cated to the public by a failure to comply with the statutory requirements for securing and preserving copyright, as by a failure to inscribe the required notice; there have been many such cases.2 IX. TRANSFERS, LICENSES, AND CONTRACTS [§ 245] A. In General. The transfer of copyright may be effected either by operation of law or by voluntary assignment.* Contracts for the sale of copyrighted articles are governed by the ordinary rules of contracts generally.5 [246] B. Assignment of Copyright®-1. In General. Copyrights are property and as such may be assigned by the owner, by express provisions of the copyright statute; and it may as well be to one not entitled himself to the benefit of the statutes as to one within their purview, such as a nonresident foreigner who is a citizen or subject of a foreign state or nation with which reciprocal copyright relations have not been established.10 Such an assign counsel. Does he lose his right because he does not republish in one, two, three, or ten years? When does it cease? I have not got a satisfactory answer to that question. There was beyond all question a right in the proprietor of that work, a right of property which commenced in 1854, and ordinarily would last till 1896. When did it cease? I am unable to come to the conclusion that there is any particular period at which a man who is entitled to a copyright loses his right. The copies may have been all sold, but he may exercise the right he has of republishing at such periods as he thinks likely to answer his purpose and when he would find purchasers. Therefore it seems to me there was a continuing copyright in Mr. Darton, who was the proprietor before he assigned to Mr. Weldon, and when Mr. Weldon took the assignment in 1876 from Mr. Darton, he acquired a good title to the copyright in this work, and had a right to exercise his judgment as to when and how he would republish it and in what form." Weldon v. Dicks, 10 Ch. D. 247, 261. 2. See supra §§ 167-234. Failure to publish see supra § 209. 3. Common-law rights see supra §§ 33-39. 4. See infra §§ 246-255. 5. See Contracts ante p 214 et seq; Sales [35 Cyo 1]. [a] Action for price of infringing books. A purchaser of books who has not been disturbed in his possession cannot defeat an action for the purchase price on the ground that the books infringed a copyright owned by another. Edward Thompson Co. v. Pakulski, 220 Mass. 96, 107 NE 412. 6. Of plate or picture apart from the copyright see supra § 67. v. 7. Stephens v. Cady, 14 How. (U. S.) 528, 14 L. ed. 528; Carter Bailey, 64 Me. 458, 18 AmR 273. 8. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 42); U. S. Rev. St. § 4955. 9. See cases infra note 10. 10. Black v. Henry G. Allen Co., 42 Fed. 618, 9 LRA 433, 56 Fed. 764; Carte v. Evans, 27 Fed. 861; Boucicault v. Fox, 3 F. Cas. No. 1,691, 5 Blatchf. 87. 11. Carte v. Evans, 27 Fed. 861. 12. Pulte v. Derby, 20 F. Cas. No. 11.465, 5 McLean 328; Carter V. Bailey, 64 Me. 458, 463, 18 AmR 273; Gould v. Banks, 8 Wend. (N. Y.) 562, 24 AmD 90; Stevens v. Benning, 6 De G. M. & G. 223, 55 EngCh 175, 43 Reprint 1218. "The assignment is not limited to one, but may be to more than onenor to the whole interest, but any owner may sell and assign any aliquot part of his undivided interest. When the asignment is made to more than one, the ownership is not ment is not bad as an attempted evasion of the copyright laws.11 Where an assignment is made to more than one they hold as owners in common and not as partners.12 The sale or conveyance, by gift or otherwise, of the material object does not of itself constitute a transfer of the copyright.13 assignment within the meaning of the statute is a transfer of the incorporeal right conferred by the statute. The copyright and the subject of copyright may be separately sold and assigned.15 17 13 