District of New York involving the validity of termination notices for Marvel comics characters purportedly created by the late artist Jack Kirby. See, Marvel Worldwide Inc. v. Kirby, 2010-cv-141.)

Siegel Heirs: Listing Titles Not 'Unequivocal'

Challenging the argument by defendants Warner Bros. and DC Comics that the catch-all language was too general, the Siegel heirs charged in their “Objection and Response to Statements Made At October 19, 2009 Oral Argument” that “[d]efendants misleadingly represented ' that the requirement to list a title was 'unequivocal' and 'imperative,' supposedly unlike the other requirements to which 'harmless error' applied.”

In a “Response to Plaintiffs Joanne Siegel and Laura Siegel Larson's Objection and Response to Statements Made At October 19, 2009 Oral Argument,” the defendants attacked the Siegel heirs' counsel's use of the word “misleadingly” as “unfounded and unprofessional,” then charged back: “The harmless error exception does not provide any example involving an outright omission of the required information. Rather, it allows for errors within required information that has actually been provided (e.g., an incorrect date, or an incorrect description of the relationship between the terminating and filing party), all of which must be accompanied by a justifiable and legitimate explanation. Plaintiffs' counsel's protests to the contrary, it cannot be disputed that on its face section 201.10(e)(1) makes exceptions for 'harmless errors,' not 'harmless omissions,' a distinction fully borne out by the examples in 201.10(e)(2).”

U.S. District Judge Stephen G. Larson of the Central District of California found in Siegel: “Far from seeking to constrain application of the harmless error rule, those examples in (e)(2) were only meant to foreclose disputes as to a certain narrow class of errors; the inference being that the Register [of Copyrights in promulgating the regulation] was cognizant that there would be occasion for further disputes concerning errors outside the kinds contained in (e)(2) that would be left for courts to decide in applying the general rule found in (e)(1).”

“Lest there be any doubt on the point,” Larson continued, “the Register placed a proviso at the beginning of subsection (e)(2) that specifically reminds the reader that the litany of examples that followed were to be read 'without prejudice to the general rule provided by paragraph (e)(1) of this section.' (emphasis added).”

Larson compared the copyright-termination notice regulations with those for notices of intent for compulsory licenses for uses of songs in sound recordings, by noting that “37 C.F.R. '201.18(d)(v)(A), like its regulatory cousin, section 201.10(b), requires that the notice for a compulsory license provide a 'clear statement of ' the title of the non-dramatic musical work' affected thereby. Section 201.18(g) also provides a harmless error provision that, like in 201.10(e)(1), is keyed to whether the error in question 'materially affects the adequacy of the information required to serve the purposes of' the relevant statutory section giving rise to the right to file said notice.”

Complete Omissions Not Covered

But in contrast to the termination-notice regulation, there is no safe harbor provision for compulsory-license notices. The Register of Copyrights noted in commentary accompanying '201.18 that “the [Copyright] Office does not anticipate that it will have any role in resolving disputes about whether an error in a notice as harmless. ' [S]uch disputes will have to be adjudicated in the courts.”

“Thus, a general harmless error rule, unadorned, anticipates and invites disputes as to its application to arise and be resolved by the court,” Judge Larson determined in Siegel, adding later that “the [c]ourt returns to consideration of the language set forth in the harmless error rule in (e)(1) to determine when an admitted error other than as listed in (e)(2), is harmless.”

Judge Larson agreed with the defendants “that, for any error in question to be considered harmless, its existence must be disclosed 'in the notice' itself; complete omissions without any other information touching on the subject matter of the error in the notice will not suffice to trigger the rule's possible application. ' The Register, when commenting upon harmless error, speaks of the 'errors' being 'in a notice of termination.' 42 F.R. 45916, 45919.” But Larson also noted: “Omissions of some or parts of that information might still be considered harmless so long as there are other pieces of information sufficient to satisfy the particular requirement present in the notice.”

Larson acknowledged that “there is no mention in plaintiffs' termination notices of the initial registration number, the title, the author, or the date on which the copyright was originally secured in the first two weeks' worth of Superman newspaper strips. On the other hand, there is ' some information that points to the works in question, contained within the catch-all clause.”

The Siegel heirs argued that neither of two key cases relied on by the defendants “held that the required listing of 'the title' is more unequivocal in the regulation and less subject to 'harmless error' than the other 'must include' requirements.” (In the two cases, Burroughs v. Metro-Goldwyn-Mayer Inc. , 683 F.2d 610 (2d Cir. 1982), involved termination notices for the “Tarzan” character and Music Sales Corp. v. Morris , 73 F.Supp.2d 364 (S.D.N.Y. 1999), involved the music of Duke Ellington composer Billy Strayhorn.) “As noted by this [c]ourt,” the Siegel heirs continued, “both the lower court's final judgment and the Second Circuit decision in Burroughs do not even mention the 'harmless error' rule. We also now know that the five works at issue in Burroughs were intentionally omitted from the notice as not subject to termination, rendering the 'harmless error' issue moot. ' Music Sales did not even concern the omission of works in a notice of termination. It concerned an exceedingly vague identification in the notice of the rant to be terminated contrary to the regulation.”

But Warner Bros. and DC Comics countered that plaintiffs' “counsel cannot change the fact that these two decisions are the only cases discussing the question of whether a work not identified in a notice ' whether it was omitted intentionally or not ' can ever be subject to termination, and both cases say clearly that it cannot. The analysis of the issue in Burroughs and Music Sales may have been brief, but this does not diminish the force of the precedent.”

Judge Larson admonished, however: “To state that the Second Circuit's decisions in Burroughs or that the district court's decision in Music Sales are 'squarely on point,' as defendants contend, is simply unfounded.” (In Music Sales, for example, the district court found boilerplate grant-description language customarily included in copyright termination notices to be adequate, i.e.: “Grant or transfer of copyright and the rights of copyright proprietor, including publication and recording right.”)

Conclusion

In the end, Judge Larson decided the Siegel heirs' termination notices for the early Superman comic strips gave the defendants adequate notice, including because “here the [catch-all] clause at issue does not make reference to information in other documents or records.” And as noted in Part One of this article, Larson found persuasive, given the vast exploitation of Superman works, “the amount of effort Siegel's heirs took in carefully cataloging and identifying the vast universe of works potentially at issue, the minuscule number of works that were not so specifically identified in the notice.” Judge Larson also concluded that the catch-all clause gave “reasonable opportunity” not only to the defendants, but also to researching members of the public as to the identity of the early Superman works at issue.

In a practical sense, Judge Larson's rare decision on “harmless errors” impacts efforts to recapture large numbers of assigned copyrights; the greater number of works involved, the less specificity will be required, so long as a diligent effort is made by the termination-notice sender to identify the majority of the works for which copyright-assignment termination is sought.