statutes on whose construction it was based were wrongly interpreted. The 8 Anne, c. 19, and the 54 Geo. III. c. 156, secured to the author and his assignee the sole right of publishing a book for a named period, and declared that any other person who should during that period republish such book without the consent in writing of the owner of the copyright should be liable to certain penalties. In like manner, the 3 & 4 Will. IV. c. 15, gave to the author and his assignee the sole liberty of representing a dramatic composition for the term therein mentioned, and imposed penalties on any other person who should cause such composition to be performed without the written consent of the owner. The provisions of these three acts relating to the vesting of the right and its protection by penalties were the same as far as concerns the question of the necessity of a written assignment.1 All were silent as to the mode of transferring the rights which they secured. The distinction between an assignment and a license is that by the former the ownership of the copyright is vested in the assignee, while by the latter the licensee acquires the privilege of publishing, but no proprietary rights in the copyright. It is conceded that the provision relating to a consent in writing does not expressly govern the mode of assignment. The theory advanced by Lord Ellenborough is that this clause must by implication be construed to apply to a transfer of the copyright, as well as to a license to publish. This reasoning would be entitled to more consideration if the act prohibited every person except the author from publishing without authority in writing. But such is not the language or the intent of the statute. It expressly declares that the author and his assignee shall have the benefit of copyright, and that any person who is not the author or assignee must show a consent in writing to publish. Now, it is clear that when piracy is charged, two defences are open to the alleged wrong-doer. He may show either that he is the author or the assignee, that is As already said, the 8 Anne, c. 19, required the written consent to be attested by two witnesses, while no mention of witnesses was made in the act of George III. But the question whether an assignment must be in writing is not affected by this difference between the two statutes. the owner of the copyright; or that he has a license in writing from the owner to publish. If he can establish the first fact, he need not prove the second. Only those who cannot prove ownership are required by the statute to produce a written license. The clause in question does not, therefore, apply to the owner of the copyright. Hence, we must look elsewhere to ascertain what is necessary to constitute a good title of ownership. The statute recognizes as owners the author and his assignee. No difficulty is presented when the author claims as owner, since authorship creates an undisputed title to ownership. But when the owner is not the author, but derives his title from him, the inquiry is raised as to what formality is required to make the transfer valid in law. The statute secures to the author and his assignee the exclusive right of publishing a book during a specified period. If the author, before parting with his property in a manuscript work, publish it as his own, the right conferred by the statute will vest in him. The copyright thus acquired may at any time afterward be transferred to another, who thereby becomes clothed with all the rights which were conferred upon the author, and the latter becomes divested of those rights. But the statute not only protects the title of the assignee thus derived after publication, but it also grants copyright in the first instance to the assignee as well as to the author. In other words, statutory copyright will vest ab initio either in the author or in his assignee. When, therefore, the author has parted with his property in a work not yet published, the owner of the manuscript may become the first publisher, and thereby secure to himself the copyright conferred by the statute. As the lawful owner of the manuscript, his standing under the statute is the same as if he were the author. Here, then, are two different classes of persons embraced within the meaning of assignee as used by Parliament: 1st, those to whom an assignment of statutory copyright in a pub 1 "The statute does require the defence of license to be so [in writing] proved; and that in case of a plaintiff claiming under a license, and suing for a statutable penalty, the license should be so proved; but it appears to leave the assignee, suing according to the common law, to prove his case under that law." Erle, J., Jefferys v. Boosey, 4 H. L. C. 882. lished work has been made after the securing of such right by the author; 2d, those to whom the author's rights were transferred before publication, and, consequently, before the creation of statutory copyright, and who are entitled to secure for themselves the statutory copyright by virtue of being the owners of the manuscript.1 Now, in cases wherein the title has passed before the creation of the statutory right, the statute cannot rightly be construed to regulate the form of transfer.2 As there can be no statutory copyright in an unpublished work, the right thus transmitted before publication exists only by common law. Hence, the mode of transfer must be governed by the common law, which is the only law applicable; and, if the title held by the assignee is good by the common law under which it was derived, it must, in the absence of express legislation to the contrary, be equally valid under the statute. Therefore, as a parol assignment is valid when made by the common law,3 it follows that such assignment will continue to be sufficient under the statute in cases wherein the transfer has taken place before the vesting of the statutory copyright; that is, before publication. What, then, is the mode of assignment after publication, and after the statutory copyright has once vested in the author? If any formalities or requirements were prescribed by Parliament, they would doubtless have to be observed. But, as already said, the statute is silent on this point. Hence, according to a well-established rule of construction, the mode of transfer can be governed only by the common law; and by the common law, as has been said, a good assignment may be made by word of mouth. Lord Ellenborough's theory, that the mode of assignment is impliedly governed by the clause of the statute requiring a license to be in writing, has been applied indiscriminately to all cases of transfer, whether made before or after publication. 