An [247] 2. Partial or Limited Assignments. It seems that a copyright is an indivisible thing and cannot be split up and partially assigned,16 either as to time, place,18 or particular rights or privi that of partners; although they may | thing which I should be inclined to enter into any contract or partnership inter sese, or between themselves and publishers of their works. Gould v. Banks, 8 Wend. (N. Y.) 562, 24 AmD 90; Pulte v. Derby, 20 F. Cas. No. 11,465, 5 McLean 328; Stevens v. Benning, 6 De G. M. & G. 223, 55 EngCh 175, 43 Reprint 1218. In the absence of any contract modifying their relations, they are simply owners in common, as the plaintiff has alleged, each owning a distinct but undivided part which or any part of which alone he can sell, as in the case of personal chattels." Carter v. Bailey, supra. 13. Act March 4, 1909 (35 U. S. St. L. 1075 c 320 § 41); Bong v. Alfred S. Campbell Art Co., 214 U. S. 236, 29 SCt 628, 53 L. ed. 979, 16 AnnCas 1126; Stephens v. Cady, 14 How. (U. S.) 528, 14 L. ed. 528; Cooper v. Stephens. [1895] 1 Ch. 567. 14. Bong v. Alfred S. Campbell Art Co., 214 U. S. 236, 29 SCt 628, 53 L. ed. 979, 16 AnnCas 1126. [a] Assignment void for repugnancy.-An assignment in writing of the copyright in a picture which is qualified by a contemporaneous undertaking not to reproduce without the consent of the assignor is able the assignee to sue for infringenot a valid assignment so as to enment without joining the assignor as coplaintiff, nor is the assignment in this case a bona fide transfer of the copyright. Landeker v. Wolff, 52 Sol. J. 45. 15. Werckmeister V. American Lith. Co., 134 Fed. 321, 69 CCA 553, 68 LRA 591 [rev 126 Fed. 244]. See also supra § 67. 16. Bobbs-Merrill Co. V. Straus, 147 Fed. 15, 77 CCA 607, 15 LRANS 766 [aff 139 Fed. 155, and aff 210 U. S. 339, 28 SCt 722, 52 L. ed. 1086]; Trade Auxiliary Co. V. Middlesborough, etc., Protection Assoc. 40 Ch. D. 425; Jefferys v. Boosey, 4 H. L. Cas. 815, 10 Reprint 681 (per Lord St. Leonards speaking of the statute of Anne). "Both Courtney and Shepherd stated at the trial that the understanding was, that the exclusive right of representing Old Joe and Young Joe in London was to belong to the plaintiffs, but that Courtney was to retain his right for the country. If the transaction amounted to an absolute assignment, it may be that Courtney could not make that exception; or, it may be that his retaining the copyright, or the right of representation in the country, renders the agreement inoperative as an assignment. The point did not distinctly arise in Jefferys v. Boosey, 4 H. L. Cas. 815, 10 Reprint 681; but Lord St. Leonards expressed a very strong opinion (and many of the judges concurred with him), that there could be no such thing as a partial assignment of copyright. 'If,' says that noble Lord, there is one represent to your Lordships as being more clear than any other, in this case, it is, that copyright is one and indivisible. I am not speaking of the right to license; but copyright is one and indivisible, or is a right which may be transferred, but which cannot be divided. Nothing could be more absurd or inconvenient than that this abstract right should be divided, as if it were real property, into lots, and that one lot should be sold to one man, and another lot to a different man. It is impossible to tell what the inconvenience would be. You might have a separate transfer of the right of publication in every county in the kingdom.' If that be a correct exposition of the law, that which was granted to Shepherd and Creswick here is a mere license: and, if so, you have the wrong plaintiff; for, a licensee cannot sue." Per Jervis, C. J., in Shepherd v. Conquest, 17 C. B. 427, 436, 84 ECL 427, 139 Reprint 1140. [a] Patents and copyrights contrasted. "The statute permits the patentee to subdivide his rights, and the common law protects him against any infringement of any part thereof. The copyright statute provides only for the assignment of the right as a whole, and, in terms, protects against infringement by unlawful publica tion." Bobbs-Merrin Co. v. Straus, 147 Fed. 15, 24, 77 CCA 607, 15 LRANS 766 [aff 139 Fed. 155, and aff 210 U. S. 339, 28 SCt 722, 52 L. ed. 1086]. 