By Guest Blogger Tyler Ochoa

[Eric’s note: this is another Long Read post from Prof. Ochoa, clocking in at over 10k words.]

Territoriality is a fundamental principle of international intellectual property law: each nation governs patents, trademarks, and copyrights within its own borders. Recently, the U.S. Court of Appeals for the Fifth Circuit released an opinion that obliterated that principle with respect to copyrights. (The “volcanic” metaphor is further explained below.)

In Vetter v. Resnik, No. 25-30108 (5th Cir. Jan. 12, 2026), the Fifth Circuit affirmed a District Court ruling that when a U.S. copyright owner terminates an assignment under U.S. law, it recaptures the entire copyright interest in the work worldwide. It so held notwithstanding what everyone else thought was the clear command of 17 U.S.C. 304(c)(6)(E) that “Termination of a grant under this section affects only those rights covered by the grants that arise under this title, and in no way affects rights arising under any other Federal, State, or foreign laws.”

Similarly, the Fifth Circuit also held that when the 28-year first term of a pre-1978 copyright expires, the person entitled to the second, renewal term receives the entire copyright interest in the work worldwide, notwithstanding that virtually all other countries have only a single, unitary term of copyright. Under the ruling, the assignment of any foreign interest in a copyright during the first term expires along with the U.S. copyright at the end of the 28-year term, leaving the assignee who purchased what it thought was a life-plus-50 (or life-plus-70) copyright in foreign countries with nothing.

The specious reasoning of the Fifth Circuit is that there is only a single, unitary copyright that “arises” in the country of origin and is merely “recognized” and “enforced” in other countries under the Berne Convention (rather than separate, divisible copyright interests in each country, as is implicit under the principle of territoriality).

The Fifth Circuit’s decision reverses a decades-long consensus on the effect of renewal and termination under U.S. law. The logical implication of the Fifth Circuit’s ruling is that when a copyright “arises” under foreign law and is merely “recognized” here, then that copyright is not subject to termination in the United States at all, nor is its ownership in the United States governed by U.S. law concerning renewal. That would be a severe breach of the principle of national treatment in both the Berne Convention and the TRIPS Agreement, under which the United States is obliged to give foreign authors copyright protection that is at least as favorable as that granted to domestic authors.

From Washington DNR, https://www.flickr.com/photos/wastatednr/4607166057

(In a blog post twelve years ago, I described a district court opinion on pre-1972 sound recordings as “huge, as in 1906-San-Francisco-earthquake huge,” because “[i]t literally could result in undoing 75 years of copyright history.” Based on that description, Eric dubbed it “a seismic ruling,” and it resulted in eight years of litigation and appeals in courts around the country (chronicled here and here), and in the Classics Protection and Access Act (as described here). But that ruling was limited to copyright in pre-1972 sound recordings under U.S. law. The Fifth Circuit’s opinion last week is potentially orders of magnitude more disruptive: it is an appellate ruling, not just a district court decision; it affects all pre-1978 copyrighted works and all works subject to termination, not just pre-1972 sound recordings; and it potentially affects nearly all copyright assignments and ownership worldwide. In searching for a similar metaphor, I can only describe the Fifth Circuit’s opinion as a “volcanic explosion,” as in Krakatoa in 1883 or Tambora in 1815, because its effects will be felt around the world, not just in the United States, for many years to come.)

If you are already familiar with renewal and termination rights under U.S. copyright law, you can skip to The Principle of Territoriality, below. (Or rather, skip to the last paragraph in the previous section on Termination of Transfers.) If not, a little background is in order.

Background: Renewal Under the 1909 Copyright Act

Under the 1909 Copyright Act, “any person entitled thereto by this Act may may secure copyright for his work by publication thereof with the notice of copyright required by this Act.” [1909 Act §9] Unpublished works could also obtain a federal statutory copyright by registration. [1909 Act §11] For musical works, “publication” took the form of sheet music only; Congress later confirmed that the distribution of a sound recording of a musical work was not a “publication” of the musical work. [17 U.S.C. § 303(b)]

Under section 23 of the 1909 Act (later renumbered as § 24), “the copyright secured by this Act shall endure for twenty-eight years from the date of first publication” (or for an unpublished work, from the date of registration). For most works, however, the author (if living) or the author’s heirs could obtain a second 28-year term by filing an application for renewal with the Copyright Office “within one year prior to the expiration of the original term of copyright.” [Id.]

