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sion of the phrase "or any interest therein" would not have settled the issue conclusively. Weil felt that when the patent statute was amended in 1897, it expressly permitted the assignment of a patent or any interest therein.55 But the provision he cites, including the words "or any interest therein" was in the statute at the time of Waterman v. Mackenzie 55b and did not impress the court. It is conceivable, however, that the interpretation of the phrase in copyright decisions might have been different in view of the great difference in the type of rights specified in the 1909 law.

B. 1909-40: LEGISLATIVE BATTLE FOR DIVISIBILITY

The history of the effort to revise the 1909 law to include divisibility is so involved and voluminous as to make it wise merely to outline it here and place the details and footnotes in the appendix hereto.

Early bills to revise the 1909 statute in order to permit adherence to the Berne Conventions proposed only those amendments believed absolutely necessary to achieve this purpose. Exclusive of these bills, almost all the revision bills included divisibility sections.

In 1924, the motion picture attorneys drafted a bill designed to give the author "a solid right to transfer." In 1925, the motion picture producers and periodical publishers opposed a bill drafted by the Register of Copyrights and sponsored by the Authors' League, indicating their preference for the earlier bill. In the next Congress, there was agreement on the necessity of making copyright divisible, but the motion picture producers and periodical publishers preferred the Vestal bill and opposed the Perkins bill.

The Vestal bill made all the rights comprised in a copyright "several, distinct and severable," and treated the licensee as the owner "for all purposes, including the right to sue." In 1927, a special bill was introduced which attempted to achieve divisibility by amending three sections of the existing law. Hearings were held; again, almost everyone liked divisibility, but disagreed on the details. The bill was reported out favorably, but no further action was taken.

At later hearings, the Authors' League called the divisibility_bill, "the most important piece of copyright legislation that has ever been reported out of a committee since the Copyright Act of 1891." Additional provisions for interpleader having been added, the bill also received the support of the motion picture and book publishing interests. The periodical publishers suggested that they were perfectly happy under the existing law; they approved in principle, but asked that they be given absolute priority over publication in other media. The bill was opposed by the Shubert dramatic interests for fear that it would help the dramatist sell competing motion picture rights while a play was still running.

The House committee, in reporting the bill favorably, noted that it represented the best current business practice, and amended it to make it obligatory on the court to give notice to interested parties. The bill was placed on the consent calendar, was passed over on objection on two occasions, and died.

85 WEIL, AMERICAN COPYRIGHT LAW 546 (1917).

Decided 1891; instrument dated 1884. That portion of section 4898 cited by Well appears in the Act of July 8, 1870, ch. 230, § 36, 16 STAT. 203.

Separate divisibility bills continued to be introduced, but support shifted to general revision bills which included provisions for divisibility. Periodical publishers were induced to support a new Vestal bill in 1930, but the Shubert interests were still opposed, holding that divisibility would "kill the spoken drama." Committee reports at this time included "divisible copyright" as one of the prime objectives and one of the most important results to be achieved in revision. One committee considered divisibility "absolutely essential to the effective marketing of an author's work." The House of Representatives passed a bill including divisibility sections on January 5, 1931, but after the Senate committee had reported the bill favorably with some amendments, the debate in the Senate was stopped by a filibuster on another matter and the bill was not brought to a vote.

After the death of Representative Vestal, Representative Sirovich, the new chairman of the House Committee on Patents introduced a series of revision bills. Some adopted the recommendation that periodicals be given an exclusive right to complete publication before any other public presentation. Later, the periodical publishers appeared to believe that they could accomplish this purpose by contract. At hearings held in 1932, the only group recorded in opposition to divisibility were the music publishers. To counsel for Songwriters Protective Association, this opposition was "mainly psychological,' the music publishers habitually taking an assignment, keeping "the entire copyright and never turning anything back to the author." A bill was reported out but never voted on. In March 1932, Senator Dill introduced a general revision bill which enabled the author to assign or license any right, provided that a license or assignment to make a motion picture was to include all motion picture rights of reproduction and exhibition. No action was taken on the bill.