17. Imperial Book Co. v. Black, 35 Can. S. C. 488 [dism app 8 Ont. L. 9 (dism app 5 Önt. L. 184. 1 Com L 417)]; Drone Copyright p 337 (where it is said to be doubtful whether such an assignment can be regarded other than a mere license). 18. as Davies v. Vories, 141 Mo. 234, 42 SW 707; Trade Auxiliary Co. v. Middleborough, etc., Protection AsSoc., 40 Ch. D. 425; Jefferys V. Boosey, 4 H. L. Cas. 815, 10 Reprint 681. "What Mr. Maidlow relied on was an opinion expressed by Lord St. Leonards in Jefferys v. Boosey. 4 H. L. Cas. 815, 10 Reprint 681. What the Lord Chancellor was dealing with there was an entirely different matter. In that case there was an attempt to assign a copyright so far only as it related to one particular portion of the Queen's dominions and not to the rest, and what Lord St. Leonards says is that that cannot be done. The only copyright there was which could be assigned was a copyright effectual over all the Queen's dominions. and not simply over a limited portion of them, and it could not be split up in the way there attempted. That is quite different from the present case." Trade Auxiliary Co. v. Middlesborough, etc.. Protection Assoc., 40 Ch. D. 425, 434. Of leges, less than the sum of all the rights comprehended in the copyright.19 Certainly the statute authorizing assignment of the "copyright" contains no recognition of such partial assignments.20 course such exclusive rights may be granted, limited as to time,21 place,22 or extent of privileges which the grantee may enjoy,23 but the better view is that such limited grants operate merely as licenses and not as technical assignments, although often spoken of as assignments.24 An undivided interest in a copyright may be assigned, whereupon the copyright becomes the undivided property of the several owners.25 24 International copyright. Where a person by virtue of international copyright relations has copyrights on the same subject matter in two or more countries, he has several and distinct copyrights in each country, governed by distinct copyright laws, and he may assign the copyright for each country separately; but this is not a case of splitting a copy V. 19. Empire City Amusement Co. v. Wilton, 134 Fed. 132; Lucas Cooke, 13 Ch. D. 872. See also supra § 151 (where the cases cited to the effect that an assignee of only limited rights is not a "proprietor" present a close analogy). [a] Assignment of dramatization rights. "It seems that an assignee of the exclusive right to dramatize' is a mere licensee, and so cannot sue in his Own name." Empire City Amusement Co. v. Wilton, 134 Fed. 132. 133. right or of partial assignments.27 29 The English statute of 1911 expressly authorizes both general and limited or partial assignments28 and provides that the assignee as respects the right so assigned, and the assignor as respects the rights not assigned, shall be treated as the owners of the copyright for the purposes of the act.2 This statute sets at rest the doubt existing under former statutes as to whether grants of rights limited as to time, place, or privileges conferred operated as assignments or only as licenses.3 This doubt arose on the provision of the Copyright Act of 1842 authorizing the proprietor of a copyright to assign "his Interest, or any Portion of his Interest there 30 in.'' 31 While this statute does not necessarily 32 authorize more than the assignment of an undivided interest,3 assignments limited as to