I wrote: > So I think it turns out I was right in the first place: continued > verbatim copying and distribution counts as "utilization", and the > only scope for argument is about how much bug-fixing you can do after > termination without being sued for "preparing" a new derivative work.
Sean commented previously that Congress's use of the otherwise undefined word "utilize" in 17 USC 203 is confusing, and I agree. However, the Mills Music case clears things up considerably; and as Congress hasn't seen the need to override Mills by modifying 203 and 304 in any of the various revisions to the Act over the subsequent 20 years, I think we can take it as good law. Although I haven't Shepardized it yet, I've used FindLaw to search for subsequent Supreme Court decisions that reference Mills, and it doesn't appear to have been repudiated by later courts. In fact, see Stewart v. Abend 1990, which references Mills when comparing the 304(c)(6)(A) exception to the author's termination rights against the lack of such an exception in the provisions for the renewal term of a pre-1978 copyright. The opinion states: "For example, if petitioners held a valid copyright in the story throughout the original and renewal terms, and the renewal term in 'Rear Window' were about to expire, petitioners could continue to distribute the motion picture even if respondent terminated the grant of rights, but could not create a new motion picture version of the story." Thus Mills was still good precedent in 1990, and was used in the course of distinguishing between relicensing at the commencement of the renewal term and post-renewal-term termination with respect to pre-1978 works. Note also that the Supreme Court affirmed the decision of the Ninth Circuit in Stewart v. Abend and largely rejected the reasoning in the 1977 Rohauer v. Killiam Shows decision of the Second Circuit (the previous authority, given that certioriari was denied at that time). It is interesting to note that Nimmer's commentary on Rohauer seems to have strongly influenced the justices who joined in the Stewart decision. It is interesting to search forward for circuit rulings that cite Mills Music; see, for instance, Fred Ahlert Music v. Warner/Chappell 1998 ( http://caselaw.lp.findlaw.com/data2/circs/2nd/977705.html ), which certainly seems to indicate that Mills was still good law and that "utilize ... under the terms of the grant" continues to be understood to refer to a continuation of all terms of, and limitations on, the original license with respect to a derivative work already "prepared". Cheers, - Michael