The purpose of this two-term structure was to give authors a “second bite at the apple” by allowing them to recapture their copyrights at the end of the first term and renegotiate any contracts that had been made during the first term. “Your committee … decided that it was distinctly to the advantage of the author to preserve the renewal period. It not infrequently happens that the author sells his copyright outright to a publisher for a comparatively small sum. If the work proves to be a great success and lives beyond the term of twenty-eight years, your committee felt that it should be the exclusive right of the author to take the renewal term, and the law should be framed as is the existing law, so that he could not be deprived of that right.” [H.R. Rep. 60-2222, at 14]

Publishers, however, were able to defeat this Congressional purpose by requiring authors to assign both the initial term and the renewal term in the initial publication contract. Such contracts typically also granted the publisher an irrevocable “power of attorney” to make the renewal application in the author’s name and to execute the assignment of the renewal term after it had been obtained. In 1943, in a controversial decision, the U.S. Supreme Court held that an author could assign a renewal term in advance of its vesting; and that such advance assignments were valid and enforceable. [Fred Fisher Music Co. v. M. Witmark & Sons, 318 U.S. 643 (1943)]

The advance assignment of a renewal term, however, was subject to an important qualification: it was an assignment of a contingent interest. Such an assignment was enforceable only if the author lived until the renewal term vested; but if the author died before the renewal term vested, the renewal term reverted to the author’s heirs. [Miller Music Corp. v. Charles N. Daniels, Inc., 362 U.S. 373 (1960)]

The Supreme Court summarized these principles in Stewart v. Abend, 495 U.S. 207 (1990):

In this way, Congress attempted to give the author a second chance to control and benefit from his work. Congress also intended to secure to the author’s family the opportunity to exploit the work if the author died before he could register for the renewal term….

“An assignment by an author of his renewal rights made before the original copyright expires is valid against the world, if the author is alive at the commencement of the renewal period. [Fred] Fisher Co. v. [M.] Witmark & Sons, 318 U. S. 643, so holds.” [quoting Miller Music, at 375] If the author dies before that time, the “next of kin obtain the renewal copyright free of any claim founded upon an assignment made by the author in his lifetime. These results follow not because the author’s assignment is invalid but because he had only an expectancy to assign; and his death, prior to the renewal period, terminates his interest in the renewal which by § 24 vests in the named classes.” Ibid….

After Miller Music, if the author dies before the commencement of the renewal period, the assignee holds nothing.

495 U.S. at 218-20 (emphasis added).

All of those cases, of course, were interpreting U.S. law. Although the U.S. originally copied its two-term structure from British law, the U.K. abandoned its two-term structure in 1842, and it adopted a unitary term of life of the author plus 50 years (the term then recommended by the Berne Convention) in 1911. [UK Copyright Act 1911 §3] Moreover, at the same time the U.K. adopted its own “second bite at the apple”: any assignments made by the author during their lifetime automatically reverted to the author’s heirs 25 years after the author’s death. [UK Copyright Act 1911 §5(2), repealed effective Jan. 1, 1957.] Thus, when the U.S. Supreme Court said that an author “had only an expectancy to assign,” it could only have been referring to U.S. law. Under the laws of other countries, there was no such “expectancy”: an author owned a single term in each of those countries by virtue of their authorship, and an agreement assigning a copyright worldwide presumably was valid and enforceable (and fully vested) in those countries at the time the agreement was executed (subject to defeasance in countries with reversion rights).

Background: Duration and Termination of Transfers Under the 1976 Act

In the 1976 Copyright Act, Congress retained the two-term structure for works that were published or registered before its effective date (January 1, 1978), in order to preserve settled expectations. (Arguably, any attempt to change the renewal provisions in existing copyrights would have been an unconstitutional “taking” of property under the Fifth Amendment.) But it extended the renewal term to 47 years, for a total maximum duration of 28 + 47 = 75 years from the date of first publication (or the date of registration, for unpublished works). The renewal term was later extended to 67 years by the Copyright Term Extension Act of 1998, for a maximum duration of 28 + 67 = 95 years from the date of first publication. [17 U.S.C. § 304]

For works created in 1978 or later, the 1976 Act adopted a single unitary term of life of the author plus 50 years (the minimum term now required by the Berne Convention). That term was later extended to life of the author plus 70 years by the Copyright Term Extension Act of 1998. The 1976 Act also provided an alternative term for works made for hire: 75 years from first publication or 100 years from creation, whichever was shorter. Those terms were later extended by another 20 years each by the Copyright Term Extension Act of 1998. [17 U.S.C. § 302] (Existing works that had not been published or registered before 1978 receive the same terms as new works, subject to a statutory minimum. [17 U.S.C. § 303(a)])

In the 1976 Act, Congress partially restored the “second bite at the apple” by enacting a termination right: during a specified five-year period, an author can serve and file a “notice of termination” on an assignee and recapture his or her copyright. The termination right comes in two flavors: section 203 governs terminations for grants executed in 1978 or later; and section 304(c) governs terminations for pre-1978 grants of the renewal term, in works published or registered before 1978. Under section 203, the five-year termination window generally opens 35 years after the date of the grant to be terminated; while under section 304(c), the five-year window opens 56 years after the date the copyright was granted (the date of first publication, or registration for an unpublished work).

