coowner of a copyright, without the consent or knowledge of his other coowners, may make such use of the entire work as he wishes. A New York court in 1912 regarded this concept as well-established, and refused to enjoin a coowner of a play from using the play and reaping the profits therefrom, to the detriment of the other coowner. As the court put it: It is settled that, with regard to property of this nature, one tenant in common has as good a right to use it, or to license third persons to use it, as has the other tenant in common and neither can come into a court of equity and assert a superior right, unless it has been created by some contract modifying the rights which belong to the tenants in common as such.61 Exception: Destruction of the res.-An incident of tenancy in common, while permitting a cotenant to make use of the property, protected a cotenant from such use by a fellow cotenant that amounted to a destruction of the res. If the analogizing of realty law and its concepts with copyright law were accurate, it would seem that a coowner of a copyright would be upheld in urging that his coowner had used the common property in such a manner as to constitute a destruction of the res. So it was urged in Herbert v. Fields,62 where the plaintiff contended, inter alia, that the defendant coowner's use of the property by licensing it for motion picture production was such use as actually amounted to a destruction of the copyright. To this contention, the court replied: It will probably not be disputed that the rights of a coowner do not extend to the destruction of the article owned. To apply that term, however, to the case at bar, would be manifestly to convert words used to describe a physical result into a pure metaphor. Plaintiff urges that the production of the moving pictures to large crowds at low prices of admission "destroys" the work. While the question whether the moving picture production detracts from or adds to its value as a musical comedy may be debatable, it seems perfectly clear that any analogy sought to be derived from the total physical destruction of an article owned in common is utterly inapplicable.63 64 As late as the year 1945, the court in the case of Brown v. Republic Productions, Inc., et al. refused to entertain the plea that the use by a coowner of a musical composition in a motion picture amounted to a "destruction" thereof, saying: ***the waning of public interest therein cannot be termed either a legal or a factual "destruction" of the composition. Only corporeal things may be destroyed *** A musical production is an incorporeal entity and cannot be destroyed in the sense intended by those authorities wherein the doctrine is treated.65 66 In the Shapiro-Bernstein (Melancholy Baby) case referred to in which the no-accounting rule of Carter v. Bailey was questioned and effectively disregarded, Judge Bright also took a realistic look at the argument that a musical composition could be effectively "destroyed" by use in a motion picture or other general exposure, and stated: *** it seems reasonable that copyright business, in songs at least, indulged in by one coowner, practically precludes the other from a like use. The use of one owner, by license or personally, in motion pictures, on the stage, by radio, in advertising, in bands or orchestras, can destroy, practically, the copyright so far as the other is concerned. It has been said that copyright, being an incorporeal right, cannot be destroyed. But its broad use by an active publisher can so far B1 See note 42 supra, at p. 295. 42 See note 24 supra. 43 Ibid. at p. 490. 44 See note 46 supra. 45 Ibid. at p. 41 of lower court's opinion. 66 See note 49 supra. exhaust the popularity of a song, or any other musical composition, as to destroy its value after that use has ended. And the destruction of value of a copyright is, in effect, a destruction of the copyright." It seems safe to conclude that a coowner of a copyright may have no right to prevent his coowners' use of their joint property unless that use amounts to a destruction of the value of the copyright. It is an open question, however, as to what acts constitute a destruction of the value of the copyright. It is not certain whether courts today would take the pragmatic view of Judge Bright, and reach the conclusion that overexposure of a musical composition by means of radio, television, or motion pictures, might be said to constitute such a destruction of value of the copyright as would permit a coowner to prevent such use. (c) Infringement action by one coowner against another No reported cases have been found that squarely pass upon the right of one frustrated coowner to institute an infringement action against his other coowner.68 However, since an assignee of a coowner stands in the shoes of the assigning coowner, a case in which the assignee of one coowner brought an infringement action against the assignee of the other coowner, would appear to be in point. In Marks v. Vogel,69 the assignee of a lyricist who had filed a renewal application for the entire musical composition brought an infringement action against the assignee of the composer of the music, who had assigned his renewal rights to said assignee although he had not filed a renewal application therefor. The court held that when the renewal application was filed by the lyricist, the benefit of the renewal accrued to the composer, and thus the composer's assignee had a right to exploit the entire musical composition, and was not, therefore, an infringer. (d) Action against a licensee of one