place, at least so far as provincial rights or rights for particular countries were concerned,33 and assignments of par the publication by the other of a copy of that which was in his possession and was his property. Mr. Lucas, therefore, ran the risk of Mr. Halford's publishing copies of the painting which was in his possession, if he thought fit, certainly not a very great risk considering his position in society and the character of the painting, which was a portrait of his own daughter." Lucas v. Cooke, 13 Ch. D. 872, 876, 878. [c] Assignment without right to make copies. An assignment for the purpose of bringing an action, with a condition that the assignee will not reproduce the work without the consent of the assignor, is not valid assignment so as to entitle the assignee to sue without joining the assignor. Landeker v. Wolff, 52 Sol. J. 45. Extent of rights conferred copyright see infra § 264. a by 20. New Fiction Pub. Co. v. Star Co., 220 Fed. 994; Bobbs-Merrill Co. v. Straus, 147 Fed. 15, 77 CCA 607, 15 LRANS 766 [aff 210 U. S. 339, 28 SCt 722, 52 L. ed. 1086]. 21. Roberts v. Myers, 20 F. Cas. No. 11,906, Brunn. Col. Cas. 698; Howitt v. Hall, 6 L. T. Rep. N. S. 348 (where the copyright was assigned for four years); Black v. Imperial Book Co., 8 Ont. L. 9 [dism app 5 Ont. L. 184, 1 ComL 417, and app dism 35 Can. S. C. 488]. 22. Roberts v. Myers, 20 F. Cas. No. 11,906. Brunn. Col. Cas. 698; Davis v. Vories, 141 Mo. 234, 42 SW 707. [b] Limited engraving rights."On the 9th of November, 1870, Mr. Halford signed the following memorandum addressed to the Plaintiff: 'I assign to you, for the purpose of producing an engraving of one size.. the copyright of the picture painted by Mr. E. U. Eddis, entitled "Going to Work," and being a portrait of my daughter.' It is material to inquire what is the effect of that instrument. Before he signed it Mr. Halford was unquestionably entitled to produce himself and to permit the production of copies of the painting in any manner and of any size. By this instrument he assigned the copyright of the painting for the purpose of producing an engraving of one size. The Plaintiff says that, notwithstanding those words limiting the effect of the assignment, it was an absolute assignment of the whole copyright of the painting, and that, although it is expressed to be granted to him for the purpose of producing an engraving of one size, he is entitled to produce engravings [a] Territorial performing rights. of any size, and that he is at liberty-A grant may be made of the exto copy the painting in any other clusive right of acting and repremanner than by engraving, and, fur- senting a drama in a specified territher than that, he really claims to be tory for a limited period. Roberts entitled to restrain even Mr. Halford V. Myers, 20 F. Cas. No. 11,906, or his friends from copying his own Brunn. Coll. Cas. 698. painting hanging on his own wall. In my view, that is certainly not the true construction of the document. I consider that it is either an assignment by, or a license from, Mr. Halford for the purpose of enabling Mr. Lucas to copy the painting and to publish an engraving of it of one size. Of that engraving when completed, and of the copyright of it, Mr. Lucas was and is now the owner, and that is all which is assigned to him. If I did not come to that conclusion I should be compelled to reject and render null the plain words of the assignment. Those words are clear, and I must give full effect to them. The result of this instrument, in my view of it, was this, that after the preparation of the engraving and the registration, Mr. Lucas became the owner of the Copyright of the print or engraving, and Mr. Halford remained the owner of the copyright of the painting. Each of them was at liberty at his pleasure to copy from and publish copies