The Duffy bill, introduced in 1935, contained divisibility features referred to by a Senate committee as "the outstanding contribution of the present bill to the welfare of the authors." A revised version of the bill was passed by the Senate, but, after long hearings in the House, no agreement was reached on the more controversial features of the bill, and no action resulted.

In 1940, the "Shotwell committee bill," the result of 2 years of conferences by the Shotwell committee, was introduced. The conferences indicated that the authors, publishers, motion picture producers and distributors all favored divisibility; the motion picture groups requested a more elaborate system of grants and recordation of rights in the Copyright Office. The Music Publishers Protective Association, Inc., strenuously opposed the divisibility concept becauseit will tend to foster organizations created for the purpose of depriving music publishers of the most valuable incidents of musical copyrights.

The Shotwell bill contained elaborate divisibility provisions, including the right of a grantee or exclusive licensee of any right to sue without joining the grantor. The motion picture and radio groups urged additional safeguards in order to prevent multiplicity of suits. These were to include limiting the right to sue to exclusive licensees, giving notice to other interested parties and permitting intervention. No hearings were held on the bill and the Senate took no action.

III. THEORY OF INDIVISIBILITY

A. DEFINITIONS

The rule of indivisibility is a development of case law. The emphasis on the periodical situation is important because this was the setting in which the problem was presented to the Congress. But the rule has had very important effects in other fields, and we turn now to the theories and to the application of the rule.

Henn has summarized the theory of indivisible copyright asWith respect to a particular work embodied in concrete form, or separable part of such work, there is, at any one time, in any particular jurisdiction, only a single incorporeal legal title or property known as the copyright, which encompasses all the authorial rights recognized by the law of the particular jurisdiction with respect thereto.56

Schulman has referred to the rule as requiring "a unity of ownership of legal title to the entire bundle (of rights)." 57 Warner has emphasized the present problem when he finds that indivisibilityprecludes a licensee or transferee from instituting an action for infringement unless he has joined the copyright proprietor as a party to the suit.58

B. FACETS OF INDIVISIBILITY

One might think of a copyright being indivisible in that it could not be assigned (1) for less than its complete term, (2) for a territory less than the jurisdiction conferring the right, and (3) with respect to part rather than all the component rights of the copyright.

1. Duration

The courts have not regarded duration as an element of indivisibility.59 They have permitted assignments of the entire copyright for limited periods, apparently believing that the danger of multiplicity of suits in this situation is minimal.

2. Territorial

Although the territorial question played a leading role in Jeffreys v. Boosey, the American cases have generally accepted territorial limitations. Waterman v. MacKenzie, so frequently cited for the original doctrine of patent indivisibility actually approved a territorial division of those rights. The Supreme Court, in indicating which conveyances would be approved, mentioned the grant of a patent within a "specified part of the United States." 60

Early American cases dealing with dramatic productions regarded the grant of production rights in a territory limited to certain portions of the United States as assignments rather than licenses. In the

Henn, Magazine Rights-A Division of Indivisible Copyright, 40 CORNELL L. Q. 411, 417 (1955) (hereinafter cited as Henn).

Schulman, Authors' Rights, in SEVEN COPYRIGHT PROBLEMS ANALYZED 19, 22 (1952). 58 WARNER, RADIO AND TELEVISION RIGHTS 130 (1953); Cf. SPRING, RISKS & RIGHTS 167 (2d ed. 1956).

Roberts v. Myers, 20 Fed. Cas. 898 (C.C. Mass. 1860) (1 year); Aronson v. Baker, 43 N.J. Eq. 365, 12 A. 177 (1888) (for a stated period); Aronson v. Fleckstein, 28 Fed. 75 (C.C. III. 1886 (2 years)); But see, DRONE, LAW OF PROPERTY IN INTELLECTUAL PRODUCTIONS 337 (1879) for the view that copyright is indivisible as to time.

