hold such copyrights for the authors to the extent that they have retained rights in the contributions." 118

It is sometimes said that the trade practice is that the publisher secures copyright and holds it in trust for the author. A trade practice would ordinarily refer to the customary method of doing business. There are limits to what the courts will regard as custom or trade practice,119 and here the trade practice appears to cover not only a method of doing business but also certain conclusions of law. The author has no intention of transferring the entire literary property except as a means to an end; neither the author nor publisher intend to sell or purchase the book, motion picture, or any rights except certain periodical rights. The actual intent is at complete odds with the presumed intent. It is also apparent that there is no agreement on what the trade practice covers with respect to the second half of the transaction, the return of rights to the author. Some courts may question the custom itself or make a distinction as to different types of material; in one recent case in which an article was accepted for "exclusive publication" in a technical journal, and nothing further was said about rights, the court said it would presume that the author transferred the article without reservations, that the author was not the equitable owner, and that the publisher had become the absolute proprietor of the copyright.120

The purpose of the initial fiction is desirable. Both author and publisher wish to secure copyright protection and the courts will, as in cases dealing with publication,121 do everything possible to prevent the work falling into the public domain. Once protection is achieved, however, the aims of author and publisher are no longer necessarily similar. The publisher has no real incentive to retransfer except his good faith. The courts will require him to do so, but the suit is frequently between the author and infringer, and the publisher, holder of the legal title, may be unavailable or unwilling to join. In such cases, the courts might consider whether the infringer ought be permitted to raise this question,122 but it would be simpler to abandon the rule of indivisibility.

2. Reservations by author

If the author is aware of copyright and specifically tries to reserve book, dramatic, motion picture, or other rights, or any of them when he transfers his story to the periodical, he may defeat his own purpose and lose all his rights. In these cases, the publisher is only a licensee

113 The Copyrighting of Contributions to Composite Works, 31 NOTRE DAME LAW. 381, 401 (1956); Cf. Henn, supra note 56, at 438

119 See Murphy v. Warner Bros. Pictures, Inc., 112 F. 2d 746 (9th Cir. 1940); Avedon v. Exstein, 141 F. Supp. 278 (S.D.N.Y. 1956); Note, Contracts-Construction-Evidence of Trade Usage Inadmissible to Vary "Rule of Law" Vesting Ownership of Photograph in the Photographer's Customer, 70 HARV. L. REV. 553 (1957). Even where there is a contract, the courts will look not only at the words used but to the object of the contract, and the rights granted: April Productions, Inc. v. G. Schirmer, Inc., 308 N.Y. 366, 377 (1955) ("There is no more likely way to misapprehend the meaning of language-be it in a constitution, a statute, a will or a contract-than to read the words literally, forgetting the object which the document as a whole is meant to secure.")

120 Alexander v. Irving Trust Company, 132 F. Supp. 364, 369 (S.D.N.Y. 1955), aff'd on grounds of no infringement, 228 F. 2d 221 (2d Cir. 1955), cert. denied, 350 U.S. 996 (1976).

121 Bisel v. Ladner, 1 F. 2d 436 (3d Cir. 1924); National Comics Publications, Inc. v. Fawcett Publications, Inc., 191 F. 2d 594 (2d Cir. 1951); American Visuals Corp. v. Holland, 239 F. 2d 740, 744 (2d Cir. 1956); DE WOLF, AN OUTLINE OF COPYRIGHT LAW 32 (1925); Henn, The Quest for International Copyright Protection, 39 CORNELL L.Q. 43, 51 n. 39 (1953); Kaplan, Publication in Copyright Law: The Question of Phonograph Records, 103 U. PA. L. REV. 469, 484 (1955); Cf. WARNER, RADIO AND TELEVISION RIGHTS 120 (1953).

