hearings preceding the statute are devoted to arguments on the compulsory licensing of musical compositions for mechanical reproduction.18

A reading of the hearings does not indicate any great concern over what we now regard as the problem of indivisibility of copyright. There was a problem in assigning rights under copyright, but except for some difficulty between the authors and the periodical publishers, the problem had not become acute in other areas.

In the book field most rights were sold and held within a single industry; any problem of this type could be resolved or minimized by trade practice within the industry. Some publishers produced both books and periodicals but in any case, sales of rights between book and periodical publishers were covered by customary contractual arrange

ments.

The dramatic situation was somewhat more complicated. Here there were two industrial groups, but the situation was eased by the fact that many dramatists wrote directly for the stage. Where a novel was published first, arrangements were usually worked out amicably. New York was the center of both the book publishing and theater producing groups; producers knew many of the authors and dealt directly with them.

Music too was sold or used within the music publishing, recording or entertainment fields, all fairly closely related. There were no performance right societies in the United States until 1914.19

C. DAM V. KIRKE LA SHELLE CO.

The period of closely knit industrial relationships in the book field disappeared with the growth of the motion picture and the advent of talking pictures, radio and television. The motion picture had been invented before 1909 but its need for large quantities of book and periodical material had not been foreseen. The development of the modern motion picture and the need of securing good title to the stories and dramatic compositions on which producers would spend large sums of money brought on a crisis caused in part by statutory procedures and in part by the application of the doctrine of indivisibility in the courts.

The spark which ignited the controversy was the decision in Dam v. Kirke La Shelle Co.20 The courts in the United States had not always applied Jefferys v. Boosey and Waterman v. Mackenzie in determining the status of the sale of separate rights in the copyright.21 The Dam decision, coming as it did in 1910,22 when authors were beginning to sell their published stories and books for motion picture production, shocked authors. It led to the immediate formation of the Authors' League,23 and to a sustained effort to amend the law.

18 Henn, The Compulsory License Provisions of the U.S. Copyright Law (Study No. 5 in the present series of committee prints, p. 11.)

19 Finkelstein, Public Performance Rights in Music and Performance Rights Societies, in SEVEN COPYRIGHT PROBLEMS ANALYZED, 69, 75 (1952).

20 166 Fed. 589 (C.C.N.Y. 1908); aff'd, 175 Fed. 902 (2d Cir. 1910).

21 Roberts v. Myers, 20 Fed. Cas. 898 (C.C. Mass. 1860); Aronson v. Fleckstein, 28 Fed. 75 (C.C. Ill. 1886); Palmer v. De Witt, 47 N.Y. 532 (1872); Aronson v. Baker, 43 N.J. Eq. 365, 12 A. 177 (1888); But see, Keene v. Wheatley & Clarke, 14 Fed. Cas. 180 (C.C. Pa. 1860); Tams v. Witmark, 30 N.Y. Misc. 293 (1900); aff'd 48 N.Y. App. Div. 632 (1900).

22 The case arose under the prior statute but was not decided until after the 1909 law had come into effect. Hearings Before the House Committee on Patents on H.R. 8913, 70th Cong., 1st Sess. (1928); Klein, Protective Societies for Authors and Creators, in 1953 COPYRIGHT PROBLEMS ANALYZED 19, 42 (1953).

For a long period, the attempts to secure statutory divisibility became the most important legislative aim of the authors and motion picture producers in the copyright area. The history of that legislative effort can only be understood in the light of the Dam case.

The plaintiff Dam sold a story to Smart Set magazine. The only contract was embodied in a receipt accompanying the check for payment, stating that it was "in full payment for story entitled "The Transmogrification of Dan.'" The story was published in the September 1901 issue of Smart Set; there was no separate copyright notice for the story, but there was a notice for the entire magazine in the name of the publisher. After the defendant had used the story as the basis for a play, the magazine assigned to Dam, "its copyright" of the September 1901 issue of Smart Set, "so far as it applied to, covered or protected said story, all its interest in said story under said copyright ***"'24

