related to copyright formalities such as registration or notice of copyright?

Some of these questions have been answered in provisions in foreign laws and in previous proposals for domestic legislative revision. These will be considered, along with relevant interpretations of the present provision and its counterpart in the patent and trademark statutes, insofar as they cast light on the appropriate structure of the recording provisions in a new law.

II. SCOPE OF RECORDATION

A. PARTIAL TRANSFERS

Section 30 speaks only of the recordation of "assignments." Under the judicial theory of indivisible copyright, partial transfers of rights, that is, transfers of some but less than all of the rights comprised in a copyright, have usually been considered "exclusive licenses" rather than 'assignments.' "The distinction is apparently based on whether, by reason of the nature or extent of the rights granted or the intention of the parties, a transfer of proprietorship in the entire copyright, or merely a contract licensing certain rights, was effected. Acceptance of this distinction would lead to the conclusion that licenses, exclusive as well as nonexclusive, are not within the sweep of the language in section 30. On this assumption, an assignee or subsequent licensee would presumably take subject to any outstanding licenses, exclusive or not, recorded or not.

A contrary result is suggested in a 1916 opinion by Judge Learned Hand. In Photo-Drama Motion Picture Co. v. Social Uplift Film Corp., the author of a novel had granted exclusive dramatic rights to D, who failed to record this grant. The author later purported to grant motion picture rights to M by a document which was then recorded. Judge Hand deemed the first grant an assignment rather than a license; but he also stated that, even if it had been a license, recordation would have been necessary to perfect D's rights. This result was based on the conclusion that

it would be absurd to protect a subsequent purchaser against a prior unrecorded assignee and leave him open to prior unrecorded licenses which should defeat him.10

11

Whether intentionally or inadvertently, the Photo-Drama case ignored the traditional distinction between copyright assignments and licenses. In the patent field, the cases have drawn a clear line between assignments of a patent and exclusive or nonexclusive licenses under the patent; " it has long been held that a patent license need not be recorded.12 In the field of copyrights, it is generally agreed that there is no requirement for recordation of nonexclusive licenses, but the necessity for recording exclusive licenses is still open to some question. In adopting the principle of divisibility of copyright, the previous bills to revise the 1909 statute have uniformly attempted to remove

Kaminstein, Divisibility of Copyright [Study No. 11 in the present series of Committee Prints].

See, e.g., Henn, Magazine Rights-A Division of Indivisible Copyright, 40 CORN. L. Q. 411, 434, n. 99 1955).

213 Fed. 374 (S.D.N.Y. 1913), aff'd, 220 Fed. 448 (2d Cir. 1915).

10 213 Fed. 377. Cf. Brady v. Reliance Motion Picture Corp., 229 Fed. 137 (2d Cir. 1916). See Macloon v. Vitagraph, Inc. 30 F. 2d 634, 635 (2d Cir. 1929).

11 See Waterman v. Mackenzie, 138 U.S. 252 (1891).

11 E.g., Farrington v. Gregory, 8 Fed. Cas. 1088, Case No. 4688 (C.C.E.D. Mich. 1870). See WALKER ON PATENTS 381 (Deller's Ed. 1937). Cf. 35 U.S.O. § 261 (1952).

the ambiguity of section 30 which survived the Photo-Drama case. For example, the 1924 Dallinger bills provided for the recordation of— *** any assignment of copyright either in whole or in part, or any license or mortgage or other disposition of any copyright or interest therein.13

66***

Since indivisibility is a theory unique in American copyright law, distinctions between assignments and exclusive licenses have apparently not created problems in the administration of foreign recordation laws. Thus, the Canadian law covers any grant of an interest in a copyright, either by assignment or license." 14 And "alterations and assignments" of copyright, "whether total or partial" are subject to recording in several Latin-American countries.