122 See note 114 supra.

and cannot secure copyright in the story.123 It appears illogical, however, to sanction the transfer of all rights by the author, giving the publisher legal title to serial rights, but making the author equitable of the remaining four-fifths of the rights, and yet refuse to permit the author to grant one-fifth of his rights and retain legal ownership of the other four-fifths.124

3. Retransfer with reservations

A complete transfer of all rights back will protect the author, but it is more usual, and perfectly proper, for the publisher in making the reconveyance, to retain certain serial or reprint rights.125 Some periodicals retain "North and South American digest and pocket-size magazine rights" as well as the right to reprint in books or anthologies published by the periodical itself. The Saturday Evening Post, sometimes retains United States and Canadian serial rights in the story, abridgements, adaptations, arrangements, dramatizations, translations, or other versions; in addition, the author may not exercise radio or television rights without written consent until 90 days after publication is completed. To some, this is not an assignment back but a license. 126

In Eliot v. Geare-Marston, Inc., 127 the publisher, after securing copyright, conveyed back to the author, "all rights except American serial rights." The court held that, though the author now held all rights except the serial rights, the magazine remained the copyright proprietor and the author was a licensee. In Witwer v. Harold Lloyd Corporation, 128 in a similar situation, the publisher assigned back to the author "the copyright *** together with all rights *** except the right of magazine publication." The court held that the author became the copyright proprietor and the publisher a licensee.

Henn has distinguished the two cases on the theory that the Eliot case contains no clear manifestation of an intention to transfer the copyright back, while the Witwer case does.129 While the Witwer transfer does include the word "copyright" and this should be given due weight, it is difficult to see how a transfer of "the copyright * * * together with all rights *** except the right of magazine publication" can show an intent opposite to "all rights except American serial rights." In each case, the rights returned were the same; the attempted distinction would make everything depend upon the use of a word of art rather than the intent of the parties. The danger of relying upon words of art is illustrated in a case in which the transfer covered "the sole, exclusive, absolute and unlimited right, license, privilege, and authority to copyright, publish, print, reprint, copy and vend the music, lyrics and titles of all the musical compositions of the operetta"; the court said that since the term "to copyright" did not have "an invariable meaning in the law," this was not the language of a sale and did not, on its face, disclose an intention to transfer the

123 Cf. Witwer v. Harold Lloyd Corp., 46 F. 2d 792, 795, (S.D. Cal. 1930), rev'd on other grounds, 65 F. 2d 1 (9th Cir. 1933), petition for cert, dismissed per stipulation of counsel, 296 U.S. 669 (1933). ("Why, then, should a similar situation not arise when the result is accomplished by the execution of one instrument instead of two?").

134 See articles in note 113 supra.

125 337 U.S. 400 (1949).

126 Colton, Contracts in the Entertainment and Literary Fields, in 1953 COPYRIGHT PROBLEMS ANALYZED 139, 147 (1953).

127 30 F. Supp. 301 (E.D. Pa. 1939).

128 46 F. 2d 792 (S.D. Cal. 1930), rev'd on other grounds, 65 F. 2d 1 (9th Cir. 1933), petition for cert, dismissed on stipulation, 296 U.S. 669 (1933).

129 Henn, supra note 56, at 437-38.

performance rights of the separate songs. 130 These cases illustrate a weakness in the "manifested-intention-to-transfer-the-proprietorship" test. An individual publisher may not be particularly interested in reconveying, but he is under a duty to return the rights held in trust for the author. Requiring or stressing the use of particular language would permit him to prejduce the beneficial owner by knowingly or unwittingly failing to use the requisite word of art; the transfer back ought not depend upon the good will of the publisher. 131 In the language of Judge Pecora, "Trust responsibility is not a garment to be doffed at the mere pleasure of the wearer.

132

It is equally fruitless to attempt to reconcile extreme applications of the theory of indivisibility. In Douglas v. Cunningham and Post Publishing Co., 133 the district court said that where the publisher had secured copyright in an entire issue of a magazine, a transfer of all its rights in a short story in that issue was only a license, since the magazine had assigned only the rights in one part of the copyright and not the "entire copyright in the issue."134 The court attempted to distinguish another case by stating that it was not clear whether in that instance the story had been separately copyrighted, but in any case, copyright in the entire issue had been assigned back. 135 And it would appear that publishers have, in some cases, inadvertently or unknowingly transferred the copyright in an entire issue. 136

4. Complete retransfer

In this legal maze, a few magazines follow the doctrine implicitly. In transferring rights back to the author, they assign the copyright in the story back to the author, and in a companion document, take a license from the author for the rights they wish to retain. Careful attention to procedure is not a waste of time.

