without notice. I would make recording of nonexclusive licenses at least permissive. There is not the same reason for requiring them to be recorded. (6) The new copyright law should definitely have in it a provision that no divisible right should pass by assignment unless specifically mentioned, except in the case of an assignment of the entire copyright. A provision such as in present title 17, United States Code, section 27, that the copyright is distinct from the property in a material object copyrighted, and that transfer of the material object does not constitute a transfer of the copyright therein, should be retained. In other words, Pushman v. New York Graphic Society (287 N.Y. 302, 39 N.E. 2d 249 (1942)) should definitely be overruled. Everyone will remember that was the case where Pushman the artist sold a painting to the University of Illinois without restriction and the university was held to have acquired the right to reproduce the painting in copies for sale, which it granted to the New York Graphic Society. The old law which held that copyright was not divisible and which required the owner of the copyright to be a plaintiff, and that the assignee of any divisible right could not be a plaintiff, is archaic, and not in accord with present-day commercial practices. The old law is unnecessarily restrictive on the copyright creator's rights to enjoy the fruits of his labors, with no other social interests being served in the slightest by the technical requirements relating to suits. I well remember Douglas v. Cunningham and Post Publishing Co. (33 ÜSPQ 470 (D.C.D. Mass. 1933)). I brought the suit in the name of the author Douglas. His copyrighted story had been published in the American Mercury and the copyright assigned back to Douglas. I had uneasy moments when Judge Lowell dismissed the original complaint for lack of proper party plaintiffs. I still think his decision on the point was wrong but fortunately the American Mercury was willing to be joined as a party plaintiff and this joinder satisfied Judge Lowell. I trust the foregoing will be of some assistance to you. Very truly yours, The current academic recess has enabled me to prepare the following comments on Kami's study entitled "Divisibility of Copyrights." The study, in my opinion, contains excellent treatment of the historical development of the indivisible copyright theory, the major cases which have arisen involving indivisibility problems, and some of the resulting trade practices. Its major shortcoming, as I see it, is that it does not sufficiently reflect the fact that the theory is ingrained in the present U.S. Copyright Act, including statutory provisions which have not yet given rise to reported litigation and are not mentioned in the study. The present Act contains numerous references to "the copyright proprietor" and confers upon such proprietor various important functions with respect to the securing, maintaining, renewing, and enforcing of statutory copyright. Thus, under the Act, it is "the copyright proprietor"— (1) Who secures and registers the claim of copyright and deposits the copies (17 U.S.C. §§ 9–13); (2) Whose name must appear in the copyright notice (17 U.S.C. §§ 19, 32); (5) Who is entitled to damages, profits or statutory damages in case of infringement (17 U.S.C. § 101); (6) Whose signature is necessary to the assignment, grant, or mortgage of the copyright (17 U.S.C. § 28); (7) Whose consent is necessary to the production of a copyrightable new version of the copyrighted work (17 U.S.C. § 7); (8) From whom or under whose authority the first authorized edition of the work must issue (17 U.S.C. § 26); (9) Who has several functions under the compulsory licensing provisions (17 U.S.C. §§ 1(e), 101(e)); (10) Who is liable to $100 fine for failure to deposit copies of the copyrighted work on demand (17 U.S.C. § 14); (11) Who is liable to reimburse innocent infringers where the copyright notice has been omitted from a particular copy or copies by accident or mistake (17 U.S.C. § 21). In addition to such references, the Act contains several provisions referring to assigns, assignees, or assignments, subjecting assignments (as distinguished from licenses) to certain formal requirements and affording them certain constructive notice advantages (17 U.S.C. §§ 9, 24, 27, 28, 29, 30, 31, 32). To the extent that the study emphasizes such problems as standing to sue, joinder of parties, and other procedural aspects, and the recordation and notice provisions, it does, of course, mirror the cases which have been reported to date and the commentary thereon. If the study had outlined more systematically and completely the present statutory provisions predicated on the indivisible copyright theory, the presentation would have been more complete, the focus would have been on the statutory provisions themselves rather than on the judicial gloss thereon, and the relationship between the indivisible copyright theory and the subject matter of the other Copyright Revision studies would have been more clearly highlighted. The study might also have discussed more fully the increasing recognition by the courts of the equitable interests of the exclusive licensee of rights of authorship and the power of a publisher under a partial grant of rights from the author (if such grant is construed as comprehending the right, express or implied, to secure statutory copyright in such publisher's name) to secure statutory copyright in its name for itself and in trust for the author. In the latter case, of course, the publisher would, upon publication, become the copyright properietor, either on the theory that such partial grant was an assignment (which is inconsistent with the "partial-reservation-of-rights-by-the-proprietor" test but consistent with the notion that only the copyright proprietor may secure statutory copyright) or on the less orthodox theory that such grant was a license but such a licensee can secure copyright in trust for another. With reference to page 20 of the study, where Kami criticizes my attempt to distinguish the Eliot and Witwer cases, I do not agree that in each case "the rights returned were the same" (which begs the question and is contrary to what the courts held), and that "the attempted distinction would make everything depend upon the use of a word of art rather than the intent of the parties" (which ignores the