An important limitation is that termination is not automatic; the author or the author’s heirs must serve a termination notice on the grantee (and any successors in interest) at least two years, and not more than ten years, before the “effective date” of the termination (which must fall within the five-year window); and they must file the notice with the Copyright Office prior to the effective date. Congress also sought to avoid re-creating the Fred Fisher Music problem by expressly providing that “Termination of the grant may be effected notwithstanding any agreement to the contrary, including an agreement to make a will or to make any future grant.” [17 U.S.C. § 203(a)(5); 17 U.S.C. § 304(c)(5)]

Both termination provisions also set forth the geographic scope of the termination in identical terms: “Termination of a grant under this section affects only those rights covered by the grants that arise under this title, and in no way affects rights arising under any other Federal, State, or foreign laws.” [17 U.S.C. § 203(b)(5); 17 U.S.C. § 304(c)(6)(E)] As one court explained:

[T]he statutory text could not be any clearer on this subject. Through this section, Congress expressly limited the reach of what was gained by the terminating party through exercise of the termination right; specifically, the terminating party only recaptured the domestic rights (that is, the rights arising under title 17 to the United States Code) of the grant to the copyright in question. Left expressly intact and undisturbed were any of the rights the original grantee or its successors in interest had gained over the years from the copyright through other sources of law, notably the right to exploit the work abroad that would be governed by the copyright laws of foreign nations. Thus, the statute explains that termination “in no way affects rights” the grantee or its successors gained “under foreign laws.”

Siegel v. Warner Bros. Entertainment, Inc., 542 F. Supp. 2d 1098, 1140 (C.D. Cal. 2008), rev’d on other grounds sub nom. Larson v. Warner Bros. Entertainment, Inc., 504 F. App’x 536 (9th Cir. 2013). The Siegel court’s holding was supported by both Nimmer on Copyright (“A grant of copyright ‘throughout the world’ is terminable only with respect to uses within the geographic limits of the United States”) and Patry on Copyright (“Accordingly, where a U.S. author conveys worldwide rights and terminates under either section, grants in all other countries remain valid according to their terms or provisions in other countries’ laws.”). Other courts have agreed. See Fred Ahlert Music Corp. v. Warner/Chappell Music, Inc., 155 F.3d 17, 20 (2d Cir. 1998) (as a result of termination, “Warner’s domestic rights in the Song reverted to Dixon’s heirs.”); Clancy v. Jack Ryan Enterprises, Ltd., 2021 WL 488683, at *46 (D. Md. Feb. 10, 2021) (“the worldwide grant of copyright is only subject to termination insofar as its U.S. component is concerned, but not subject to termination in the rest of the world.”).

The Principle of Territoriality

“The principle of territoriality has long been acknowledged as a fundamental tenet of the international IP system.” [Daniel J. Gervais, The Principle of Territoriality in International Intellectual Property Law, [2025] GRUR Int’l 141, at 143] “The major treaties involving intellectual property are all premised on the concept of territoriality, meaning that each nation is entitled to police the use of intellectual property within its own borders.” [Joyce, Ochoa & Carroll, Copyright Law § 8.04 (Carolina Academic Press 12th ed. 2025)] “As a general matter, intellectual property rights are territorial in nature and are created, not by international treaty, but by national law. The principle of territoriality can be viewed as a corollary to national sovereignty: a sovereign’s laws, such as those creating intellectual property rights, have effect only within the territory of that nation.” [Chow & Lee, International Intellectual Property at 18 (West 5th ed. 2025)]

To reduce friction in international trade, there is a web of international treaties and agreements by which many of the world’s nations have agreed to minimum standards of protection. “Their most important features are substantive minimum rights and the principle of national treatment according to which each country shall accord the rights provided for in the conventions to the nationals of other contracting states.” [Alexander Peukert, Territoriality and Extraterritoriality in Intellectual Property Law, at 3 (2010)]

In copyright law, for example, the territorial nature of protection is codified in the Berne Convention. When an author in a member country creates an original work, they benefit from protection not through a single unified right but rather through a bundle of national rights. This means the author obtains 181 distinct national copyrights (that is, the number of member states of the Berne Union as of November 2025) – each governed by its own legal system. These national rights are independent, tradable, and subject to local laws on duration, limitations and exceptions, and enforcement mechanisms. Consequently, the scope and enforceability of the same work can vary substantially from one jurisdiction to another. [Gervais, at 144]

“Thus, international law in the field of IP does not overcome but confirms that IP protection is limited territorially.” [Peukert, at 3-4 (emphasis in original)] See also Jane C. Ginsburg, Global Use / Territorial Rights, 42 J. Copyr. Soc’y USA 318, 319 (1995): “the rule of national treatment … reinforces the principle of territoriality, for it confirms the role of local copyright laws, by requiring that local law apply equally to the protection of local and foreign works of authorship.”