15

As a matter of practice, the Copyright Office accepts for recordation any transfers of rights or grants of licenses. Such latitude would not seem capable of expanding the effect of the statutory provision, since recordation of an instrument not entitled to recordation cannot effect constructive notice of the instrument.18 Yet, the administrative practice of the Copyright Office has been relied on in judicial utterances in other contexts. For example, in Witwer v. Harold Lloyd Corp. the court stated:

17

While the circumstance is not controlling, it may be noted that the instrument apparently is deemed sufficient as an assignment by the Copyright Office, as it was regularly registered therein as an assignment.18

And Mr. Justice Frankfurter, dissenting in Commissioner v. Wodehouse,19 observed that—

*** the Copyright Office will record these partial assignments, thus protecting the transferee and increasing the marketability of the separate rights.20

The recordability of exclusive licenses is a facet of divisibility."1 If the new law makes it clear that copyright is divisible, the distinction between assignments and exclusive licenses would disappear at least as far as recordation is concerned. Even if the theoretical distinction were retained, the policy in favor of providing a record of interests in a copyright would still appear to make the recordation of exclusive licenses desirable. Arguments emphasizing the commercial necessity of including such licenses in the Copyright Office records have often been made," and counterarguments have apparently never been offered.

Mandatory recording of nonexclusive licenses might be less appropriate. Thus, the broadcasters have argued that not every permission to use a work could be in writing, much less recorded; to require recordation of all licenses from performing rights societies "would block normal dealing in nonexclusive rights." 23

A further question arises if the present distinctions between assignments and exclusive licenses are maintained. Should an exclusive

13 Section 47(a), H.R. 8177 and II.R. 9137, 68th Cong., 1st Sess. (1924). Cf. Section 17, Perkins bill, H.R. 11258, 68th Cong., 2d Sess. (1925); Section 7, Sirovich bill, H.R. 10364, 72d Cong., 1st Sess. (1932). 14 CAN. REV. STAT. c. 55, Sec. 40 (1952).

18 Argentina, Law of Sent. 28, 1933, Art. 53; Colombia, Law of Dec. 26, 1946, Art. 52.

16 WEIL, AMERICAN COPYRIGHT LAW, 563 (1917).

17 46 F. 2d 792 (S.D. Cal. 1930), rev'd on other grounds, 65 F. 2d 1, cert. denied, 296 U.S. 669 (1933). 18 46 F. 2d 795.

19 337 U.S. 369 (1949).

20 Id. at 401.

21 See Kaminstein, op. cit. note 7 supra at 16.

"E.g., Statement of John Schulman, Hearings Before House Committee on Patents, 72d Cong., 1st Sess.3 5 (1932); Statement of Rep. Dies, id. at 105; Statement of Sidney Struble, March 28, 1939, 2 Shotwell Papers

169.

" Memorandum, April 5, 1939, 2 Shotwell Papers 218.

license taken in good faith be defeated by an earlier unrecorded assignment, or should the subsequent licensee enjoy the same immunity as a subsequent assignee? The present law affords no answer; foreign provisions and prior domestic proposals generally equate an exclusive license with assignments for all purposes. Again, it seems difficult to justify treating a subsequent licensee nonexclusive as well as exclusive differently from a subsequent assignee in this situation.

B. MORTGAGES

Section 28 24 provides that statutory copyright may be mortgaged by a written, signed instrument. It may be noted that this section does not give the Federal courts jurisdiction to foreclose a mortgage of copyright 25 and State law may determine whether a copyright has been mortgaged."

While the concept of indivisibility may exclude licenses from the scope of the term "assignment," it seems clear that the same is not true of mortgages. One copyright case suggests that mortgages are to be treated as "assignments," 27 and this view is supported both by the interpretation of a similar provision in the patent law 28 and by the structure of section 30 itself.29 There would appear to be little reason to distinguish mortgages from absolute transfers for purposes of recordation.