60138 U.S. at 232, 255 (1891); But see, Risdale, Validity of Doctrine That a Full Exclusive License is in Fact an Assignment, 34 J. Pat. Off. Soc. 643 (1954).

Roberts v. Myers, 20 Fed. Cas. 898 (C.C. Mass. 1860) (right of representation on stage for the United States but excluding Boston, New York, Philadelphia, Baltimore and Cincinnati). See DRONE, LAW OF PROPERTY IN INTELLECTUAL PRODUCTIONS, 622–623 (1879):"playright" may be assigned independently and for any part of the country.

case of the production of a play, it would be perfectly normal to grant exclusive permission to perform in one of the big cities, or for a limited portion of the United States. The same considerations would not be operative in a grant of publishing rights; there is logic in not permitting successive grants within the same jurisdiction. However, what might be perfectly appropriate for the spoken drama might be wholly inappropriate in grants of motion picture, radio, or TV rights, and here, the differing industry practices would have to be taken into

account.

3. Partial rights

The real problem in indivisibility has been the determination of which rights could be split off from the bundle of rights and the ability of the grantor to convey title to one or more but not all the rights in the copyright. At the time of the Boosey case, there was really only one basic right; today, the subsidiary rights may be much more valuable than what were formerly regarded as the basic rights. Motion picture rights in a book may be worth much more than the publishing rights; performing rights are much more valuable than the right to print sheet music.62

The language of some cases would seem to require a transfer of all rights; any splintering, no matter how small, would make the transfer a license.63 Modern business conditions make it economically unprofitable, in the usual case, for the author or owner to transfer all his rights to one grantee at one time. The rights may be useful in many different fields; a single owner will not ordinarily operate in all these fields. On the other hand, it is difficult to see how it is feasible to go to the other extreme and regard any exclusive lisencee, no matter how limited the license, as having rights as broad as the original proprietor.

C. ASSIGNMENT OR LICENSE

1. Distinguishing assignments and licenses

Indivisibility is a rule or theory relied upon by the court; it is usually applied when a court determines that a grant is not an assignment but a license. If the grant is an assignment, the assignee has full rights; if it is a license, then the doctrine of indivisibility may be used to bar the licensee from doing some of the things an assignee could do.

There have been endless attempts to define the distinction between an assignment and a license. According to Weil, who used the patent analogy

any assignment of a copyright which does not convey the entire and unqualified monopoly of the copyright proprietor, or an individual share thereunder, is to be deemed a license rather than an assignment.65

62 Royalty income from performing rights in 1956 ran somewhere between 70-80%, as compared to 20-30% for sheet music. See M.P.P.A. statement in support of H.R. 5478, 85th Cong., 1st Sess. (1957).

63 Photo-Drama Motion Picture Co. v. Social Uplift Film Corp. 213 Fed. 374, 377 (S.D.N.Y. 1914), aff'd, 220 Fed. 448 (2d Cir. 1915) ("The test is whether anything remained in him."); Douglas v. Cunningham, 33 U.S.P.Q. 470 (D. Mass. 1933) modified in 72 F. 2d 536 (1st Cir. 1934); Cf. Witmark & Sons v. Pastime Amusement Co., 298 Fed. 470 (1924), aff'd, 2 F. 2d 1020 (4th Cir. 1924).

BALL, LAW OF COPYRIGHT AND LITERARY PROPERTY 530 (1944); DE WOLF, AN OUTLINE OF COPYRIGHT LAW 76 (1925); DRONE, LAW OF PROPERTY IN INTELLECTUAL PRODUCTIONS 305 (1879); HOWELL, THE COPYRIGHT LAW 171 (3d ed. 1952); LADAS, INTERNATIONAL PROTECTION OF LITERARY AND ARTISTIC PROPERTY 797 (1938); 18 C.J.S. 206 (1939). 65 WEIL, AMERICAN COPYRIGHT LAW 546 (1917).