For patents and trademarks, territoriality is expressly recognized in the Paris Convention for the Protection of Industrial Property, which provides: “Patents shall include the various kinds of industrial patents recognized by the laws of the countries of the Union.” [Paris, art. 1(4)] “Patents applied for in the various countries of the Union by nationals of countries of the Union shall be independent of patents obtained for the same invention in other countries.” [Paris, art. 4bis] “The conditions for the filing and registration of trademarks shall be determined in each country of the Union by its domestic legislation.” [Paris art. 6(1)] A mark duly registered in a country of the Union shall be regarded as independent of marks registered in the other countries of the Union, including the country of origin.” [Paris art. 6(3)]

Territoriality is also an implicit premise of the Berne Convention for the Protection of Literary and Artistic Works: “Authors shall enjoy, in respect of works for which they are protected under this Convention, in countries of the Union other than the country of origin, the rights which their respective laws do now or may hereafter grant to their nationals, as well as the rights specially granted by this Convention.” [Berne art. 5(1) (emphasis added)] “The enjoyment and the exercise of these rights shall not be subject to any formality … [and] shall be independent of the existence of protection in the country of origin of the work.” [Berne, art 5(2)] “Consequently, apart from the provisions of this Convention, the extent of protection, as well as the means of redress afforded to the author to protect his rights, shall be governed exclusively by the laws of the country where protection is claimed.” [Id.]

In the United States, patent law is expressly territorial, while trademark and copyright laws are only implicitly territorial. Compare 35 U.S.C. § 154(a)(1) (a patent grants “the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States) (emphasis added) with 17 U.S.C. § 106 (“the owner of copyright under this title has the exclusive rights to do and to authorize any of the following”). In holding that U.S. trademark law “extend[s] only to claims where the claimed infringing use in commerce is domestic,” Abitron Austria GmbH v. Hetronic Int’l, Inc., 600 U.S. 412, 143 S.Ct. 2522 (2023), the U.S. Supreme Court explained its approach to the question:

“It is a longstanding principle of American law that legislation of Congress, unless a contrary intent appears, is meant to apply only within the territorial jurisdiction of the United States.” Morrison v. National Australia Bank Ltd., 561 U.S. 247, 255 (2010) [internal quotes omitted]. We have repeatedly explained that this principle, which we call the presumption against extraterritoriality, refers to a “presumption against application to conduct in the territory of another sovereign.” Kiobel v. Royal Dutch Petroleum Co., 569 U.S. 108, 119 (2013)…. In other words, exclusively “[f]oreign conduct is generally the domain of foreign law.” Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 455 (2007) (alteration omitted). The presumption “serves to avoid the international discord that can result when U. S. law is applied to conduct in foreign countries” and reflects the “commonsense notion that Congress generally legislates with domestic concerns in mind.” RJR Nabisco, Inc. v. European Community, 579 U.S. 325, 335-336 (2016).

Applying the presumption against extraterritoriality involves “a two-step framework.” At step one, we determine whether a provision is extraterritorial, and that determination turns on whether “Congress has affirmatively and unmistakably instructed that” the provision at issue should “apply to foreign conduct.” Id., at 335, 337…. If Congress has provided an unmistakable instruction that the provision is extraterritorial, then claims alleging exclusively foreign conduct may proceed, subject to “the limits Congress has (or has not) imposed on the statute’s foreign application.” RJR Nabisco, 579 U.S. at 337-338.

If a provision is not extraterritorial, we move to step two, which resolves whether the suit seeks a (permissible) domestic or (impermissible) foreign application of the provision. To make that determination, courts must start by identifying the “focus of congressional concern” underlying the provision at issue. Id., at 336. “The focus of a statute is the object of its solicitude, which can include the conduct it seeks to regulate, as well as the parties and interests it seeks to protect or vindicate.” WesternGeco LLC v. ION Geophysical Corp., 585 U. S. 407, 138 S.Ct. 2129, 2136 (2018) (alterations [and internal quotes] omitted).

