at the beginning of the 29th year the author's "moral rights" are restored to him to deal with as he wishes. An even closer analogy to renewal is found in the "droit de suite" system in effect in France B148 and several other countries. B149 Here, in general, the author of an original work of art or similar creation is entitled to participate in the proceeds of every public resale of the original, if there has been any substantial increase in price. This seems a perfect example of the "second chance" theory in operation, and a recent commentator has pointed out the similarity to renewals. B150 C. BRITISH COMMONWEALTH DEVELOPMENTS Some interesting and significant legislative developments have taken place in three British Commonwealth countries in recent years, and these appear to have direct bearing on the American renewal system. 1. British Copyright Act, 1911 As noted above, B151 the British Act of 1911 (which is still widely in effect in countries now or formerly part of the British Commonwealth) contained three provisions roughly analogous to renewals in the United States: a. For the last 25 years of a copyright (beginning 25 years after the author's death) his works could be published under an automatic compulsory license, upon payment of a 10% royalty. b. During the same 25-year period the copyright reverted to the author's estate. c. If republication or performance were refused at any time after the author's death, upon complaint the Privy Council could grant a compulsory license. 2. The Brussels Convention, 1948 B152 In the preparatory discussions preceding the Brussels Convention of 1948, there was a view that at least the first of these provisions was in conflict with the Berne Union term, and that it stood in the way of adoption of a uniform minimum term of life-plus-fifty." Apparently the British representatives, both before and during the Brussels Conference, indicated definitely that this provision would be dropped from their law; on the strength of these declarations the Conference made life-plus-fifty a compulsory minimum and dropped a proposed exception that would have expressly permitted retention of the 25-year compulsory license.B B153 3. The Gregory Report, 1952 The 1952 Report of the Gregory Committee, which recommended sweeping revisions of the United Kingdom copyright law, considered the two compulsory licensing provisions, and concluded that their effectiveness at making works widely and cheaply available was slight." The Committee reported its conclusion as follows: B155 "In the light of these considerations we have come to the conclusion that neither the proviso to Section 3 nor Section 4 of the Copyright Act, 1911, is decisive to secure the publication of books in cheap editions which would not otherwise be available to the public at, or at about, the same prices. * In our view, the advantages of continued adherence to the [Berne] Union and to the latest Convention are overwhelming, and greatly outweigh any possible disadvantages which might flow from the repeal of the provisions of the existing law to which we have referred. We recommend in this regard that the law B149 Law of Mar. 11, 1957, art. 42. B140 Belgium: Law of June 25, 1921; Czechoslovakia: Law of Dec. 22, 1953, § 98; Italy Act of Apr. 22, 1941, as amended up to Aug. 23, 1946, arts. 144-55; Turkey: Law of Dec. 10, 1951, art. 45; Uruguay: Law of Dec. 15 and 17, 1937, as amended up to Feb. 25, 1938, § 9. The new German draft law also incorporates a "droit de suite" provision. B150 Hauser, The French Droit de Suite, 6 BULL. CR. SOC. 94, 112-13 (1959). B152 BRUSSELS CONFERENCE: PROPOSED REVISIONS WITH COMMENTARY THEREON 48-49 (Berne Bureau Prelim. Docs., Pt. 1, 2d ed. rev., Jan. 1947). B153 RAPPORT GENERAL SUR LES TRAVAUX DE LA CONFÉRENCE DIPLOMATIQUE POUR LA REVISION DE LA CONVENTION DE BERNE 14 (1948); Les Proposi tions, Contre-Propositions et Observations présentées par différentes Administrations, pour être soumises à la Conférence de Bruxelles, 49 LE DROIT D'AUTEUR 65 (1936). B154 BOARD OF TRADE, REPORT OF THE COPYRIGHT COMMITTEE (1952). B155 Id. at 8-9. be brought into line with the Brussels Convention. The omission of the proviso to Section 3 of the Act would appear to involve the omission also of the proviso to Section 5(2), which would seem to have been inserted so as to give the royalty under Section 3 to the personal representatives of the author." " B156 B157 À propos of the last sentence of this quotation, it is interesting that little or no consideration was given to the proviso allowing copyrights to revert to the author's estate during their last 25 years; the Committee appeared to assume that if the 25-year compulsory license were dropped, the 25-year reversion necessarily went with it. In his 1948 edition of Copinger on the Law of Copyright," Skone James argued that the intended benefits of the reversionary provision were "quite illusory" for two reasons: (1) since the copyright reverts to the author's estate it is likely to be sold for debts, and (2) since the rights during the last 25 years are necessarily non-exclusive because of the compulsory license, they are not calculated to bring very much in any case. 4. Parliamentary debates and the U.K. Copyright Act, 1956 The British revision bill was debated in the House of Lords late in 1955, and at the outset of his presentation the Lord Chancellor emphasized that the Brussels Convention "demands the granting of an unqualified period of protection for the life of the author and fifty years thereafter," that the