C. OTHER DOCUMENTS

The pertinent regulation of the Copyright Office 30 indicates a practice of recording, in addition to assignments, "other papers relative to copyrights," including, as examples, "powers of attorney, licenses to use a copyrighted work, agreements between authors and publishers covering a particular work or works and the rights thereto, mortgages, certificates of change of corporate title, wills, and decrees of distribution." In view of the language of section 30, this type of recording would appear to be permissive rather than mandatory. Recordation of a document of this type would probably not constitute constructive notice, and no penalties would be attached to a failure to record.

Permissive recordation of papers other than assignments, exclusive licenses, and mortgages appears to be a convenient and appropriate device for conveying important information; and although the practice of recording miscellaneous documents may add somewhat to the administrative burdens of the Copyright Office, it avoids the necessity for the Office to construe the legal effect of particular instruments and to judge between recordable and unrecordable ones. The difficulties of indexing and searching created by the recordation of these miscellaneous documents seems clearly to be outweighed by the advantages of having them on public record.

2 17 U.S.C. § 28 (1952).

25 Republic Pictures Corp. v. Security-First National Bank, 197 F. 2d 767 (9th Cir. 1952). Independent Film Distributors, Ltd. v. Chesapeake Industries, Inc., 250 F.2d 951 (1958). "In re Leslie-Judge Company, 272 Fed. 886 (2d Cir. 1921).

28 Waterman v. Mackenzie, 138 U.S. 252 (1891).

See Kaplan, Literary and Artistic Property (Including Copyright) As-Security: Problems Facing the Lender,

19 LAW & CONTEMP. PROB. 254, 257, n. 12 (1954).

» Regulations of the Copyright Office, 37 C.F.R. §201.4 (1956).

III. REQUIREMENTS FOR EFFECTIVE RECORDATION

A. IN GENERAL

Section 28 of the copyright statute provides that

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 a will.31 It will be noted that this section accomplishes three things:

First, it recognizes that statutory copyright is transferrable, absolutely and by mortgage.32 It thus reinforces section 27,33 which speaks of the "transfer of copyright," as a transaction to be distinguished from a conveyance of the material object embodying the copyrighted work.

Second, it conditions transfer on the use of a written instrument, signed by the copyright owner. Such a requirement is not imposed on the transfer of common law literary property, which may be assigned by parol.35

Third, it specifies that a copyright may be bequeathed.

Section 28 specifies-both directly and by implication-the formalities necessary for effecting a transfer of copyright as between the immediate parties; 36 these, of course, affect recordability. The section lays down two explicit requirements for assignments of copyright: they must be in writing, and they must be signed by the proprietor of copyright. In addition, there are probably several implicit requirements arising from the nature of an assignment as a legal instrument: these include identification of the subject matter of the transfer (at least in general terms), identification of the transferee, and words suggesting a present intention to convey ownership. A requirement that the document recorded be an original or true copy of the instrument of transfer, and that it be complete by its own terms, may also be inferred.

Several of the earlier revision bills contained express statements of formal requirements for recordation.37 Section 7 of the first Sirovich bill,38 required that either the original or a sworn copy of an instrument be presented for recordation. A similar proposal in one of the earlier drafts of the 1909 act 39 to permit the presentation of a sworn copy was criticized in the hearings as possibly opening the door to fraud.40 Neither this proposal, nor the approach of the patent law requiring recordation of the original, was adopted, and the present law contains no explicit provision. Thus, while the Copyright Office generally seeks to obtain the original document for purposes of recor

31 17 U.S.C. § 28 (1952).

22 See H.R. REP. NO. 2222, 60th Cong., 2d Sess. 19 (1909). 33 17 U.S.C. § 27 (1952). This section provides:

"The copyright is distinct from the property in the material object copyrighted, and the sale or conveyance, by gift or otherwise, of the material object shall not of itself constitute a transfer of the copyright, nor shall the assignment of the copyright constitute a transfer of the title to the material object; but nothing in this title shall be deemed to forbid, prevent, or restrict the transfer of any copy of a copyrighted work the possession of which has been lawfully obtained."