coowner In the early case of Klein v. Beach,70 the court expressed a dictum that a frustrated coowner could not seek damages for infringement from his coowner's licensee. Some years later an actual case arose involving this same point, and the Ninth Circuit, in its opinion, stated the matter thus: The question, then, is whether a third party licensed to use a copyrighted work by one coowner incurs liability for infringing the copyright to other coowners who gave no consent. *** Copyrights are similar in purpose to patents, and patent law protects a licensee of a joint owner from suit by another joint It is reasonable that the principle covers copyrights."1 owner. In a subsequent infringement action by one coowner against a licensee of another coowner, the Ninth Circuit followed its earlier decision and affirmed the dismissal of such action.72 An action against a licensee of a coowner for an accounting resulted in the denial of the action in Brown v. Republic." The California 7 Ibid. at p. 168. "In Meredith v. Smith, 145 F. 2d 620 (9th Cir. 1944), which is sometimes cited as authority for the proposi tion that a co-owner may institute an infringement action against his co-owner, it should be noted that the defendant co-owner was dismissed from the action because the matter in dispute involved a contract relation as to the use of a jointly owned copyright, which was not a Federal question. See note 17 supra. 7 See note 41 supra. 71 Piantadosi v. Loew's Inc. et al., 137 F. 2d 534 (9th Cir. 1943). " See note 68 supra. " See note 46 supra. court in the Brown case denied the right of action against the licensee on the ground that the coowner could give to a third party the same right he had, and that the licensor's sole obligation was to account to his cotenant. This reasoning, however, did not reach the heart of the question why a licensee is not liable to account to the nonlicensing coowner. One must necessarily assume that the court was probably concerned primarily with the nature of the licensor-licensee relationship, in which the licensor parts with only a limited and incomplete right; or as stated in Stephens et al. v. Howells Sales Co., Inc., et al.: 74 the copyright is, technically speaking, indivisible, the legal title remaining in the licensor and the licensee having merely an equitable title. Under the existing legal situation, it would appear in general that a frustrated coowner's main right is that of an accounting from his coowner. He cannot bring an infringement action against his coowner, nor against his coowner's licensee. And be it remembered that his coowner's assignee becomes his new coowner. A possibility exists that if his coowner is so using the jointly owned property as to "destroy" it, the protesting coowner might obtain an injunction. But an accounting seems to be the main remedy. (e) Parties to infringement suits If, as has been indicated, a coowner of a copyright may use or license the work without the knowledge or consent of his coowner, it might be expected that one coowner would be entitled to bring suit for an infringement action against an infringer without joining the other coowner. But formerly it was the rule that all coowners had to be joined-one could not sue alone.75 However, the matter probably has changed today under the Federal Rules of Civil Procedure.76 Rule 17 of those rules provides that "Every action shall be prosecuted in the name of the real party in interest ***" In one case decided thereunder, the court permitted the assignee of one coowner of a renewal copyright to bring action against an alleged infringer, saying that it was in fact a "real party in interest": *** not, it is true, the only such party, but as much so as [the other coowner]. It was therefore entitled to sue in its own behalf. It was entitled to an injunction; it was entitled to its own damages; it was entitled to some share in any statutory damages; it was entitled to some share in the defendant's profits."7 The court then went on to say that the nonjoinder of the successors of the other coowner was not fatal if they could not be served. But of course, the single coowner could not recover any but his own part of the damages and profits. Rule 19(b) 78 also has a bearing on this problem in requiring the joinder of indispensable parties. In the above case, the court held that the missing coowner was not an indispensable party whose nonjoinder would be fatal, since his rights could be reserved in the judg ment. 74 16 F. 2d 805 (S.D.N.Y. 1926). 75 Stuff v. LaBudde Feed and Grain Co., 42 F. Supp. 493 (E.D. Wis. 1941); Anderson v. Educational Publishers, Inc., 133 F. Supp. 82 (D. Minn. 1950). 76 28 U.S.C.A. FRCP Rule 17. 77 Edw. B. Marks Music Corp. v. Jerry Vogel Music Co., Inc., 140 F. 2d 268 (2d Cir. 1944). 