two compulsory licensing provisions are in conflict with this requirement, and that they therefore "have to go." This declaration was echoed by the President of the Board of Trade at the start of the debates in Commons in June, 1956.B150 It soon became apparent, however, that there was considerable real opposition in Commons to dropping the 25-year compulsory license, on the ground that unless it were retained books would become more expensive and less freely available." The " B158 B161 B160 issue was debated at length.' The proponents of the bill declined to argue the merits of the question and, in fact, appeared to agree that the compulsory publishing license probably had some value. B169 They based their position solely on the ground that, if these compulsory licensing provisions were retained, “it would be impossible to adhere to the new form of the Berne Convention." They made this point so forcefully that their view finally prevailed, but the following remarks epitomize the prevailing attitude: B163 "Generally speaking, I think that those two qualifications have to be given up. We are sorry about the first one in particular, for reasons given very clearly by hon. Members on both sides. It has been of advantage to the public that after 25 years a work that was wanted by the public could be obtained in a cheap edition. This we are now to lose, and it is a very great pity. None the less the advantages we get are such that I think we must accept the limitations with good grace." "B104 As finally enacted the Copyright Act of 1956 omitted all three of the provisions which were analogous to the American renewal. The reason was not their lack of merit, but the assumption that for the United Kingdom to adhere to Brussels they would have to be sacrificed. Whether or not this assumption was well-founded seems debatable, since a compulsory publishing license during the last 25 years would not appear to cut down the basic duration of a copyright any more than a compulsory recording license during the whole term. It is also curious that the reversion to the author's estate, which could not be considered in conflict with Brussels, was also dropped without any real consideration. 5. The Canadian Copyright Report, 1957 The 1957 Ilsley Report on Sopyright of the Canadian Royal Commission B165 broke sharply with the British views on copyright term as shown in the Gregory Report and the 1956 Act. The Canadian Report recommended a basic term of 56 years from first publication or public dissemination, or the life of the author, B156 Id. at 9. B157 COPINGER & SKONE JAMES, THE LAW OF COPYRIGHT 113-14 (8th ed. 1948). B158 194 H.L. DEB. 502 (1955). B189 553 H.C. DEB. 718 (1956). B160 553 H.C. DEB. 739-42 (1956). B161 553 H.C. DEB. 767, 776, 785, 792-93, 801-03 (1956); H.C. DEB., Standing Committee B on Copyright Bill 3-14 (1st Sitting 1956); see Copyright, the Full 50 Years, 1956 THE BOOKSELLER 1538. B102 553 H.C. DEB. 785, 793 (1956); H.C. DEB., Standing Committee B on Copyright Bill 6-9 (1st Sitting 1956). B163 553 H.C. DEB. 740 (1956). B104 553 H.C. DEB. 785 (1956). B165 ROYAL COMMISSION ON PATENTS, COPYRIGHT, TRADE MARKS AND INDUSTRIAL DESIGNS, REPORT ON COPYRIGHT (1957). whichever is longer; in particular, it urged retention of the 25-year compulsory licensing provision whether the proposed term based on publication were accepted or not. Bio The Commission apparently assumed, as had the British legislators before it, that the Brussels Convention would require repeal of the two com pulsory licensing provisions related to term, and on this ground, among others, it recommended against adherence to the Brussels Convention. Bier The provision allowing a reversion to the author's estate was not mentioned in the report. 6. The New Zealand Copyright Report, 1959 fol The 1959 Dalglish Report of the New Zealand Copyright Committee lowed the lead of its Canadian counterpart in departing from the British Act of 1956. It adopted the Canadian proposal for a basic term of publication-plus56 years, or the life of the author, whichever is longer (with a special provision covering works that are publicly performed, broadcast, or sold on records before being published)." In stating its conclusion the Committee said: B169 "We consider that there is a very good argument in favour of making the term of copyright run from the time of publication, in that all works would then have the same period during which to earn the author his reward, and in our recommendations we have endeavoured to achieve this result as far as possible. We also think that a good deal can be said for the United States' approach to the question. There the term is 28 years with the right for the author or his successors (but not his assigns) to renew for a further period of 28 years. But Article 7 bis (3) of the Rome Revision specifically requires that in the case of works of joint authors copyright protection must not expire before the death of the author who dies last, and New Zealand is bound by that Revision. It would be inequitable for copyright in the works of a single author to expire before copyright in earlier works where he is a joint author and we therefore consider that New Zealand must provide that copyright shall not expire in respect of any published works before the death of the author. ***"** On the other hand, the New Zealand Committee did not agree with the Canadian Report's view that the compulsory license provisions should be retained; the New Zealand report states: "The Department of Justice drew our attention