The distinction made in this section has long been emphasized judicially. See, e.g., Stevens v. Cady (55 U.S. 528 (1852)).

34 Davenport Quigley Expedition Inc. v. Century Productions Inc., 18 F. Supp. 974 (S.D.N.Y. 1937). 35 See Callaghan v. Meyers, 128 U.S. 617, 658 (1888).

38 See Public Ledger Co. v. Post Printing and Publishing Co., 294 Fed. 430, 433 (8th Cir. 1923).

37 For example, Section 48 of the Dallinger bills provided that "no such paper shall be recorded or registered unless it is executed."

35 H.R. 10364, 72nd Cong., 1st Sess. (1932).

Section 43, H.R. 19853, 59th Cong., 1st Sess. (1906).

40 Arguments Before the Committees on Patents of the Senate and House of Representatives, Conjointly on the Bills S. 6330 and H.R. 19853, 59th Cong., 1st Sess. 181 (June 1906).

dation, a photostat or other copy may be recorded where the original is said to be unavailable.11

A new law might well specify some or all of the rudimentary formalities discussed above. Thus, the requirements of a writing, due execution by the owner, and the submission of reliable documents would seem to be fundamental conditions of an effective recording system and yet not an undue burden on the person seeking recordation. Other requirements which would enhance the informative value of a document might include clear identification of the work or works involved, the transferee, and the nature and extent of the rights assigned. Such requirements might be imposed upon the recordability of documents without affecting their efficacy to transfer title as between the immediate parties or as against infringers.

It is natural to assume that any formal requirements the law establishes for assignments would be enforced by refusal of the Copyright Office to record documents not meeting these requirements. This is not the only possible approach however. For example, rather than making incomplete instruments unrecordable, section 16 of the Thomas bill, denied such instruments effect as "constructive notice"; under this system recordation could still lead to actual notice.

The burden of error in indexing or filing within the Copyright Office must also be considered in this connection. The Thomas bill sought to require the instrument to give sufficient information to permit full indexing, but apparently placed the burden of inadequate or erroneous indexing on the subsequent purchaser or user: submission of the earlier transfer for recordation in proper form was sufficient to achieve constructive notice. The burden of discovering the assignment may sometimes be a heavy one; the document may occasionally be indexed or recorded incorrectly. More often, however, the terms of the document itself may be so vague, general, or inaccurate that clear indexing is impossible. Section 31 of the present law 3 imposes the duty to record on the Register of Copyrights, but is silent as to the effect of an error in recording or filing. Perhaps clarification of this question by definition of the term "recorded" or by a "constructive notice" provision is warranted.

43

B. ACKNOWLEDGMENT OF ASSIGNMENTS EXECUTED ABROAD

Section 29 provides:

Every assignment of copyright executed in a foreign country shall be acknowledged by the assignor before a consular officer or secretary of legation of the United States authorized by law to administer oaths or perform notarial acts. The certificate of such act under the hand and official seal of such consular officer or secretary of legation shall be prima facie evidence of the execution of the instrument."

45

Unlike the provisions of section 28, discussed above, which go to the basic validity of an assignment, the provisions of section 29 have been considered "at most only a matter of form going to the proof" of due execution of the document such execution being provable by other means.46 Thus, while compliance with the provisions of section 29

41 Copyright Office Circular No. 10 (1956).

42 S. 3043, 76th Cong. 3d Sess. (1940). See note 5 supra.

43 17 U.S.C. § 31 (1952).

44 17 U.S.C. § 29 (1952).

45 See p. 116, supra.

See Houghton Mifflin Co. v. Stackpole Sons, Inc. 104 F. 2d 306 (2d Cir. 1939); LADAS, THE INTERNATIONAL PROTECTION OF LITERARY AND ARTISTIC PROPERTY 801 (1938).

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