There was considerable confusion in the theories adopted by counsel for Dam, on the question of whether Dam had originally transferred all his rights in the story, or whether he had reserved the dramatic, translation, and other rights, and granted only the right of first publication. If Dam had transferred all his rights, the copyright of the entire magazine covered his story, for the magazine became the copyright proprietor of the story. On the other hand, if Dam had sold only the first publishing rights, then the magazine was a licensee, in which case it could not have secured copyright in the story and the story would have fallen into the public domain. In an effort to help the unfortunate author, the court construed the facts as indicating that the publishing company had become the absolute proprietor of the story. In a dictum, the court added that if Dam had retained the dramatic rights to his story when he originally sold it to the magazine, then a separate notice and entry might be required. Absent separate notice, there would be no copyright in the story. There might be disagreement as to what the decision meant,25 but this was unimportant; it was the implications, as writers interpreted them, which caused consternation in author circles. To writers, the Dam case became a symbol of injustice.

At this time, authors and periodicals had given little thought to the sale of motion picture rights. When they did consider it later, the magazines admitted that they purchased only certain publishing rights and the authors certainly hoped to sell the motion picture rights separately. But unless the author transferred all rights to the publisher and took his chances on having the rights assigned back, the Dam case indicated that his work would fall into the public domain. Well-known authors might insist upon a separate notice and secure copyright in their own name, but magazines objected to this procedure. Most magazines dealt fairly with authors but in the early days, some periodicals felt entitled to share in the proceeds of the motion picture sale.26 In order to make sure of their title, motion picture companies were sometimes forced to secure releases from both the author and publisher.27

24 175 Fed. 902, at 903.

"Cf. Laskin, All Rights Unreserved, in COPYRIGHT LAW SYMPOSIUM, No. 7 at pp. 91, 97 (1956) and note 21.

Hearings Before the House Committee on Patents on H.R. 6990, 71st Cong., 2d Sess. 17 (1930); SPRING, RISKS & RIGHTS 169 (2d ed. 1956).

Hearings Before the House Committee on Patents on H.R. 6250, H.R. 9137, 68th Cong., 1st Sess. 312-314 (1924); H. REP. NO. 1689, 71st Cong., 2d Sess. 5 (1930).

The struggle by the author to transfer good title to his work, and the need of the motion picture companies to secure clear title, was the impetus for the introduction of bill after bill to achieve divisibility. The Dam case arose under the old law but was not finally decided until after the 1909 act has been enacted. Before discussing the legislative battle for divisibility, we review the history of the 1909 act. II. LEGISLATIVE HISTORY

A. 1905-9: PROLOGUE TO 1909

The task of drafting a new copyright law in 1905 presented a great many problems, but of these, the problem of indivisibility was a rather minor one.

Work on the new law began at conferences called by the Librarian of Congress in 1905. At these meetings it was stated that, although periodicals had, at one time, claimed that the purchase of a short story resulted in an outright sale of all rights, most of them now purchased only the right to publish in the particular periodical or at most, the right to publish in any periodical.28 Despite this understanding, and in an effort to prevent the unintentional transfer of secondary rights,29 the authors wished to see a specific provision in the law providing that, unless there was a written contract to the contrary, all rights in an article first published in a periodical reverted to the author at the end of 3 years. 30 Some felt this was a matter of contract and that there was no need to write it into the law-the law would not imply a transfer of secondary rights.31

The question of the validity of a single copyright for an entire magazine or periodical had been raised in 1903, in famous cases involving stories by Oliver Wendell Holmes and Harriet Beecher Stowe.32 It had become the custom to copyright magazines by using one notice covering the entire contents.33 The Librarian's draft of a new law sought to resolve any doubt as to this procedure by providing for the deposit of copies of the entire periodical and the necessity of using only one notice unless the contributor desired separate registration.34

The Librarian's draft stated that "copyright in a book," the dramatic right, the music performing right and the right of oral delivery of a lecture were distinct for purposes of "ownership, publication, performance, representation, delivery, assignment, license, and for all other purposes. 11 35 The conference added the thought that each right might be "severed" from the copyright for these purposes.3

23 Stenographic Report of Proceedings of First Session of Conference on Copyright, New York City Club 30, 168-172 (May 31-June 2, 1905), ms. in U.S. Copyright Office.

