DIVISIBILITY OF COPYRIGHTS INTRODUCTION Every major bill to revise the copyright law first enacted in 1909 has included provisions for divisibility as one of the three or four crucial issues. For a time, authors believed divisibility so vital to their interests that they made it their most important legislative goal. Long debate and such urgency might lead one to believe that it would be simple to define and explain the issue; unfortunately, this is not the case. Copyright has been called the metaphysics of the law. Its details are now embalmed in a statute almost 50 years old. The theory of the indivisibility of copyright is a technical refinement, grafted onto this structure, which affects the transfer of the rights granted under copyright. When copyright consisted solely in the right to multiply copies, transfers were generally of the entire copyright; as long as the rights and the uses of copyright material remained few, the problems incident to transferring one of a bundle of rights were of little consequence. The present difficulty arises from the fact that a theory enunciated during the period of a limited number of rights and uses of copyright material has been applied to the great proliferation of rights and uses which have developed since the turn of the century. The concept of indivisibility tends to force all sales or transfers of copyrights or rights in copyrights into one of two molds, (a) assignment, a complete transfer of all rights, or (b) license, a transfer of any portion of those rights. An assignment carries all rights; a license is really a contract not to sue the licensee, and the licensee cannot fully enforce his rights against third parties. From the viewpoint of ease of tracing title and purposes of suit, it is much simpler to require that only the author or his assignee can control the copyright. But trouble arises because the transferee of less than all the rights may be regarded as a mere licensee and cannot sue to enforce his rights without joining the owner of the residual rights. If the law forces the author to transfer all his rights to the same person at one time, his bargaining power is crippled, since these rights are used in different industries. On the other hand, where the author reserves certain rights and remains the holder of the legal title, he may be in a position to hamper his own transferee. The author may sell dramatic, motion picture, and television rights; economically, these rights may be much more valuable than those retained by the author. The purchaser of the television rights, for example, may wish to enjoin a third party; if the author has gone off to India, the licensee is not in a happy position. In order to understand the present situation, it will be helpful to have some outline of the origin and application of the theory of indivisibility, the legislative effort to make copyright divisible, the theories of divisibility, and the efforts of the courts to resolve the issue. I. HISTORICAL SURVEY A. EARLY CASES Articles and decisions have sometimes attributed the development of the doctrine of "indivisibility" in copyright law to the decision of the Supreme Court in Waterman v. Mackenzie. In this leading patent case, the Court said that the patent grant "to make, use, and vend" the invention was "one entire thing, and cannot be divided into parts ***" 2 The Court listed three permissible types of assignments: the grant of the entire patent, an undivided share of the entire patent, or the exclusive right under the patent for a "specified part of the United States."3 Anything else was a "license" and licensees could sue only through the licensor. The Court emphasized the need of avoiding multiplicity of suits. Earlier patent cases, and especially Gayler v. Wilder had pointed to this result. 5 4 6 There can be little question but that the patent doctrine influenced the course of decision in copyright, but it seems a little incongruous to minimize the influence of the dicta of Jefferys v. Boosey, an English copyright case decided more than 36 years before Waterman v. Mackenzie. In the Boosey case, Bellini composed an opera, assigned it to Ricordi, who in turn assigned to Boosey "Ricordi's interest in the opera ** *for publication in the United Kingdom only." In the course of the litigation, the judges were asked to consider whether limited publication rights could thus be assigned. On this point, Baron Parke felt that "this is an indivisible right, and the owner of it cannot assign a part of the right, as to print in a particular county or place." Lord Chief Baron Pollock thought it 7 very doubtful whether copyright can be at all partially assigned * * *. [It is] not capable of being divided into parts and divisions according to local boundaries***the assignment being for publication in the United Kingdom only, and not all the British dominions, would operate as a license only * * *8 To Lord Brougham, it appeared that— if there is one thing which I should be inclined to represent *** as being more clear than any other *** it is that copyright is one and indivisible * * *. Nothing could be more absurd or inconvenient than that this abstract right should be divided, as if it were real property, into lots * * *. It is impossible to tell what the inconvenience would be. You might have a separate transfer of the right of publication in every county in the Kingdom." Lord St. Leonards echoed these sentiments, believing that this was a partial assignment and "wholly void"; Ricordi might havepublished it the very next day in Milan *** the assignment *** because it was limited to the United Kingdom, and did not extend to the whole of the British dominions ***.10 was void The language used in Jefferys v. Boosey made a strong impression on American courts. The problem discussed in the 1854 decision was whether Ricordi could assign to Boosey a part of the British publishing 7 Id. at 727. 8 Id. at 730. • Id. at 750. 10 Id. at 751. Compare the situation under the Copyright Act, 1911, 1 & 2 Geo. 5, c. 46, § 5(2)(3): COPINGER AND SKONE JAMES, COPYRIGHT (8th ed. 1948) 109. rights; i.e. one which excluded the dominions. But what started as a commonsense notion, presumably in accord with trade practice-i.e., that an author could not subdivide the right of publication territorially into units smaller than an entire state-later turned into a rigid legal doctrine which, when applied to new fields and rights, caused great confusion in the marketing of the author's product. B. A BUNDLE OF RIGHTS 11 Copyright began with the protection of books against copying. The first Federal statute in the United States also covered maps and charts, but the protection for all three categories was limited to "printing, reprinting, publishing, and vending." The acts of 1802 and 1831 added new materials subject to copyright, but not until 1856 did Congress grant a new type of protection, the right of public performance in dramatic compositions.12 In 1891 Congress made it unnecessary for authors to reserve the rights of translation or dramatization given to them in 1870.13 The act of 1897 gave a right of public performance or representation in any copyrighted "dramatic or musical composition." 14 The turn of the century thus saw copyright departing from its original concentration on the publishing right; it now included rights of translation, dramatization and of public performance in dramatic and musical compositions. Copyright was no longer a single right, but had become an aggregation or bundle of rights, which might conveniently be referred to as "copyright" but was in reality, many copyrights. If each new right had acquired and retained a different name, e.g., "playright" for dramatic rights more attention might have been given to the necessity of distinguishing between them. The listing of rights in the act of 1909 emphasized this growth.16 The statute granted the traditional publishing right, "to print, reprint, publish, copy and vend" and also the right to: translate; make other versions of literary works; dramatize nondramatic works; convert dramas to novels or other nondramatic form; arrange or adapt musical works; complete, execute and finish models or designs for works of art; deliver lectures, sermons, addresses or similar productions in public for profit; perform or represent dramatic works publicly; make a record of the dramatic work by or from which it might be exhibited, performed, represented, produced or reproduced, or to exhibit, perform, represent, produce or reproduce it; perform musical compositions publicly for profit, and make any arrangement or setting in any form of record. 17 This is a very different situation from 1790 and the single right of publication. In the period leading up to the enactment of the 1909 law, although there was disagreement on the extent of protection of some of the rights, there was a fairly general consensus on the kind of protection which was to be given to copyrighted works. Few questioned the need for rights of translation, dramatization and a general performing right for certain types of material but a major portion of the long 11 Copyright Laws of the United States of America, 1783-1956,U.S. Copyright Office, 22 (1956). 12 Id. at 24, 27, 33. 13 Id. at 37, 50. 14 Id. at 56. 15 WEIL, AMERICAN COPYRIGHT LAW 56 (1917). 135 STAT. 1075, § 1 (1909); codified in 1947 by Act of July 30, 1947 (61 STAT. 652). Amended by Act of July 17, 1952 (66 STAT. 752). 17 17 U.S.C.1(a)-(e) (1952). |