1 See ante, pp. 238–242. 2 Mr. Justice Erle rightly said: "Even if the statute should be held to annul the property after publication, still it leaves the property before publication as it was; and then the right of the plaintiff below stands; for he took The important distinction between an assignment made prior and one subsequent to the vesting of the statutory copyright appears either not to have been observed, or to have been disregarded. I have tried to show that this construction of the statute is erroneous in either case. But, whatever grounds there may be for enlarging the meaning of the license clause so as to embrace an assignment of the copyright in a published work, they wholly disappear in the case of a transfer made before publication. The clause of the statute which imposes penalties on any person publishing a book without the written consent of the owner of the copyright applies only to one who reprints what has already been published. Statutory copyright begins with publication, before which it has no existence, and hence can neither be violated, nor protected by statutory penalties. It exists only for a given term, and it is only during this period that its invasion is guarded against by penalties. The right must exist before it can be violated, and it cannot exist before publication. The statute does not prohibit or impose penalties for the unauthorized publication of a manuscript, but only for the unlicensed republication of a work in which copyright has vested. Such is the plain reading of the 8 Anne, c. 19, and of the 54 Geo. III. c. 156; but this meaning is put beyond doubt by the language of 5 & 6 Vict. c. 45, s. 15, which prohibits any person, without the written consent of the owner, from printing "any book in which there shall be subsisting copyright." The clause imposing penalties in the absence of a written license applies, therefore, solely to published productions. The penalties cannot attach nor the written license be required for an act done before publication, and before the statutory right vests. The provision does not apply to what is done outside of the statute. Now, we have seen that the section which secures copyright to the assignee recognizes assignments made before as well as those made after the vesting of the statutory right. It is, therefore, more extensive in its operation than the clause requiring a written license. Hence, if the reasoning were sound that an assignment made after publication must be in writing, because a license in writing is required to reprint a published work, the analogy fails when the transfer has been perfected before publication; since, before publication, the license clause of the statute has no force. The cases which have been reviewed present a marked instance of the force of the custom, too common in English and American courts, of following precedent without examining the sufficiency of the grounds on which such precedent is based, and without seeking to ascertain the true principles by which alone the law can be rightly determined. When the question as to the validity of a parol assignment of copyright came before Lord Ellenborough in Power v. Walker, there was neither judicial authority nor express statutory directions on the subject. The point appears not to have been thoroughly considered in that case, and the supposed meaning of the statute was reached by applying to one of its clauses reasoning as fallacious as it was novel. The judgment in Davidson v. Bohn, the next case in which the issue was directly tested in a court of law, was based solely on the precedent of Power v. Walker; and in every subsequent case, in which the construction under consideration has been affirmed or recognized, it has been affirmed or recognized simply on the authority of those Of course, to adopt Lord Ellenborough's conclusion is to accept his reasoning. But his reasoning as well as his conclusion, when accepted, has been accepted on his authority, and without inquiry as to its soundness.2 two cases. Judicial Opinions Against the Soundness of the Prevailing Doctrine. While the doctrine founded on the authority of Lord Ellenborough, that copyright could not be transferred by parol under the statutes preceding that of Victoria, has not been overruled in any case yet reported, its soundness has been disputed or questioned by many British judges. In expressing his opinion in the House of Lords, in Jefferys v. Boosey, Mr. Justice Coleridge said of Power v. Walker and Davidson v. Bohn: "It is remarkable that both these are cases merely of refusing a rule for a new trial, the latter mainly proceeding on the authority of the The question had not been determined by a court of law. See ante, p. 302, note 1, as to the course of the chancery courts. 2 In view of the potent influence of precedents in the English courts, I am convinced that, if Lord Ellenborough had held a parol assignment to be sufficient, this construction would have been followed and confirmed in subsequent cases. |