29 Id. at 169-172.

30 Memorandum Draft of Bill, U.S. Copyright Office Bull. No. 10, §§ 116, 119 (1905).

31 Conferences, supra note 28, at 168, 175.

32 Mifflin v. B. F. Dutton, 190 U.S. 265 (1903); Mifflin v. R. H. White Co., 190 U.S. 260 (1903). In the Holmes case, the Supreme Court held that the publishers in entering the copyright for two issues of the magazine which included chapters of the book, had evidently sought their own protection for the magazine as a whole, and though it might be inferred that an author placing his book in the hands of a publisher intended to authorize him to secure copyright in his name, there was no such intention here.

33 Hearings Before the Senate and House Committees on Patents on S. 6330 and H.R. 19853, 59th Cong., 1st Sess. at 95 (Dec. 1906).

34 U.S. Copyright Office Bull. No. 10, § 56 (1905).

35 Id. at § 36.

38 U.S. Copyright Office Bull. No. 10, 32 (2d Print, March 1906):

"SEC. 56. That the right of representation in the case of a dramatic composition, the right of performance in the case of a musical composition, and the right of oral delivery in the case of a lecture, shall each be deemed a distinct personal property which may be severed from the copyright for the purpose of ownership, publication, performance, representation, delivery, assignment, license, transmission, and for all other purposes."

The draft also provided that the owner of a copyright, or of the translation or other rights mentioned above might

assign the right before or after publication, either wholly or partially, and either generally or with limitation to particular place or period, or grant any interest therein by lease or license ****37

Provision was made for the recordation of assignments and licenses.38 In 1906, a new draft prepared by the Librarian incorporated language providing that, where the author assigned his copyright for a limited term, both author and assignee had a concurrent right to maintain a suit during the term and that action by either one would bar later suit on the same cause of action.39

Early Currier and Kittredge bills 40 modified and used the Librarian's draft; as later redrafted for the Patent Committees of both Houses, the provision became:

SEC. 34. That each of the rights specified in section one of this Act shall be deemed a separate estate subject to assignment, lease, license, gift, bequest, inheritance, descent or evolution.41

The Committee on Copyright of the Association of the Bar of the City of New York, in commenting on the bills, stated the purpose of the section to be "to determine the separate estates subject to assignment with reference to copyright * * *17 42

The American (Authors') Copyright League proposed to amend the section to include the right to make "any form of musical record" and to make "any other separable right" subject to assignment or license in whole or in part.43 Other amendments to provide that enumerated rights were not to pass by assignment unless specifically assigned, were also proposed."

Provisions identical to section 34, except for the change of "evolution" to read "devolution" appeared in succeeding bills. On January 28, 1909, Representative Washburn introduced H.R. 27310 46 with the following language:

SEC. 44. That copyright secured under this or previous Acts of the United States, or any interest therein, may be assigned, granted, mortgaged, or devised by an instrument in writing signed by the proprietor of the copyright, or may pass by operation of law to executors or administrators or trustees in bankruptcy or on execution." [Italics added.]

"U.S. Copyright Office Bull. No. 10, § 45 (1905).

38 Conferences, supra note 28, 2d Session (Nov. 1-4, 1905) 352-360; 3d Session (Mar. 13-16, 1906) 562-564. U.S. Copyright Office Bull. No. 10, 42 (2d Print, March 1906).

40 "SEC. 38. That the right of translation, the right of dramatization, the right of oral delivery of a lecture, the right of representation in the case of a dramatic composition, the right of performance in the case of a musical composition, where the latter is reserved, as provided in section fourteen hereof, the right to make any mechanical device by which music may be reproduced to the ear, and the right of reproduction of a work of art or of a drawing or plastic work of a scientific or technical character shall each be deemed a sepa rate estate subject to assignment, lease, license, gift, bequest, or inheritance." H.R. 19853, 59th Cong., 1st Sess. (Currier) and S. 6330 (Kittredge) both introduced on May 31 1906.

41 S. 6330, 35; H.R. 19853, § 34 (1907).

42 Hearings (Dec. 1906), supra note 33, at 409. The same Committee of the Bar of the City of New York objected to the inclusion of a "right to make any musical device." Id. at 410. There was also a question as to whether the right of performance ought be given to a musical composition or only to a "musical-dramatic composition" and whether the right of performance in the case of a musical composition ought be limited to public performance: Hearings Before the Senate and House Committees on S. 6330 and H.R. 19853, 59th Cong., 1st Sess. at 138 (June 1906), and Amendments Proposed to Copyright Bill, Part II, U.S. Copyright Office 96 (19)6).