143 S.Ct. at 2528. Although the Lanham Act defines “commerce” as “all commerce which may lawfully be regulated by Congress,” 15 U.S.C. § 1127, the Court held at step one that “a definition of ‘commerce’ that refers to Congress’s authority to regulate foreign commerce” “is not enough to rebut the presumption.” 143 S.Ct. at 2530.

At step one, the 1976 Copyright Act contains an express prohibition on importation and exportation of unauthorized copies of copyrighted works, 17 U.S.C. § 602; and it expressly specifies which works of foreign origin are eligible for copyright protection here, 17 U.S.C. § 104, and which foreign works have had their copyrights “restored” despite previously failing to comply with U.S. law, 17 U.S.C. 104A. But the “exclusive rights” that it provides contain no language that could be construed as “an unmistakable instruction that the provision is extraterritorial.” Thus, it is clear under both the statute and the Berne Convention that U.S. law is limited to copyright infringement that occurs within the territory of the United States, as the courts of appeals have repeatedly held. See, e.g., Subafilms, Ltd. v. MGM-Pathé Comms. Co., 24 F.3d 1088, 1097-98 (9th Cir. 1994).

But at step two, U.S. courts have recognized limited exceptions to the principle against extraterritoriality in copyright law. Courts have been willing to find liability when conduct outside the U.S. contributes to infringement inside the U.S., at least where the intent to infringe is clear. See, e.g., Spanski Enterprises, Inc. v. Telewizja Polska, S.A., 883 F.3d 904 (D.C. Cir. 2018). And where there is a “predicate act” of infringement in the United States, courts have been willing to award damages for losses abroad that result from domestic infringement. See, e.g., Update Art., Inc. v. Modiin Publishing, Ltd., 843 F.2d 67 (2d Cir. 1988). The Ninth Circuit has held, however, that recovery for a “predicate act” is limited to defendant’s overseas profits, under a constructive trust theory, and cannot include actual damages. See Los Angeles News Service v. Reuters Television Int’l, Ltd., 340 F.3d 926 (9th Cir. 2003).

Courts have also recognized limited exceptions to the principle of national treatment. Most importantly for this case, the Second Circuit has held that although U.S. law must apply to infringement that occurs in the U.S., ownership of a U.S. copyright should be determined by “the law of the state with ‘the most significant relationship’ to the property and the parties.” Itar-Tass Russian News Agency v. Russian Kurier, Inc., 153 F.3d 82, 90 (2d Cir. 1998). Because the works at issue were created by Russian nationals and were first published in Russia, Russia was the “country of origin” of the works under a (now-deleted) statutory definition and under the Berne Convention [Berne art. 5(4)], and the court held that “Russian law is the appropriate source of law to determine issues of ownership of rights.” The court immediately qualified its holding, however, by saying “we consider only initial ownership, and have no occasion to consider choice of law issues concerning assignments of rights.” [Id. at 91 n.11] Itar-Tass provides limited support for the Fifth Circuit’s holding in Vetter; but one should add that the Itar-Tass court also had no occasion to consider choice of law issues concerning ownership or geographic scope of the U.S.-specific renewal term or termination of transfers.

In the Abrams & Ochoa treatise, I wrote the following opposing views concerning Itar-Tass:

The choice of law rule in Itar-Tass can be questioned. Technically, it violates the principle of national treatment: ownership of domestic copyrights are determined under U.S. law, while ownership of foreign copyrights are determined under foreign law. That does not comply with national treatment; saying that the same “choice of law” rule applies to both is simply a clever way to disguise the disparate treatment….

As a practical matter, however, employers and employees are likely to structure their contracts and negotiations around their domestic law. It would be strange if U.S. law purported to determine the “work made for hire” status of a work created and first published in Russia, especially in a dispute between a Russian employer and a Russian employee. It certainly is not inconceivable, especially if one considers the U.S. copyright to be independent of the Russian copyright; in theory, the Russian copyright could be owned by one party and the U.S. copyright could be owned by another. Nonetheless, it makes some sense for ownership and transfers to be governed by foreign law (subject to the procedural requirement in U.S. law that transfers of an exclusive right must be made in a signed writing). [Abrams & Ochoa §19:3]

The Itar-Tass rule is also consistent with the treatment of “restored” copyrights: works of foreign origin that were in the public domain in the U.S. for various reasons, but that had their copyrights “restored” after we joined the Berne Convention and the TRIPS Agreement. As amended, the Copyright Act provides that “A restored work vests initially in the author or initial rightholder of the work as determined by the law of the source country of the work.” [17 U.S.C. § 104A(b)]