of that which he possessed, 24. New Fiction Pub. Co. v. Star and neither of them could restrain Co., 220 Fed. 994; Photo-Drama Mo 23. Photo-Drama Motion Picture Co. v. Social Uplift Film Corp., 220 Fed. 448, 137 CCA 42; Lederer V. Saake, 166 Fed. 810 [rev on other grounds 174 Fed. 135, 98 CCA 571]; Lucas v. Cooke, 13 Ch. D. 872 (artistic work); Tuck v. Canton, 51 L. J. Q. B. 363 (artistic work). "Under the may [a] Illustration. copyright laws of the United States any citizen or resident of the United States who is the author of any dramatic composition copyright it, and he then has given him by the statute, two distinct and separable rights-one, the sole right to print and sell copies of the words and music, and the other, the sole right to publicly perform it, and doubtless he could assign to one person the right to print, and reserve, or grant to a different person, the right to publicly perform his composition." Lederer v. Saake, 166 Fed. 810, 814 [rev on other grounds 174 Fed. 135, 98 CCA 571. and quot Carte v. Ford. 15 Fed. 439, 442]. tion Picture Co. v. Social Uplift Film Corp., 220 Fed. 448, 137 CCA 42: Empire City Amusement Co. v. Wilton, 134 Fed. 132; Keene v. Wheatley, 14 F. Cas. No. 7,644; Davis v. Vories, 141 Mo. 234, 42 SW 707; London Printing, etc., Alliance, Ltd. v. Cox, [1891] 3 Ch. 291; Lucas v. Cooke, 13 Ch. D. 872; Jefferys v. Boosey, 4 H. L. Cas. 815, 10 Reprint 681; Tuck v. Canton, 51 L. J. Q. B. 363; Neilson v. Horniman, 26 T. L. R. 188; Drone Copyright p 335. See also cases supra notes 16-19. "The sole question, as indicated supra, is whether plaintiff is an assignee or licensee." When Goodman obtained his copyright, he acquired the exclusive rights conferred by section 1 of the act, and also the right to assign permitted by section 42. Under the act but one assignment is necessary for absolute protection. Less than an assignment of the entire copyright cannot carry the causes of action (if the right is invaded) which the act acords to the owner or assignee." New Fiction Pub. Co. v. Star Co., 220 Fed. 994, 996. [a] An exclusive license is not a partial assignment. London Printing, etc., Alliance, Ltd. v. Cox, [1891] 3 Ch. 291. V.. Springer 25. Werckmeister Lith. Co., 63 Fed. 808; Black V. Henry G. Allen Co., 56 Fed. 764, 42 Fed. 618, 9 LRA 433; Carter V. Bailey, 64 Me. 458, 18 AmR 273. 26. See infra §§ 453-456. 27. Pitts v. George, [1896] 2 Ch. 866; Taylor v. Neville, 47 L. J. Q. B. 254 (performing rights for the city of London); Tree v. Bowkett, 74 L. T. Rep. N. S. 77; Holt v. Woods. 17 N. S. Wales L. R. Eq. 36, 12 NSWWN 97; Copinger Copyright (5th ed) p 127. 28. 29. St. 1 & 2 Geo. V c 46 § 5 (2). St. 1 & 2 Geo. V c 46 § 5 (3). 30. Shepherd v. Conquest, 17 C. B. 427, 84 ECL 427, 139 Reprint 1140. And see cases supra note 24. See also MacGillivray Copyright p 80. [a] Limits of right under new law. "The new Act clearly permits the copyright to be so divided, the only question being as to whether there are any limits to the permissibility. It is upon the whole submitted that the owner of an English copyright could not make an assignment to one person of rights in Lancashire and to another person of rights in Middlesex, but that he could make an assignment to one person of rights in Australia and to another [person] of rights in India." Copinger Copyright (5th ed) p 126. 31. 32. ticular rights such as performing rights, or the right to dramatize or translate,35 and assignments limited as to time36 were recognized and supported as such. By express provision of the act of 1911, no interest can be assiged or granted by the author, otherwise than by will, which will be valid beyond the expiration of twenty-five years from the death of the author.37 [248] 3. Assignment Distinguished from License. An assignment is a conveyance or transfer of a proprietary interest or title to the property assigned,38 and is usually defined as a transfer of the entire interest and title.39 A license passes no interest or title, but only makes an act lawful which without it would have been unlawful.40 A license creates merely a contractual relation between the parties.11 The transaction is a license where the right granted is of such a limited character as not [a] Colonial rights.