to criticism in England of the omission from the 1956 United Kingdom Act of the provisions corresponding to the proviso of section 6 and the whole of section 7. We agree, however, with the view of the Gregory Committee that there would be nothing gained from the point of view of encouraging publication of literary works by the retention of either of these provisions. As to the question of permission to perform dramatic works and musical works which is dealt with in section 7, we think that the provisions which we later recommend in connection with the copyright Tribunal should be adequate to deal with any problems which might arise in connection with the refusal to make musical or dramatic works available for public performance except on payment of exorbitant fees. We therefore do not consider that these two provisions should be retained, and we recommend that they be omitted from any new legislation." Biri Unlike the two earlier reports, the New Zealand Report deals with the reversion to the author's estate at some length. The Committee felt that repeal of this provision (which now appears in § 8(2) of the New Zealand Copyright Act of 1913) would be a “retrograde step" from the "point of view of the reward to authors." B172 “* * * This appears to have been inserted in the 1911 United Kingdom Act to ensure that an author's family received a substantial portion of the benefit of a work which achieved general public recognition some years after the death of the author. It appears to us that the repeal of that proviso would not do any good for the author's family but rather the opposite and that it would be the pub B166 Id. at 19-23. B107 Id. at 14, 15-16, 23. B168 REPORT OF THE [NEW ZEALAND] COPYRIGHT COMMITTEE (1959). B160 Id. at 15-16, 19-35, 144-45. Unlike the Canadian Commission, the New Zealand Copyright Committee did not feel that the U.C.C. definition of publication would permit establishment of a term of years based on public performance, broadcasting, or sale of records. It therefore recommended that "if before a work is published it has been publicly performed or broadcast or records of the work have been offered for sale, copyright shall continue until the expiration of 56 years from the first of those acts or until the expiration of 25 years from the date of publication, or until the death of the author, whichever period is longest." Id. at 28. B170 Id. at 25. B171 Id. at 34-35. B172 Id. at 24-25. lishers or other assignees of the copyright who would receive the benefit. It is to be noted that the United States provision that the second term of 28 years of copyright protection can be obtained only by the author or his successors, and not by his assigns, appears to be directed to achieving a similar result to that sought to be achieved in the proviso * * *” The Committee concluded that dropping of the reversion was not a necessary corollary to repeal of the compulsory licensing provisions, and stated its recommendation as follows: ***** We have carefully considered whether it is desirable, along the lines of the proviso to section 8(2), to prohibit any assignment of copyright for the whole of the term of copyright, and we have had regard to the fact that in the United States only the author or his successor may renew copyright for the second term of 28 years. We consider that the retention of the proviso to section 8(2) may well be of value to the successors of a deceased author, particularly in cases where after the author's death his works become popular. We have no evidence of this but we feel that the proviso can do no harm and may possibly do good. Retention of the reference to a period of 25 years from the death of the author will not conflict with the Rome Revision or the Universal Copyright Convention. We think therefore that a similar provision to that contained in the proviso to section 8(2) should be enacted in any new legislation and we recommend accordingly." B178 D. RENEWAL PROVISIONS IN PATENT, DESIGN, and traDEMARK LAWS 1. In general B174 It is an interesting thing that, in the industrial property laws of the world," division of protection into terms and renewal registration devices are the rule rather than the exception. The principal purposes of these renewal provisions appear to be: a. To bring in revenue and make the government registry office self-sustaining; b. To reduce the term of patents, designs, and trademarks that have not continued to be commercially valuable, and to make them available to the public for use as soon as possible; and c. To encourage continued exploitation, and "to make the record as nearly as possible one of actual rights." "B175 The second and third of these purposes, if not the first, have considerable relevance to the copyright situation. 