43 Hearings (Dec. 1906), supra note 33, at 402.

44 Hearings (Dec. 1906), supra note 33, at 422; Cf. Dec. 1906 draft of bill submitted on behalf of Melville Clark Piano Co., in Amendments Proposed to the Copyright Bill, Addenda, U.S. Copyright Office, §§ 3, 38 (1906).

45 S. 8190, 59th Cong., 2d Sess. § 34 (1907, Kittredge); and Sections 44 in the following bills: S. 2900, 60th Cong., 1st Sess. (1907, Kittredge); H.R. 11794, 60th Cong., 1st Sess. (1908, Barchfeld); and H.R. 24782, 60th Cong., 2d Sess. (1908, Barchfeld).

46 60th Cong., 2d Sess.

On February 15, 1909, Representative Currier introduced the bill which was eventually to become the 1909 law. In this bill, section 44 was changed to omit the words italicized above and came to read:

SEC. 42. Copyright secured under this title or previous copyright laws of the United States may be assigned, granted, or mortgaged by an instrument in writing signed by the proprietor of the copyright, or may be bequeathed by will." In commenting on section 42, the report accompanying the bill stated:

Section 42 deals with the matter of the transfer of the copyright. Some doubt has been expressed as to the right to convey a copyright in mortgage. Your committee saw no reason why such a right should not be recognized.48

The report thus directs attention to the arguments presented to the Copyright Subcommittee immediately prior to the passage of H.R. 28192, on the question of the effect of bankruptcy on the copyright." The main argument revolved about the decision in the Bobbs Merrill case prohibiting retail book price maintenance. Arthur Steuart, chairman of the Copyright Committee of the American Bar Association believed that the copyright proprietor should have a right to set retail prices, and told the committee:

50

We are in a position where we are confronted with the problem of whether we are going to protect this property fully or only to a limited extent. There is no provision in this act that licenses, (sic) and yet licenses are the common practice of the world and have been recognized by the courts. There is no provision in his act for granting a limited estate under copyright.51

Representative Washburn read what he later introduced as section 44 of H.R. 27310 at this hearing; one witness objected to the inclusion of the word "leased" as possibly giving some support to the theory that the proprietor or publisher might impose retail price maintenance under the guise of a lease.52 Whether the committee, in rewriting section 44 of the Washburn bill, deleted four little words "or any interest therein" for economy of language or because of some feeling that the words might support the argument for price maintenance cannot be determined.

The congressional intent is debatable. Certainly, the problem was called to the attention of the Congress. In the March 1908 hearings, Robert Underwood Johnson, secretary of the American (Authors') Copyright League, comparing the pending bills pointed out that the Currier and Smoot bills omit this section (Sec. 34) of the 59th Congress bills. This "separate estate" provision is emphasized by authors and publishers as making clear though not altering the existing law on a mooted point.53 Did the committee believe that, if the provision did not alter the law, it was not necessary to include it? 54 A prior committee, in reporting a bill containing a provision for separate estates, had commented, "Sec. 34, while a new provision in the copyright laws, simply provides for a transfer of well-recognized property rights." 55 Even the inclu

47 S. 9440, introduced March 1, 1909, used identical language.

48 H.R. REP. NO. 2222, 60th Cong., 2d Sess. 19 (1909).

49 Hearings Before the Copyright Subcommittee of the House Committee on Patents on Common-Law Rights a8 Applied to Copyright, Section 4, H. R. 21592, 60th Cong., 1st Sess. 12 (1909).

30 Bobbs-Merrill v. Strauss, 210 U.S. 339 (1908).

1 Hearings, supra note 49, at 13.

52 Hearings, supra note 49, at 18.

Hearings Before the Senate and House Committees on Patents, 60th Cong. at 94 (March 1908).

WEIL, AMERICAN COPYRIGHT LAW 552 (1917): "or possibly because of their universal recognition, Congress may have deemed it unnecessary to confer an express power to license ***.”

$5 H.R. REP. NO. 7803, 59th Cong., 2d Sess. 17 (1907). See also, the Minority Report of the same committee, Pt. 2, at 6.