78 28 U.S.C.A. FRCP Rule 19(b). But, in Curtis v. American Book Co.,79 while the court agreed that a coowner was not an indispensable party, it held that such a party was a conditionally necessary party in the particular situation therein involved, and under the discretion given by rule 19(b), ordered the joinder of the coowner on the ground that such joinder would obviate a second cause of action against the alleged infringer. IV. LEGISLATIVE HISTORY The evolution of the concept of joint authorship, and the incidents of joint ownership have been entirely of a juridical nature. As previously indicated, these matters are not dealt with at all in the legislation nor in the legislative history. No reference to joint authorship or ownership is found in the hearings conducted in connection with the 1909 act,80 nor in the committee report accompanying the bill that ultimately became the 1909 act.81 It is not difficult to understand, therefore, why the present law is bare as regards any reference to these matters. Of the many copyright bills introduced in the Congress since 1909, none proposed to deal with the matter of the incidents of joint ownership. One bill did define joint authorship. In 1924, the original Dallinger bill 82 contained, as section 68(j), à reproduction of the incidental language of section 16(3) of the British Copyright Act of 1911, as follows: For the purposes of this Act, "a work of joint authorship" means a work produced by the collaboration of two or more authors in which the contribution of one author is not distinct from the contribution of the other author or authors. Perhaps it is not surprising that this verbatim reproduction of a section of the British Act was included in this bill, since that bill has been described by one commentator as a "scissors and paste job, lifting whole sections from the British Statute." 83 The same provision appeared in a later modified version of the Dallinger bill.4 Outside of the foregoing, it does not appear that any subsequent bill contained any attempt to define a work of joint authorship. However, the so-called Shotwell committee in its early stages appeared to consider that the problem was worthy of study, since it included as one of a series of "undetermined principles" an item headed "Disposition of works in the case of joint owners or joint authors."'86 However, little further seems to have come of this, since, although an early draft of the bill included a definition of joint authorship, the bill as introduced by Senator Thomas in 1940 87 was devoid of any reference thereto. H.R. 8177, 68th Cong., 1st Sess. (1924). De Wolf, Copyright Revision, p. 10 (1945), a typescript in the files of the Copyright Office. H.R. 9137, 69th Cong., 1st Sess, (1924). "The Committee on Intellectual Cooperation, a creature of the League of Nations, had as its U.S. representative the National Committee on the United State of America on International Intellectual Cooperation. A Subcommittee thereof called the Committee for the Study of Copyright, headed by Prof. James T. Shotwell, is referred to in this paper as the "Shotwell Committee". V. FOREIGN LAWS * The statutes of 14 countries in various parts of the world have been examined as representative of the various foreign laws on the problem. The statutes of all 14 foreign countries included in this study, unlike the U.S. copyright law, define what is tantamount to "joint authorship." 88 The laws of several foreign countries use the terms "collaborators" or "collaboration," rather than the terms "joint authors" or "joint authorship." The laws of other countries 9o refer only to works "jointly created," and one country begins its statute, "If several persons jointly are authors As previously discussed, in the United States the task of defining joint authorship and determining the incidents which accompany the relationship has been left to the courts, and there is considerable basis for concluding that the courts have apparently not yet agreed as to the exact nature of joint authorship. * **991 For the most part, foreign laws more narrowly define coauthorship than do our courts, as will be seen by chart 1, to follow. Foreign countries require that the contributions of each author be "inseparable," or such that they cannot be individually identified. This is similar to the view taken in the earlier American decisions; but the current American view, if the 12th Street Rag doctrine prevails, requires only a "fusion of effort" as a basis for establishing the relationship. Whereas American courts generally designate joint ownership of copyrights as a "tenancy in common," foreign copyright statutes generally avoid real property terms when categorizing the joint ownership relationship in terms of property rights.92 Infrequently one reads that joint authors or collaborators enjoy "equal rights," or hold "joint property." The implication is that unless specific incidents of ownership are doled out by agreement, "share and share alike" is the rule of the day. Another provision found in some foreign statutes which differs from American case law dictates that joint authors must get permission from other coauthors of the work before the work is personally exploited or licensed to third persons.95 In a few countries, there is an added provision allowing one or more joint authors to require the nonassenting joint author to join such an agreement" or be indemnified for loss. Even having established, in some countries, what constitutes joint authorship, one is faced with interpreting the meaing of statutory language to the effect that joint authors hold the property "in common" or "jointly," or that they have "equal rights. Such phrases do not establish the incidents of joint ownership as between the coauthors and in their dealings with third persons. Presumably the The author wishes to acknowledge the assistance of John W. Coleman in the preparation of this part V. * See charts 1 and 2, infra. 8 E.g. Copyright Law of Argentina, Art. 16; Brazil, Art. 653; Chile, Art. 12; Italy, Art. 40; Japan, § 13. (All references in this paper to copyright laws of foreign countries are to the laws as included in COPY. RIGHT LAWS AND TREATIES OF THE WORLD, Unesco-Bureau of National Affairs (1956)). 90 Austria, 11(1); Czechoslovakia, § 10(1); German Federal Republic, § 6. 1 Sweden, 7. 92 See chart 2, infra. 93 Ibid. Ibid. |