fact that the only clue to the intent of the parties is the language used by the grantor). The question in each case was whether the partial grant transferred the copyright; in the Eliot case the "copyright" was not expressly granted (and other language in the instrument suggested that it was reserved); in the Witwer case, the "copyright" was expressly granted. When the issue is whether or not the technical "copyright" (which may be no more than a bare legal title) is transferred or reserved in a partial grant, the grantor's use or nonuse of the word "copyright" ought, in the absence of any manifestation of an intention to the contrary, to be controlling on the issue. Neither Fitch v. Young (study, p. 14) (with its incomplete characterization of the grant and confusion between "playright" and "copyright") nor Phillip v. Jerome H. Remick & Co. (study, p. 20) (where the phrase "to copyright" was used with respect to an already copyrighted work) constitutes authority to the contrary. The study (p. 21) also suggests merit in the reconveyance practice of some magazine publishers of transferring all rights to the author and by companion document receiving back a license from the author of the rights which the publisher is to retain. One instrument containing both assignment and license would seem just as adequate. Furthermore, a properly drafted assignment reserving some rights (with proper words of art and other manifestations of intention to transfer the copyright spelled out in the instrument) should be no less effective. As stated in the Witwer case: ***** Had Street & Smith, Inc. [magazine publisher] conveyed without reservation, and then had Witwer [author] assigned [sic] to it the right of magazine publication, we would have a situation exactly as the parties intended by this instrument and entirely free of the objection urged by defendants. Why, then, should a similar situation not arise when the result is accomplished by the execution of one instrument instead of two?" With respect to the summary of issues posed by the study (pp. 28, 29), I would answer as follows: 1. Right to sue (a) The revised Copyright Act ought to deal with the substantive law of copyright and leave procedural implementation to the Federal Rules of Civil Procedure [perhaps a study by an expert in both copyright law and Federal practice could explore this subject]. The Copyright Act should merely state that the remedies under the Act are available to any person aggrieved by the infringement. (b) See 1(a), supra. (a) Perhaps yes for all grants; perhaps no (awaiting study on recordation). (b) See 3(a), supra. (c) If yes, then for any paper relating to copyright. (d) Constructive notice, assuming proper indexing. Since such a system could result in harm to subsequent innocent grantees (assignees, mortgagees, exclusive licensees, nonexclusive licensees) by either their not enjoying the contemplated benefits under the grant or mortgage or their committing innocent infringement, provisions could be worked out for their protection (e.g., limiting remedies available to unrecorded grantees for innocent infringement by subsequent grantees). 4. Divisibility (a) Whether or not indivisibility ought to be retained, and if so, to what extent, obviously will depend upon the copyright system as established by the revised Act. In any event, there would be no need for a specific clause one way or the other. If complete divisibility is desired, the revised Act should contain no references to "the copyright proprietor," "assignments," etc., and appropriate language would have to be devised in substitution. Any specification in the revised Act as to who is the "initial copyright owner" (see study, p. 28) would only serve to perpetuate the present problems. It would seem preferable to let all authorial rights stem from authorship (subject to applicable agency rules) and be capable of grant and ownership according to the terms of grant or agreement. (b) See 4(a), 1, 2, 3, supra. (c) No. Attempts to restrict the division of rights might only serve to fragmentize the present problem into multiple problems. Such matters should be left to trade practices. (d) No. See 4(c), supra. 5. Notice (a) Whether a copyright notice is required or optional, the elements of the notice might be the symbol or word "Copyright" alone. Thus, any name could accompany the notice. Any one dealing in good faith with the person named in the notice might be allowed to rely on such appearance of ownership to some extent (subject to recordation provisions), and the person named in the notice might be regarded as trustee of the rights of copyright. (b) No. (c) Assuming that the individual contribution to a periodical is not separately copyrighted by the author, the publisher's composite general copyright should cover all copyrightable or copyrighted component parts, and the respective rights of author and publisher in the author's contribution should depend on the agreement between them. Divisibility of Copyright.-The practical and commercial fact of divisibility of copyright should be recognized in any future legislation. Individual authors have made great economic gains by being able to dispose of limited rights to their works. Failure to provide in the law for divisibility could conceivably result in curtailment of this practice. The degree of divisibility should be left up to contracting parties. If the bundle of rights were divided into precise straws, there would be created a great problem of formality and nomenclature. There would also be imposed a limitation on future development of new uses for copyrighted material, as the law would have to be changed to allow for divestiture of newly classified rights. We believe that the assignee of any part of a copyright should have standing to sue without joinder of the copyright proprietor, but we are reluctant to recommend a requirement of recording all such interests because of the monumental clerical task which would thereby be imposed on the Copyright Office. The theory that copyright can be obtained only by the proprietor of all rights in a work should be perpetuated. This would be particularly important if divisibility of copyright is to be continued. It provides a convenient starting point for the start of the copyright term and is a control that would be important in tracing ownership of rights under a copyright. ROBERT GIBBON. |