COMMENTS AND VIEWS SUBMITTED TO THE COPYRIGHT OFFICE ON THE RECORDATION OF COPYRIGHT ASSIGNMENTS AND LICENSES

By Walter J. Derenberg

SEPTEMBER 30, 1958.

I have read with much interest the study on Recordation of Copyright Assignments and Licenses. It is, of course, difficult to take a position with regard to the problem of recordation without simultaneous consideration of the problem of registration of copyright as a whole, which is dealt with in Professor Kaplan's study.

In considering the recordation problem with regard to assignments and licenses separately, I do have the following comments: It has always been my view that Section 32 of the present Copyright Act of 1909 is an anachronism and should be eliminated altogether. As you know, this Section has been construed so as to invalidate the copyright where the assignee substitutes his name before the recordation of the assignment. We have here one of those numerous pitfalls whereby an author's validly copyrighted work would fall into the public domain because of a technicality which is easily overlooked and for which no rational basis can be found.

In addition to eliminating Section 32, I would also favor the elimination of the mandatory time limit presently provided in Section 30 of the Act. In my opinion, the treatment of this matter in the Patent Code, to which Mr. Latman's study refers in footnote 62, is much preferable. Moreover, the effect of the present Section on the status of the second assignee is quite ambiguous, as is ably pointed out on pages 120 and 121 of the study.

On the overall question whether a system of recordation should be ret. ined, I would be inclined to answer this question in the affirmative to the extent that, similar to the present practice in the Patent Office, recordation of assignments and exclusive licenses should be made available for the protection of those who seek to rely on the records of the Office in connection with such transactions, or the absence thereof. I would see no objection to permitting also the mere recordation of nonexclusive licenses.

I would favor the elimination of unnecessary formalities, such as may be found in the present Section 29 with regard to assignments executed abroad. If, on the other hand, it is deemed important to retain that part of Section 29 which provides for a prima facie evidence of execution of the instrument, then I would agree with Mr. Latman's suggestion that similar procedural advantages should be available with regard to domestic assignments and licenses. Moreover, the procedure presently incorporated in Section 29 might well be simplified by adopting the proposal made in Section 11 of the Vestal bill, referred to at page 118 of the study, and presently in effect in patent and trademark cases. Recent experience in dealing with foreign patent and trademark matters would seem to indicate that even the more liberal provisions now in effect with regard to assigning and licensing of these properties are somewhat cumbersome and might well lend themselves to further simplification.

WALTER J. DERENBERG.

THE RECORDATION OF COPYRIGHT ASSIGNMENTS AND LICENSES

Here, again, our concern (as a magazine publisher) is to protect and enhance the right of our writers. Recordation of partial assignments, licenses, etc., would probably create a tremendous problem for the Copyright Office. The person who would gain substantially from a change in the law requiring this recordation would be the second assignee of an exclusive interest. We are not persuaded that there exists a sufficient problem of this nature to justify the procedures which would be required.

By Ralph S. Brown

ROBERT GIBBON.

NOVEMBER 12, 1958.

It seems to me that the requirement of registration of the work as a starting point for recordation of transfers of any interests in the work is an effective way to encourage registration for its own sake and to strengthen the recordation system. One need not go so far as to compel registration by the original author if he is unavailable or uncooperative at the time when an attempted recordation of a transfer creates a need for registration. Ordinarily, however, it would appear to be to the author's advantage to see to it that his own first transfer of any substantial interest was properly connected to registration of the work.

Unlike the differences of opinion with respect to registration, there seems to be little if any opposition to the existence of the system of recordation. It does appear from the Latman study, however, that the present statute could be improved. Certainly mortgages and exclusive licenses should be put on a parity with assignments. I do not have any grasp of the problems involved with respect to "other documents" (such as wills), and I do not see that it makes any great difference whether nonexclusive licenses are recorded; but there certainly seems to be no harm in admitting them to recordation, simply for the sake of completing the record. It seems plausible to say that anyone who has attempted to rely on the state of the record should be able to claim against an exclusive transferee who has failed to record. This proposition would permit a subsequent nonexclusive licensee to prevail, but there would still be no compelling reason why he himself should record. I suppose it is true that outstanding nonexclusive licenses considerably diminish the value of a purported transfer of exclusive rights. From that standpoint, recordation of nonexclusive licensees would be helpful. But this advantage appears to be wholly overbalanced by the impracticality of expecting the multitudes of nonexclusive licensees, especially in the music field, to bring their numberless transactions into the recordation system.

It appears that the statute could also be improved in some other respects, for example, by shortening the initial period of grace. One month would seem to be ample under present conditions of communication.

RALPH S. BROWN.

By Samuel W. Tannenbaum

NOVEMBER 19, 1958.

The Copyright Office study, "The Recordation of Copyright Assignments and Licenses," by Alan Latman, is an intelligent and detailed survey of the problems of recordation, particularly under our system of copyrights.

Perhaps the most significant feature of the provisions for recordation under the present Copyright Act (Sec. 30) is the limitation of compulsory registration to assignments of copyright. Such limitation is unrealistic and anachronistic in view of the great number of licenses and grants under copyright, mortgages, powers of attorneys and divers miscellaneous instruments currently recorded, even though the above section merely provides for the recording of assignments. At the time of the enactment of the 1909 Copyright Act, some doubt was expressed in the Congressional Report (No. 2222), "as to the right to convey a copyright in mortgage; nor did the report give consideration to instruments other than assignments.