2. Patent laws Today most patents throughout the world are granted for a single definite term (usually between fifteen and twenty years), although there are still some countries in which the term is discretionary with the government, or in which the applicant is offered two or more terms from which to choose. There are also a substantial number of countries in which the term can be extended upon the filing of an application within certain time limits; sometimes the extension is granted automatically, but usually the patentee must show special circumstances justifying a longer term.B176 In the patent field the most important form of renewal device is the so-called "renewal fee" or "tax." A recent study by P. J. Federico BIT indicates that the patent laws of at least sixty countries provide for renewal fees, and that the United States and Canada are the only major countries which do not employ the device. The following summary is based primarily on Mr. Federico's analysis: a. Typically, renewal fees are annual fees which are charged after a patent is issued, and which must be paid in order to keep the patent from lapsing. In Great Britain and several other countries the renewal fees are payable after four years and annually thereafter; some countries provide longer intervals for payments. B173 Id. at 35. B174 The summary and analysis in this section are based to a large extent upon the outlines of the industrial property laws of the world contained in CARLBERG, GUIDE TO PATENTS, TRADEMARKS AND DESIGNS (2d ed. 1958). B175 Ewing v. Standard Oil Co., 42 App. D.C. 321, 324 (1914). B176 In Great Britain and other countries, for example, the patentee may be granted an extension of five (or, in exceptional cases, ten) years, if he shows that he has been inadequately remunerated, or if he has suffered war loss or damage. B177 Federico, Renewal Fees and Other Patent Fees in Foreign Countries (Study No. 17 of Subcomm. on Patents, Trademarks and Copyrights of Senate Comm. on the Judiciary, Comm. Print 1958). b. Renewal fees are generally graduated, increasing as the patent grows older. Some countries permit payment in advance, and allow discounts if this option is chosen. c. If the renewal fee is not paid the patent lapses, but most countries provide periods of grace (usually with a fine or higher fee). Some also permit reinstate ment after lapse, but normally this is possible only for a limited period, and requires proof that failure to pay was unintentional or unavoidable; the intervening rights of third parties are also protected in this situation. d. The Federico study indicates that the renewal fee device is remarkably effective in terminating patents as soon as they lose their commercial value; as a rule, it would appear that considerably less than 10% of foreign patents continue to be renewed throughout the full term available to them. Before 1861 the American patent law contained a provision permitting the original patentee to renew the 14 year patent for another seven years under certain conditions, including payment of a rather high fee.B178 Apparently this provision was considered burdensome,B179 and in the Act of March 2, 1861,518 the present straight term of 17 years was substituted. 3. Design laws B181 Of the countries that have laws specifically protecting industrial and commercial designs, the majority divide the duration of protection into two or more terms. Some, like the United States,' give the applicant a choice among terms of different lengths (with fees varied according to the length chosen). Most, however, provide for one or more extensions of term by means of renewal registration. B182 4. Trademark laws Practically all the trademark laws of the world provide for renewal registration at definite intervals, as a condition for keeping the trademark registration in effect. Since the basis of trademark protection is user, the renewal device is needed to show that after a certain period the trademark is still in use and has not been abandoned. As stated in one American case, the renewal "is a correction of the record to the date of renewal by the registrant or owner of the mark asserting his continued use of it, and therefore title in it." A typical trademark law provides an initial period of protection (usually between seven and twenty years), which is renewable indefinitely for the same period. B184 Most statutes require that renewal registration be made before expiration of the preceding term, and many of these specify definite renewal time limits, including a period of grace after expiration. Once a trademark registration has expired without renewal, the applicant is not precluded from seeking an entirely new registration; but instead of merely extending protection, in this situation he must establish his rights anew. APPENDIX C A STATISTICAL SURVEY OF RENEWAL REGISTRATIONS The statistical material on the pages that follow was prepared to provide some information about how renewal registration operates in practice. The following comments are intended to summarize and supplement this material. 1. Table 1 shows that, as far as renewals are concerned, music is by far the most important class of copyrightable works. Nearly half of all renewal registrations cover musical compositions, and more than 1% of the musical compositions registered in 1931-1932 were renewed. In contrast, only 7% of books and 11% of periodicals are being renewed. B178 Id. at 33: see Siemens' Administrator v. Sellers, 123 U.S. 276 (1887); Wilson v. Rousseau, 45 U.S. (4 How.) 646 (1846). B1TD 69 C.J.S. § 167 (1951). B180 Ch. 88, 12 Stat. 246. B181 35 U.S.C. § 173 (1952). The applicant for an American design patent is required to choose a term of 3%, 7, or 14 years, the fees for which are $10, $15, and $30, respectively; he may change his choice of term while his application is pending, but once the patent issues the term may not be extended. B182 In Great Britain and a number of other countries the initial term is five years, with two renewal terms of five years each. B183 Ewing v. Standard Oil Co., 42 App. D.C. 321, 324 (1914). B184 In some countries the duration of the renewal is different from that of the initial term. In Great Britain, for example, a trademark registration lasts for 7 years, but may be renewed indefinitely for periods of 14 years each. |