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merely a leave to do a thing and a contract by the assignor not to permit anyone else to do it *** the licensee could not sue.66

67

Assignments carry the right to transfer the copyright and to sue. Licenses are usually personal, contractual, rights and are strictly construed. An exclusive license is ordinarily held to be personal and where there is an indication of reliance upon the person or character of the licensee, it is not transferrable.68 But where there is no such reliance, it may be transferred, and the courts are also more apt to

call it a partial assignment.

69

2. "Partial reservation of rights" test

It has been said that, "the copyright statute provides only for the assignment of the right as a whole," and that, in relation to the right

to sue

copyright is an indivisible thing, and cannot be split up and partially assigned either as to time, place, or particular rights or privileges, less than the sum of all the rights comprehended in the copyright.70

Thus, if the proprietor reserves any rights in making a transfer, the giant is not an assignment, which must include all rights, but a license. This test does have the virtue of simplicity and it also expresses some of the purpose behind the rule of indivisibility. Under this test, the original proprietor retains some control over the copyright even though he may have transferred his most important rights. The test is deceptively simple; the original proprietor ought not be able to prejudice his own grantee of substantial rights by retaining a small portion of the rights. The test as applied makes no distinctions on the basis of the importance of the rights transferred or reserved; it has been applied mechanically without regard to the real interest of the parties or to the industrial realities."

3. "Assignment of rights included in any subdivision of section 1" test Some courts and writers sought a middle ground, feeling that the copyright should be divisible if the grant included all the rights covered by one of the subsections of section 1 of the law.72 They may have thought in terms of different groups using the rights in each subsection, or have been seeking some objective grouping of rights to avoid treating the grant of any right as an assignment. Whatever logic this test might have had in the earlier history of copyright, the fact that rights in section 1(a) affect the newspaper, periodical, book and other trades, and that section 1(d) covers not only the spoken

73

Ibid.: "unless coupled with a grant, it conferred * no interest or property in the subject matter

7 Id. at 549, 554.

• Id. at 550.

Partial assignments or licenses may be made assignable by express grant. It is easier to find assignability where there is no element of personal trust. D.H. McBride & Co., 132 Fed. 285, 288 (S.D.N.Y. 1904).

7 Goldwyn Pictures Corp. v. Howells Sales Co., 282 Fed. 9, 11 (2d Cir. 1922), cert. denied, 62 U.S. 755 (1923); M. Witmark & Sons v. Pastime Amusement Co., 298 Fed. 470, 474 (E.D.S.C. 1924), aff'd 2 F. 2d 1020 (4th Cir. 1924); Eliot v. Geare-Marston, Inc., 30 F. Supp. 301, 306 (E.D. Pa. 1939); Photo-Drama Motion Picture Co. v. Social Uplift Film Corp., 213 Fed. 374, 377 (S.D.N.Y. 1914), aff'd, 220 Fed. 448 (2d Cir. 1915). "Henn, supra note 56 at 432: "The application of this test frequently involves the mechanistic tracing of the progress of a metaphysical concept through a chain of transfers."

Fitch v. Young, 230 Fed. 743 (S.D.N.Y. 1916); Public Ledger v. New York Times, 275 Fed. 562 (8.D.N.Y. 1921), aff'd 279 Fed. 747 (2d Cir. 1922), cert. denied, 258 U.S. 627 (1922); Houghton Miffiin Co. v. Stackpole Sons, Inc., 104 F. 2d 306 (2d Cir. 1939), cert. denied, 308 U.S. 597 (1939); Neu, The Rights of a Copyright Owner, 17 NOTRE DAME LAW, 373, 391 (1942).

"Bergstrom, The Businessman Deals with Copyright, in THIRD COPYRIGHT LAW SYMPOSIUM 248, 270 (1941). Cf. WARNER, RADIO AND TELEVISION RIGHTS 127 (1953).

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