-"It is common practice to assign colonial copyrights." 8 Halsbury L. Eng. p 161 note (a). 34. Carte v. Dennis, 5 Terr. L. 30; Ex p. Dobson, 12 New Zeal. L. 171. Ex p. [a] Rule applied.-(1) The proprietor in Great Britain of the sole right of representing a dramatic work can, under 3 Wm. IV c 15 and 5 & 6 Vict. c 45, assign to another that right in the Australian colonies, and the assignee can sue in his own name in those colonies to restrain the infringement of the right. Holt v. Woods. 17 N. S. Wales L. R. Eq. 36, 12 NSWWN 97. (2) The right of exclusive representation of a dramatic work is a divisible right, and may be conferred by assignment for a specific locality and period. Dobson, 12 New Zeal. L. 171 (where the court said: "Though in Jefferys v. Boosey, 4 H. L. Cas. 815, 10 Reprint 681, some of the Law Lords thought copyright properly so called, indivisible, the majority were of a different opinion, and since then the 5 & 6 Vict., c. 45. sec. 13, has recognized the divisibility of copyright. As to the divisibility of the exclusive right of representation-that is. by conferring the right for a specific locality and period-it is common in practice. and is not doubted in the text-books, and I see no reason to doubt it may be effected"). 35. Lucas v. Cooke, 13 Ch. D. 872; MacGillivray Copyright p 80. 36. Davidson v. Bohn, 6 C. B. 457, 60 ECL 456, 136 Reprint 1327; Howitt v. Hall, 6 L. T. Ren. N. S. 348; Sweet v. Cater. 11 Sim. 572. 34 EngCh 572. 59 Reprint 994; Copinger Copyright (5th ed) n 126. any [a] Mr. MacGillivray dissents from this view, saying: "In view of partial assignment I do not think there can be partial assignment as to time. Such an assignment would create an estate in possession and reversion in personal property, and there is no reason for holding that copyright is any exception to the general rule that such an interest cannot he created in personalty. Equitable estates, limited as to time, can no doubt he created as in the case of any other personal property. What purports to be an assignment limited as to time must as a rule be treated as a licence." MacGillivray Copyright p 80. 37. 38. 39. St. 1 & 2 Geo V c 46 § 5 (2). New Fiction Pub. Co. v. Star Co., 220 Fed. 994. See Assignments § 1. 40. Black v. Henry G. Allen Co.. 56 Fed. 764; Heap v. Hartley. 42 Ch. D. 461: Muskett v. Hill, 5 Bing. N. Cas. 694. 35 ECL 371, 132 Reprint 1267; Reade v. Bentley. 3 Kay & J. 271. 69 Reprint 1110. 4 Kay & J. 656. 70 Reprint 273: Tuck v. Canton. 51 L. J. Q. B. 363; Drone Copyright p 305. 45 to be the legal subject matter of an assignment.42 If the transaction is such that it could be supported either as an assignment or a license, the intention of the parties governs.13 Such intention is to be determined by a construction of the instrument, if there is one," 44 or, if there is no instrument to be construed, the intention will be inferred from the words and acts of the parties. Any circumstances indicating a reliance on the personality or skill of the grantee tends strongly to stamp the transaction as a license.46 For this reason an agreement merely for the publication of a copyrighted work will ordinarily be construed, if reasonable to do so, as a license, and not as an assignment of the copyright." A mere license to publish does not constitute an assignment of the copyright.48 [§ 249] 4. Writing and Signing. Under both the "The essence of a licence proper is that it is merely a personal relationship between a licensor and a licensee whereby the latter is permitted to infringe the former's copyright." MacGillivray Copyright p 82. "An assignment of copyright is in fact a perpetual license." Per Fry. J., in Hole v. Bradbury, 12 Ch. D. 886, 894. [a] A license is not equal to an assignment.