It would be desirable to expand our registration system, so that absolute assignments, mortgages, satisfaction and cancellation thereof, exclusive licenses and powers of attorney should be required to be recorded, while nonexclusive licenses and instruments dealing with copyrights obtained pursuant to the provisions of the Universal Copyright Convention could be recorded, if desired. As the purpose of recording is to constitute constructive notice of the contents of the instruments, in view of the long established practice of the Copyright Office to also record instruments other than assignments, clearly defined statutory provisions should be enacted to codify this practice and accomplish the basic purpose. Instead of being required to file lengthy documents containing terms which the parties may feel should not be made public, the parties should have the option of filing an executed short form instrument, which would include the names of the assignor, grantor, or licensor, the assignee, grantee, or licensee, the title and author of the work involved, as well as identifying copyright data, such as copyright date and entry number, and a brief statement of the nature of the instrument, such as absolute assignment of copyright, exclusive grant of motion picture rights, performing rights, etc. Reference might be made to the parties, date, and substance of the original lengthy agreement. All instruments to be recorded should contain a form of acknowledgment by a notary, commissioner of deeds, or other officer having the authority to administer an oath, similar to the usual provisions with respect to the recordation of instruments affecting the title of real property. Very truly yours, This concise and useful study by Alan Latman, with the assistance of Lorna G. Margolis and Marcia Kaplan, discusses the present law on the recording of transfers, and points up significant questions which must be considered with respect to revision of the law. I appreciate that it supplements that part of Professor Kaplan's study on "The Registration of Copyright" which gave an historical review and discussed to some extent the related system of recording transfers of copyright. Referring to the recapitulation of basic issues at the end of the study, my present thoughts are: A. A system for the recordation of transfers of copyright should be maintained in a revised law. B. I feel it would serve a most useful purpose to have a central repository, such as the Copyright Office in Washington, D.C., for recordation of documents pertaining to copyrights or rights thereunder. I would include all forms of grant of any right or rights secured to the author or other owner under the Act, as well as any chose in action for infringement thereof, to the extent of the interest of such author or other owner. As to the word "grant", I would utilize something along the lines of Section 13 of the so-called Shotwell Bill introduced by Senator Thomas on January 8, 1940 (S. 3043, 76th Cong., 3d Sess.), to indicate its scope, how the same may be validly accomplished, and the legal effect thereof. Subsection (1)(a) of such Section, for example, refers to "grants" of any right or rights secured to the author or other owner under the Act, or any chose in action for infringement thereof, to the extent of the interest of such author or other owner, "by way of assignment, conveyance, transfer, license, mortgage, pledge, or other alienation or disposition thereof, either wholly or partially; and any such grant may be general, restricted, assignable, nonassignable, exclusive, nonexclusive, limited in time, or for a specified place or territory, for one or more works;". I would also include among "grants" the instruments by which any right or rights or any chose in action for infringement thereof, to the extent of the interest of the author or other owner, devolves or is to be administered, upon the death or incompetence of the owner thereof. I think we might also give consideration to provisions: along the lines of subsection (2) of said Section 13 of the Shotwell Bill, to the effect that no such grant, or agreement to grant, shall be valid unless it or a note or memorandum thereof is in writing signed by the author or other owner of the right in respect of which the grant or agreement is made, or by a duly authorized agent of such author or other owner (subject to the proviso therein in respect of certain types of infringement by radio or television broadcasting); and along the lines of subsection (3) of Section 13 in respect of the copyright in any work, or any right or interest in such copyright, when it is part of the property of a debtor in reorganization, receivership, or insolvency proceeding, or of a bankrupt. C. I would provide, as in subsection (3) of Section 16 of the Shotwell Bill, that no recordation of any grant of copyright or of any right or interest therein shall be required, but any person may submit for recordation, and the Register of Copyrights shall record, any such grant or other instrument submitted, which contains the matter provided in subsections (1) and (2) of Section 16. I would further provide, as in subsection (4) of Section 16, that for the purposes of the Act, a recordation shall be deemed to put all persons upon notice of the grant or other written instrument so recorded to the extent of the statements therein contained, provided that such grant or other written instrument contains sufficient statement therein for the purpose of indexing, so that if fully indexed by the Register of Copyrights, the recordation of such grant or other written instrument would be revealed upon reasonable search of the indexes and records of the Copyright Office. I would then provide, as in said subsection (4), that a grantee, for a valuable consideration, who records a grant or other written instrument in good faith, and without notice of a prior conflicting grant, shall prevail from and after the date of recordation thereof over the grantee in any such prior conflicting grant, regardless of priority as to the date of execution of said grants. Accordingly, in answer to the basic issue posed by "C", a subsequent exclusive licensee as well as a subsequent nonexclusive licensee would be entitled, as much as a subsequent bona fide assignee, to rely upon the absence of any record of a prior conflicting grant. Since no one is obligated to record his grant, the likelihood is that many grantees of exclusive licenses, particularly in the field of performing rights where the exclusivity may be a matter of days within a very restricted area (such as, for example, in the case of the so-called "clearance" or exclusivity of motion picture exhibition rights given to one theatre licensee over one or more