The Berne Convention provides that “Ownership of copyright in a cinematographic work shall be a matter for legislation in the country where protection is claimed.” [Berne art. 14bis(2)(a)] Berne does not otherwise attempt to define “ownership,” nor does it define who is the “author” entitled to claim rights under national law. Thus, it is arguable whether the provision for cinematographic works is merely an example of a general principle (i.e., that ownership of copyright in all works is “a matter for legislation in the country where protection is claimed”), or whether it should be considered an exception to a different general principle (i.e., that authorship, and therefore ownership, should be determined by the law of the country of origin). Itar-Tass held that it was “a specific provision for films that was adopted without an intention to imply anything about other works.” [153 F.3d at 91 n.12.] But given the principle of territoriality, the better view is that “[s]ince the territorially limited rights are independent from one another, they may be owned by different persons, even if the same subject matter is concerned. National legislation may … grant the rights in the same … work, etc. to different persons.” [Peukert, at 3] For example, in most nations “authors” can only be natural persons; but in the United States, “[i]n the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.” [17 U.S.C. § 201(b)]

The Berne Convention also contains an important exception to the principle of national treatment. Under Berne art. 7(8), countries are permitted (but not required) to apply “the rule of the shorter term,” under which: “the term shall be governed by the legislation of the country where protection is claimed; however, unless the legislation of that country otherwise provides, the term shall not exceed the term fixed in the country of origin of the work.” The U.S. follows national treatment and does not apply the rule of the shorter term. The European Union, however, has adopted the rule of the shorter term as mandatory for its 27-member nations.

The Facts

The case concerns the song “Double Shot (Of My Baby’s Love),” written by Cyril Vetter and Donald Smith in 1962. In 1963, Vetter and Smith assigned their entire copyright interest in the song to Windsong Music Publishers for $1. The agreement included “a transfer of the exclusive rights to Double Shot throughout the world for the full term of copyright protection, including a contingent assignment of all renewal period rights under the [Copyright Act of 1909].” [Slip op. at 2. The quote is unattributed, but it is a direct quote from the Complaint ¶ 58.] The song was recorded in 1963 by Dick Holler and the Holidays, and a 1966 cover by the Swingin’ Medallions reached No. 17 on the Billboard Hot 100. Windsong registered the work in 1966. (Presumably it was registered as an unpublished work, because the parties treat that registration as starting the initial 28-year copyright term. The other possibility is that the work was first published in sheet music form in 1966. I have not been able to locate the original registration in my preliminary search of the Copyright Office online records.)

Smith died in a plane crash in 1972. In 1994, when the first 28-year term was due to expire, Vetter and Smith’s heirs renewed the copyright in “Double Shot.” [Slip op. at 2-3] “Because Vetter was alive …, his renewal rights transferred to Windsong under the 1963 Assignment. Because Smith died before the start of the renewal term, his heirs obtained his renewal rights rather than Windsong…. Therefore, Windsong owned fifty percent of the Renewal Copyright …, and Smith’s heirs owned the remaining fifty percent of the Renewal Copyright in 1994.” [Slip op. at 3]

In 1996, Vetter Communications Corp. (VCC) purchased the renewal rights held by Smith’s heirs; and Windsong recorded a document purporting to confirm the transfer of Vetter’s 50% share to Windsong. (I have not seen the 1963 Assignment; but it was common practice in such agreements to grant the assignee “power of attorney” to renew the copyright and to execute an assignment of the renewal term on behalf of the author. Because the parties agreed that the 1963 Assignment transferred Vetter’s renewal interest to Windsong, both the district court and the appellate court agreed that the 1996 document was irrelevant.) [Slip op. at 3 & n.2] Windsong then assigned half of its share (25% of the total interest) to Lyresong Music, Inc. (Under the 1909 Act, the renewed U.S. copyright would have expired 56 years after the work’s publication or registration, in 2022; but the 1976 Act extended the renewal term to the end of 2041 (subject to termination); and the 1998 Bono Act further extended the renewal term to the end of 2061.)

“In March 2019, Vetter sent Windsong and Lyresong a notice of termination under 17 U.S.C. § 304(c),” listing an effective date of May 3, 2022. [Slip op. at 4] In August 2019, Windsong informed Vetter that the company (including its 25% share) had been sold to the Robert Resnik, dba Resnik Music Group. In 2022, ABC requested a license to use the song (for streaming a previously aired episode of the TV show Moonlighting) and Vetter gave them a quote; but Resnik continued to claim 25% ownership of the song. [Slip op. at 4] When questioned, Resnik conceded the effectiveness of the termination notice within the United States, but he then claimed that under the 1909 Act and 17 U.S.C. § 304(c)(6)(E), he continued to own all foreign rights to the song. [Complaint at ¶¶ 100, 103, 111] Lyresong apparently did not contest the termination.

