Sixth Circuit concludes that author’s 1975 assignment of gospel song “I’ll Fly Away” was subject to 2008 termination notice, notwithstanding subsequent 1979 assignment of rights by late composer’s wife.

In the late 1920s, Albert Brumley composed the gospel song “I’ll Fly Away,” which has since been covered by artists such as Johnny Cash and Alison Krauss. Albert then sold his song to a music publishing company, which copyrighted “I’ll Fly Away” in 1932. Albert subsequently purchased the company, thereby owning both the song and its copyright, and started his own music publishing company, Albert E. Brumley & Sons. In 1975, Albert and his wife Goldie sold Brumley & Sons to two of his sons, Robert and William, assigning their full right, title and interest in “I’ll Fly Away.” Albert died in 1977. In 1979, Goldie entered into an agreement with Robert and William, assigning all rights to obtain renewals or copyrights in Albert’s works in the future to Brumley & Sons. Robert bought out William’s interest in 1986, becoming the sole owner of the copyright. Goldie died in 1988.

In 2008, four of Albert’s other children served a termination notice on Robert to share in the rights of “I’ll Fly Away” and recorded the notice with the U.S. Copyright Office. The four siblings then sued Robert and Brumley & Sons, seeking a declaration that their termination notice was effective. Robert and the company asserted two defenses. First, that Albert’s song was a “work made for hire” and thus ineligible for termination under 17 U.S. Code Section 304(c); and second, that Goldie relinquished any termination rights in the 1979 assignment to Robert and William.

The district court ruled as a matter of law that Brumley’s wife did not extinguish the family’s termination rights in 1979. A jury then ruled in favor of the four siblings on the work-made-for-hire question. On appeal, the Sixth Circuit reversed and ordered a new trial. The second trial resulted in a verdict in favor of the four siblings. The only issue on appeal was whether Goldie extinguished the family’s termination rights in her 1979 assignment. The Sixth Circuit affirmed the lower court’s ruling.

The Copyright Act of 1976 contains a termination provision that allows an author or an author’s successors to terminate an earlier grant, providing the author or successors with a chance to recapture all interests in the copyright after having a fair opportunity to appreciate the true value of the work product. Section 304(c) provides that this termination right survives the author’s death, so long as the author never exercised the termination right. The other key feature of the termination right is that, at a minimum, agreements predating 1978 that purport to bargain away all rights in a copyrighted work may not limit the termination right.

On appeal, Robert first argued that Goldie’s 1979 assignment document exercised her termination interest. The Sixth Circuit disagreed. The act provides specific requirements for a termination notice, including that it must state the effective date of the termination and be recorded in the Copyright Office. Neither of those was met by Goldie’s 1979 assignment. Even had that not been the case, Goldie would have lacked the right to terminate on her own, given that she held 50 percent of the termination right because the other 50 percent passed in equal shares to the children when Albert died. But the act provides that more than one-half of the termination interest must be exercised in order to terminate. Since none of the children joined Goldie in the 1979 assignment, that assignment could not have amounted to an exercise of her termination right.

The Sixth Circuit also rejected Robert’s argument that Goldie’s 1979 document included an assignment of her termination interest. However, the 1979 document makes no mention of termination rights “even after the 1976 Act made them, as opposed to renewal rights, the brass-ring authority that authors, their spouses, and their heirs could invoke to capture latent value in a work,” the Sixth Circuit pointed out. In fact, the 1979 document mirrors the 1975 assignment, which also did not transfer any termination rights, since the concept did not yet exist in 1975.

Finally, the Sixth Circuit held that Robert’s reliance on cases in other circuits holding terminations invalid was misplaced. In the cases cited by Robert, including Milne ex rel.

Coyne v. Stephen Slesinger Inc. in the Ninth Circuit and Penguin Group (USA) Inc. v. Steinbeck in the Second Circuit, the pre-1978 assignments were clearly revoked by the post-1978 assignment. Here, however, the 1979 document does not even mention the 1975 assignment, much less revoke, replace or extinguish the 1975 assignment. Therefore, the Sixth Circuit reasoned, the 1975 contract remained intact — and subject to termination in 2008.