theatres in the competing exhibition area for a specified number of days), the exclusive licensee may not feel it practical to record his grant of such an exclusive short-term license. The licensee will in all likelihood depend upon the licensor not to breach his contract of exclusivity by a conflicting grant of license to another exhibitor. No one records such licenses under the present law. However, if any such exclusive grantee desired to record his exclusive license, under the above proposal, he could do so, although as a practical matter he probably would not bother. The provisions of subsections (1) and (2) of said Section 16 of the Shotwell Bill, above referred to, provided that the Register of Copyrights, upon receipt of the fee, shall record in the Copyright Office any written grant of copyright, or of any right or rights therein, and any other written instrument signed by the grantor, or by the duly authorized agent of the grantor, and shall return such grant or instrument to the person submitting the same, with a certificate of recordation attached under the seal of the Copyright Office. Said subsection (2) provided that the grant or other instrument was to contain the names of the author or grantor, and the grantee, a statement whether it includes any rights in works thereafter to be created or owned by the author or grantor, the nature of the grant, the date of beginning and duration of such grant, and when the grant itself specifically enumerates individual works, a description of the work or works included in such grant, such as the title or titles and the nature thereof, and when the grant includes specific rights in any or all works of a particular author or owner, such fact shall be stated in such instrument. It also provided for the appropriate officers before whom such grant or other instrument might be executed in a foreign country, and for the certificate of such officer before whom executed under seal to be prima facie evidence of the execution of such grant or other instrument. The provisions for the "other instrument" above mentioned would permit a short form instrument containing the essential features of the grant necessary for record, and to serve as notice when indexed, to be utilized as a substitute for a long and involved original agreement containing, among other matters, a grant. Subsection (5) of said Section 16 of the Shotwell Bill usefully further provides that the certificate of recordation issued by the Register, or a certified copy thereof, shall be admitted in any court as prima facie evidence that such grant or other instrument has been recorded on the date specified therein. D. With regard to the basic issues posed by "D", I would (1) Not eliminate the requirement that the second grantee must himself record in order to prevail against a prior unrecorded grant. (2) Not eliminate the requirement that the second grantee be free from actual notice. I would not leave priority in recording as the basic criterion if the second grantee had actual notice of the prior unrecorded grant. The foregoing could be effected as in subsection (4) of Section 16 of the Shotwell Bill by providing that: "A grantee, for a valuable consideration who records a grant or other written instrument in good faith and without notice of a prior conflicting grant, shall prevail from and after the date of the recordation thereof over the grantee in any such prior conflicting grant regardless of priority as to the date of execution of such grants. E. I would not be inclined to retain the initial 3- and 6-month period, or some other period of grace. F. I do not think that recordation of transfers shall be used as a supplement to or substitute for the present formalities of notice and registration. I think these formalities should become permissive rather than mandatory. I would think that registration of copyright by an owner other than the author, particularly if statutory copyright is to comprehend works in their unpublished as well as published stages should require a recordation of the rights under which the owner seeking to register the copyright claims his right of ownership, such recordation to be held before or at the time such application for registration is made. As to the question of whether registration be required as a prerequisite to recording transfers of interests in the copyright, I would be inclined to look sympathetically upon such a requirement if it can be practically framed. Requiring exclusive licensees of small rights, if they should desire to record their grants, to effect a registration of the copyright may be too burdensome or impracticable, although if a major part of the copyright is involved in the recorded transfer, it would be useful to have a registration. G. (1) Recordability, as well as the constructive notice thereby afforded should not necessarily be conditioned upon compliance with such formal requisites as a signed original or a certified copy of the grant. As indicated in my discussion of "B" above, I would be inclined to follow the lines of Sections 13 and 16 of the Shotwell Bill under which the original grant itself, or other short-form instrument thereof, signed by the grantor, or by the duly authorized agent of the grantor, may be recorded, with the Copyright Office returning such grant or other instrument to the person submitting the same, with a certificate of recordation attached under the seal of the Copyright Office. Such other instrument, for example, might well be a note or memorandum in writing, signed by the author or other owner of the right in respect of which the grant, or agreement to grant, is made, or by a duly authorized agent of such author or other owner, where the original grant itself may have been oral. This provision of Section 13(2) of the Shotwell Bill in effect applies the statute of frauds rule to grants of copyright or rights or interests thereunder; and the instrument to be signed by the grantor, or his duly authorized agent, for recordation purposes, may be a short-form grant, in lieu of recording the main agreement containing the grant. (2) In any event, the grant or other instrument so recorded should be conditioned upon specification of (a) the author or grantor, and the grantee; (b) the subject matter of the grant; and (c) the nature of the rights granted. H. The statute should be clarified as to the discretion of the Register of Copyrights in recording or refusing to record documents. Sincerely yours, EDWARD A. SARGOY. 86th OF MICHIGAN COMMITTEE PRINT 2d Session 59536 COMMITTEE ON THE JUDICIARY PURSUANT TO S. Res. 240 STUDIES 20-21 20. Deposit of Copyrighted Works Printed for the use of the Committee on the Judiciary UNITED STATES GOVERNMENT PRINTING OFFICE WASHINGTON: 1960 |