On Sept. 27, 2023, Vetter filed a complaint in the U.S. District Court for the Middle District of Louisiana (where he resides), seeking a declaration that he was the sole owner throughout the world of 100% of the copyright interest in Double Shot. Specifically, Count One sought a declaration that VCC was the sole owner throughout the world of the 50% share in the renewal copyright that it had purchased from Smith’s heirs; and Count Two sought a declaration that Vetter was the sole owner throughout the world of the 50% share that he had recaptured from Windsong/Resnik and Lyresong through termination. [Complaint at ¶¶ 100, 122, 124]

The District Court’s Decision

Defendants Resnik and the Resnik Music Group (collectively “Resnik”) filed a motion to dismiss, arguing that neither VCC’s renewal interest nor Vetter’s termination notice have any effect outside the United States. [2024 Opinion at ¶ 11] “In opposing Defendant’s motion, Plaintiffs rely on the history, development, and purposes of United States copyright law to assert an admittedly ‘novel theory of recovery.’” [2024 Opinion at ¶ 12]

In a thoughtful opinion (that nonetheless reached the wrong conclusion), the District Court described the parties’ competing theories:

Both parties discuss a concept of general copyright law known as the “principle of territoriality.” … Defendant takes this principle to mean that “copyright protection in one country does not extend to or affect protection in any other country,” and that “U.S. copyright law [has] no reach outside U.S. borders.” This, Defendant argues, supports dismissal of Plaintiffs’ claims to foreign rights to the Song because … [renewal and termination] are functions of United States copyright law and cannot affect foreign rights that Plaintiffs previously granted away.

… Plaintiffs concede that United States copyright law cannot provide a remedy for an infringement occurring in a different country. However, Plaintiffs explain that this case is not about conduct (i.e., infringement); rather, this case concerns rights (i.e., ownership) in the Song. Plaintiffs argue that questions of ownership are treated differently than questions of infringement, with ownership questions being answered by the law of the country where the work was created (here, the United States)….

Based on their differing interpretations of the principle of territoriality, the parties diverge on a related issue [that] heavily influences the outcome of this dispute. Defendant believes “the U.S. Copyright Act, together with the implementing legislation of each other member country, creates multiple and separate copyright interests in each country, rather than a single overarching international master copyright that each country is required to honor.” Under Defendant’s reasoning, this means that … [renewal and termination] only encompass domestic rights in the Song; in other countries, the copyright interests are “separate” and thus unaffected by the termination and the renewal….

Plaintiffs acknowledge that there is no “international copyright.” Instead, according to Plaintiffs, domestic protections are extended to works of foreign origin by way of obligations from membership in treaties or conventions such as the Berne Convention….

… [Thus,] Plaintiffs argue that there is only a single copyright interest in a given work, granted by the issuing country (here, the United States) and then conventionally “recognized” and protected by other countries pursuant to the Berne Convention. Accordingly, under Plaintiffs’ reasoning, “the plaintiffs’ recapture of that one copyright [through renewal or termination] leaves the defendant with nothing. In that instance, the plaintiffs’ domestic rights yield to them the right to exploit [the Song] everywhere without interference from its former owner.”

[2024 Opinion at Part II.B.ii and II.B.iii]

The District Court sided with Vetter. With regard to renewal rights, it held that “[t]he Plaintiffs’ theory is plausible. Defendant points to no authority, and the Court has found none, that directly supports the theory that the Berne Convention creates separate copyrights in each of the member countries…. [I]t is more plausible that protection in member countries is attendant to the U.S. copyright rather than the conclusion that each member country grants an entirely separate and new copyright by virtue of the Berne Convention.” [2024 Opinion at II.C.]

The District Court found support for its position in Itar-Tass, where the Second Circuit held that although national treatment required that U.S. law govern any infringements occurring in the United States, questions of ownership of a U.S. copyright “are determined by the law of the state with the most significant relationship to the [work] and the parties.” 153 F.3d at 90. It also found support for its position in Stewart v. Abend, in which the Supreme Court summarized the law of renewal, saying: “After Miller Music, if the author dies before the commencement of the renewal period, the assignee holds nothing,” 495 U.S. at 220, and the author’s heirs “obtain the renewal copyright free of any claim founded upon an assignment made by the author,” 495 U.S. at 219. Of course, the Court in Stewart was construing U.S. law only; the District Court conceded that “the Stewart decision says nothing at all about the geographical scope of a renewal copyright interest.” But the District Court nonetheless relied on the negative inference that “Stewart does not hold or suggest that an inherited renewal is limited to domestic rights only.”