5. Failure to assign back

Usually, publishers are perfectly willing to return copyright to the author, at least with respect to everything except enumerated serial or reprint rights. There have been allegations that smaller publishers sometimes believe that they are entitled to share in the subsidiary rights and refuse to reassign, or insist upon sharing part of the profits of sales to motion picture, television or dramatic users.137 In these cases, the author must undertake the burden of proving his contract with the publisher and demonstrating his capacity to sue.

More frequently, the author may face an equally complicated situation when he discovers that, not having secured an assignment at the time his work was first published, this has become difficult if not impossible because the publisher has gone into bankruptcy or out of business. 138

13 Philipp v. Remick, 145 F. Supp. 756 (S.D.N.Y. 1936).

131 74 CÔNG. REC. 6245 (February 27, 1931).

1 Broadcast Music, Inc. v. Taylor, 55 N.Y.S. 2d 94, 104 (Sup. Ct. 1945).

133 U.S.P.Q. 470 (D. Mass. 1933).

134 Id. at 471

as Ibid. The question was resolved when the plaintiff joined the publisher as party plaintiff: Cunningham and Post Publishing Co. v. Douglas, 72 F. 2d 536 (1st Cir. 1934); rev'd on other grounds, 294 U.S. 207 (1935); Contra, Kaplan v. Fox Film Corp., 19 F. Supp. 780, 782 (S.D.N.Y. 1937).

In one case where the copyright for the entire magazine was assigned inadvertently, counsel for the author refused to return it and permit an assignment of the story alone stating:

"After consulting the authorities, I am convinced that any lesser assignment might seriously jeopardize my client's rights *** because a copyright is not divisible and it is doubtful whether the assignment of a portion of a copyright is valid for any purpose." Witwer v. Harold Lloyd Corp., 65 F. 2d 1, 43.

137 SPRING, RISKS & RIGHTS 169 (2d ed. 1956).

74 CONG. REC. 6245 (February 27, 1931); Appleman, Compromise in Copyright, 19 B.U.L. REV. 619, 623 (1939).

56580-60- -3

6. Problems in suing: joinder

To some commentators, since copyright is now industrially divisible, there is no problem except the procedural one of the right of the licensee to sue.

The courts have made real strides, with the aid of more lenient rules on joinder of parties, 139 in resolving this procedural point. But there must still be a determination as to whether a transfer is an assignment or license, and the plaintiff must be able to predict which it is. If it is a license, then he must join the copyright proprietor as party plaintiff, or if the latter is unavailable or unwilling, then as involuntary party plaintiff or defendant. 140

Where there is no question and the proprietor must be joined, the licensee may find that the original proprietor is unavailable for a number of reasons or that the periodical has gone out of business. 141 Some courts have permitted considerable latitude on questions of joinder, and have even suggested the joinder of a foreign copyright proprietor as involuntary party plaintiff. 142 But delay in the issuance of an injunction can amount to a denial of justice, 143 and a mistake in naming the original parties or the time necessary to join others may be serious.

The plaintiff may also find that he can be too cautious in matters of joinder. In an older case, the copyright owner of a play transferred the performing stage rights to E, reserving the motion picture rights to himself. When T undertook to make a motion picture based on the play, the copyright owner sued T, and joined E, as party plaintiff, on the theory that T's action might damage E; the court dismissed the complaint, with leave to amend and exclude the licensee, because of misjoinder of party plaintiffs, believing that E had no interest in the case. 144

Where a licensee wished to make sure that his grantor would join the suit as party plaintiff, paid him to do so and agreed to hold him harmless for all expenses incidental to the litigation, the defendants raised the objection that this was collusive. 15 It is little wonder that it has been said that the problem of whom to join has "fattened the purses of lawyers." 146

C. BOOKS

It would be a mistake to believe that the doctrine of indivisibility had no application in fields other than periodicals. The same problem is present, in varying degrees, in other copyright areas. Copyright in books, plays and music is divided and subdivided every day. The doctrine may have caused less difficulty in certain fields because the circumstances and practices are different.

Literary rights in the case of books include: publication, serial, reprint, book club, abridgment, foreign and translation rights. 147 The

189 Fed. Rules Civ. Proc. rule 19, 28 U.S.C.A.

140 Field v. True Comics, Inc., 89 F. Supp. 611, 613 (S.D.N.Y. 1950); Karp, Copyright Litigation, in SEVEN COPYRIGHT PROBLEMS ANALYZED 143, 146 (1952).