-London Printing, etc., Alliance, Ltd. v. Cox, [1891] 3 Ch. 291; Reade v. Bentley, 3 Kay & J. 271, 69 Reprint 1110, 4 Kay & J. 656, 70 Reprint 273; Stevens v. Benning, 1 Kay & J. 168, 69 Reprint 414. 41. New Fiction Pub. Co. v. Star Co., 220 Fed. 994, 996; Copinger Copyright (5th ed) p 131. "Mr. Bowker in 'Copyright, Its History and Its Law' (Edition 1912) at page 49, aptly states the proposition: 'In respect to the right to limit the use of his work under his sale, gift, loan, grant, lease, etc., for a special purpose, or at a special price, or for a special time, or in a special locality, or to a special person, these powers of limitation, though implied in the grant of copyright, are dependent for their enforcement rather upon the law of contracts than upon copyright law. There can be no such thing as a copyright for a special purpose, or for a special locality, or under other special conditions, for there can be only one copyright, and that a general copyright, in any one work. But specific contracts can be made, enforceable under the law of contracts, as for the sale of a copyrighted book within a certain territory, provided such contracts or limitations are not contrary to other laws. Although record of assignment in the Copyright Office is provided for by the law only for the copyright in general, the separate estates, as a right to publish in a periodical and the right to publish as a book, may be sold and assigned separately, and the special assignment recorded in the Copyright Office, though this does not convey a right to substitute in the copyright notice a name other than that of the recorded proprietor of the general copyright, which can only be changed as specifically provided in the law under recorded assignment of the entire copyright.'" New Fiction Pub. Co. v. Star Co., supra. 42. See supra § 247. 43. Stevens v. Benning, 1 Kay & J. 168. 69 Reprint 414 [aff 6 De_G. M. & G. 223, 55 EngCh 175, 43 Reprint 1218]. 44. In re Jude's Musical Compositions. [1907] 1 Ch. 651. [a] Implied intent. "In the contract, however, no mention is made of copyright, which is a right so well known and defined that I should expect, if it was intended to part with it, the intention would have been clearly expressed. However, such an intention may be inferred." Stevens v. Benning, 1 Kay & J. 168, 69 Reprint 414 [aff 6 DeG. M. & G. 223, 55 EngCh 175, 43 Reprint 1218]. 45. See Assignments § 115 et seq. 46. Cooper v. Stephens, [1895] 1 Ch. 567; Hole v. Bradbury, 12 Ch. D. 886; Ex p. Bastow, 14 C. B. 631, 78 ECL 631, 139 Reprint 259; Reade v. Bentley, 3 Kay & J. 271, 69 Reprint 1110, 4 Kay & J. 656, 70 Reprint 273; Stevens v. Benning, 1 Kay & J. 168, 69 Reprint 414; MacGillivray Copyright p 81. 47. In re D. H. McBride, 132 Fed. 285; Willis v. Tibbals, 33 N. Y. Super. 220; In re Jude's Musical Compositions, [1907] 1 Ch. 651; Hole v. Bradbury, 12 Ch. D. 886 (provision for royalties or share in profits instead of lump price tends to show license rather than assignment); Warne v. Routledge, L. R. 18 Eq. 497; Stevens v. Benning, 6 De G. M. & G. 223, 55 EngCh 175, 43 Reprint 1218; Reade v. Bentley, 3 Kay & J. 271, 69 Reprint 1110, 4 Kay & J. 656, 70 Reprint 273; Sweet v. Cater, 11 Sim. 572, 34 EngCh 572, 59 Reprint 994; Lucas v. Moncrieff, 21 T. L. R. 683; Black v. Imperial Book Co., 8 Ont. L. 9 [dism app 5 Ont. L. 184, and app dism 35 Can. S. C. 488]. [a] Rule applied. "Then it is argued that the sole power of printing, reprinting and publishing is, in fact.. in consideration