Defendant had a problem; no case law had expressly held that renewal of a U.S. copyright was limited to the territory of the United States. The one decision that came closest was Rohauer v. Killiam Shows, Inc., 379 F. Supp. 723 (S.D.N.Y. 1974), rev’d on other grounds, 551 F.2d 484 (2d Cir. 1977). In Rohauer, British author Edith Maud Hull wrote “The Sons of the Sheik,” which was published in the U.S. in 1925. Later that year, she assigned the motion picture rights to Moskowitz. Pursuant to that assignment, a silent movie starring Rudolph Valentino was made and released in 1926. The copyright to the movie was registered in 1926, renewed in 1954, and eventually assigned to Killiam Shows. Meanwhile, Edith Hull died in 1943, before the renewal rights in the novel vested; and in 1952, her son renewed the U.S. copyright in the novel and assigned the motion picture rights to Rohauer. The district court held that Rohauer owned the U.S. renewal copyright in the novel, and that any showings of the motion picture during the second term infringed those rights. In so holding, the court expressly distinguished domestic from foreign rights:

[T]he copyright law which obtained in those countries adhering to the Berne Convention made no provision for copyright renewal. In most such countries, a copyright endured for the lifetime of the author plus fifty years. A grant of rights under a copyright could continue as long as the copyright subsisted but in certain countries, of which Great Britain was one, the rights revert to the author’s heirs twenty-five years after his death. Plaintiffs thus point out that the 1965 assignment from Cecil Hull to Rohauer took place only twenty-two years after Edith Hull’s death. Hence Rohauer was at that moment vested only with rights to the work in the United States; in other countries, the motion picture rights would not have reverted to Cecil Hull for at least three more years.

379 F. Supp. at 734-35 (emphasis added). (The Second Circuit reversed, holding that the copyright in a first-term motion picture is “independent” of the renewal rights in the underlying novel. The Second Circuit’s opinion in Rohauer was later disapproved by the Supreme Court in Stewart v. Abend, but neither of those opinions discussed the geographic scope of the renewal.)

The District Court rejected Rohauer on two grounds: first, it “provides no analysis of the geographical scope of renewal rights themselves,” and second, “Rohauer is factually distinguishable because the author was British, and the United States was not the novel’s country of origin,” so that “”any renewal right afforded to this British work under United States law would properly be viewed as having no effect elsewhere.” [2024 Opinion at II.C.] The District Court quoted Rohauer for the proposition that when the author dies before renewal, “successors to the renewal rights ‘are not bound by any assignment executed by the author …’”; but it was incorrect when it opined that “[t]he Rohauer court did not restrict these principles to domestic rights.” The passage quoted above indicates that such a restriction was implicit in Rohauer.

Ultimately, the District Court held only that “[t]he Plaintiffs’ legal theory … is plausible,” so it denied the motion to dismiss as to renewal, because “the Plaintiffs have demonstrated more than a sheer possibility of entitlement to relief.” [2024 Opinion at II.C.]

With regard to termination, the Defendants were on much firmer legal ground. As noted above, section 304(c)(6)(E) of the Copyright Act expressly says: “Termination of a grant under this subsection 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.” Three previous opinions (Fred Ahlert Music, Siegel, and Clancy) had held that under this language, termination only recaptures rights within the United States, and that it does not recapture rights in other countries. Both Nimmer on Copyright and Patry on Copyright agreed with this view. Nonetheless, the District Court denied the motion to dismiss on this count as well, relying on Plaintiffs’ argument that “Foreign protection for United States works ‘arises’ not from a multiplicity of foreign copyrights around the world, but rather when treaty partners agree to recognize copyrights that ‘arise’ in accordance with the Copyright Act.” [2024 Opinion at II.D.]

The District Court found support for its position in Kirtsaeng v. John Wiley & Sons, Inc., 568 U.S. 519 (2013), in which the Supreme Court held that the phrase “lawfully made under this title” was not limited geographically, so that the first-sale doctrine applied to copies of works lawfully made in other countries (and imported into the U.S.), as well as copies made in the United States. Similarly, the District Court reasoned, the phrase “rights … that arise under this title” should not be limited geographically. Accordingly, “the Court finds that Plaintiffs’ argument that foreign rights to the Song in this case ‘arise under’ the United States Copyright Act, as opposed to the domestic laws of each individual country where the Song may be exploited, is plausible…. It plausibly and logically follows that a termination of a worldwide grant results in the recapture o