141 See note 138, supra.

142 Ilyin v. Avon Publications, Inc., 144 F. Supp. 368, 374 (S.D.N.Y. 1956).

143 Cf. Inge v. Twentieth Century-Fox Film Corp., 143 F. Supp. 294, 300 (S.D.N.Y. 1956).

144 Tully v. Triangle Film Corp., 229 F. 297 (S.D.N.Y. 1916).

145 Stephens v. Howells Sales Co., Inc., 16 F. 2d 805 (S.D.N.Y. 1926); the court threw out the charge that the action was collusive.

148 Appleman, Compromise in Copyright, 19 B.U.L. REV. 619, 624 (1939).

147 Schulman, Authors' Rights, in SEVEN COPYRIGHT PROBLEMS ANALYZED 19, 28 (1952); Laskin, All Rights Unreserved, in COPYRIGHT LAW SYMPOSIUM, No. 7 at pp. 91, 103 (1956).

nonliterary rights have become increasingly important and include: oral delivery, radio, recording, dramatic and stage rights, motion picture and synchronization rights, television, and similar rights, 148

In this field, statutory copyright is frequently secured in the name of the author, as provided in some standard contracts, 149 but it is not unusual to find the publisher's name in the copyright notice. 150 Varying practices could cause trouble, but this has been avoided in great part by the great particularity with which contracts between the author and publisher are now drawn. The contracts provide for a division of royalties in the case of reprint, book club, and foreign rights. 151 In addition, if motion picture rights are sold within a certain period, the publisher may be entitled to a share in the proceeds, whether or not he acts as agent for the author. 152 The publisher also shares in the proceeds of any "first serial, dramatic, radio and television broadcasting rights, and reproduction by phonograph records or other mechanical devices." 153 Although the practice does not go as far in books as it does in music publishing, book contracts frequently empower the publisher to act as exclusive agent of the author in disposing of some of the subsidiary rights.154

D. MUSIC

In the music industry, the prevailing custom is that statutory copyright in sheet music is secured in the name of the publisher.155 The publisher then holds the copyright in trust for the composer with respect to all rights or portions of rights not transferred to the publisher.156

The music industry deals with a great variety of different and distinct rights.157 These may be outlined as follows:

1. Publication rights.

2. Nondramatic rights: This includes performances in hotels, restaurants, theaters, night clubs, dance halls, etc., and also nondramatic use on radio and television.

3. Dramatic rights:

(a) Use on stage or in vaudeville;

(b) Dramatic use on radio;

(c) Dramatic use in television.

4. Recording rights:

(a) Reproduction on phonograph records;

(b) Use on electrical transcriptions or other sound recordings.

5. Synchronization right: Use in motion pictures.

14 Schulman, supra note 147, at 28; McDonald, The Law of Broadcasting, in SEVEN COPYRIGHT PROBLEMS ANALYZED 30, 58-65 (1952).

14 See e.g., Random House, Inc. contract in 1953 COPYRIGHT PROBLEMS ANALYZED 109 (1953). 150 SPRING, RISKS & RIGHTS 169 (2d ed. 1956).

141 Random House, Inc. contract, in 1953 COPYRIGHT PROBLEMS ANALYZED, 109, 111 (1953). 152 Id. at 112.

153 Ibid.

154 Ibid., clause XI.

15 April Productions, Inc. v. G. Schirmer, Inc., 308 N.Y. 366, 370 (1955); Cf. H.R. 8734, 68th Cong., 1st Sess. (1924), introduced by Representative Johnson, who felt his bill would prevent monopoly control by performing societies. He also thought it would prevent publishers from controlling the copyright: "The law intended to afford protection to the composer. In practice the law has conferred an exclusive monopoly upon a few publishers, and the intent of the statute has been perverted." Hearings Before the House Committee on Patents on H.R. 6250 and H.R. 9137, 68th Cong., 1st Sess. at 2-6 (1924).

16 April Productions, Inc. v. G. Schirmer, Inc., 308 N.Y. 366, 375 (1955).

157 McDonald, The Law of Broadcasting, in SEVEN COPYRIGHT PROBLEMS ANALYZED 31, 64 (1952); Burton, Business Practices in the Copyright Field, in id., 87, 110.