of a sum of money paid to him, agrees that certain persons shall have the sole power of printing, reprinting and publishing a certain work for all time, that would be parting with the copyright; but if the agreement is that the publishers, performing certain conditions on their part, should, so long as they do perform such conditions, have the right of printing and publishing the book, that is a very different agreement. The legitimate inference from this contract is that, so long as the publishers duly and properly perform their duty with reference to all that they have engaged to do. Mr. Forsyth should not be at liberty to defeat the benefit of his own agreement by publishing a new edition before the former editions are sold off. As the ViceChancellor observed, in Sweet V. Cater, 11 Sim. 572, 34 EngCh 572, 59 Reprint 994 by such an agreement, although not an assignment of the copyright, the author would incur obligations, and therefore could not interfere with the interest acquired by the publishers under it." Stevens v. Benning, 1 Kay & J. 168, 174, 69 Reprint 414 [aff 6 De G. M. & G. 223, 55 EngCh 175, 43 Reprint 1218]. 48. New Fiction Pub. Co. v. Star Co., 220 Fed. 994; Cooper v. Stephens, [1895] 1 Ch. 567; Warne v. Routledge, L. R. 18 Eq. 497; Reade v. 49 English and American statutes, the assignment of a copyright is required to be in writing and signed by the proprietor. Formerly in England the copyright in books could also be assigned by an entry of assignment in the book of registry at Stationers' Hall.50 Assignments executed in a foreign country must be acknowledged by the assignor before a consular officer or secretary of legation of the United States authorized by law to administer oaths or to perform notarial acts.51 An informal writing may be a sufficient assignment.52 [250] 5. Recording. Assignments of copyrights are required to be recorded in the copyright office within three calendar months after execution in the United States, or within six calendar months after execution without the limits of the United States, in default of which the assignment is void as against any subsequent purchaser or mortgagee for a valuable consideration without notice, whose assignment Bentley, 3 Kay & J. 271, 69 Reprint 1110, 4 Kay & J. 656, 70 Reprint 273; Marshall v. Bull, 85 L. T. Rep. N. S. 77 (per Byrne, J.); Black v. Imperial Book Co., 8 Ont. L. 9 [dism app 5 Ont. L. 184, and app dism 35 Can. S. C. 488]. V. 49. Stephens v. Cady, 14 How. (U. S.) 528, 14 L. ed. 528; Gould v. Banks, 8 Wend. (N. Y.) 562, 24 AmD 90 (under act of 1790); Eaton V. Lake, 20 Q. B. D. 378 (dramatic copyright); Savory v. The World of Golf, [1914] 2 Ch. 566; Cooper v Stephens, [1895] 1 Ch. 567; Low v. Routledge, L. R. 1 Ch. 42; Eaton v. Lake, 20 Q. B. D. 378; Hole v. Bradbury, 12 Ch. D. 886; Leyland Stewart, 4 Ch. D. 419; Clementi v. Walker, 2 B. & C. 861, 9 ECL 371, 107 Reprint 601; Shepherd v. Conquest, 17 C. B. 427, 84 ECL 427, 139 Reprint 1140; Morton v. Copeland, 16 C. B. 517, 81 ECL 517, 139 Reprint 861 (signing by agent is sufficient); Leader v. Purday, 7 C. B. 4, 62 ECL 4, 137 Reprint 2; Rundell v. Murray, Jac. 31 1, 4 EngCh 311, 37 Reprint 868; Morris v. Kelly, 1 Jac. & W. 481, 37 Reprint 451; Strahan v. Graham, 17 L. T. Rep. N. S. 457 [app dism 16 L. T. Rep. N. S. 87]; Hazlitt v. Templeman, 13 L. T. Rep. N. S. 593; Power v. Walker, 3 M. & S. 7, 105 Reprint 514; Dennison v. Ashdown, 13 T. L. R. 226 (where a written assignment was inferred); Roberts v. Bignell, 3 T. L. R. 552 (dramatic copyright). And see Kyle v. Jeffreys, 3 Macq. 611 (where the question at issue was as to the necessity of attestation and the dicta of the judges of the lower court [Jeffreys v. Kyle, 18 Dunlop 906] to the effect that a writing is unnecessary, under 5 & 6 Vict. c 45, consequently lacks authority; and the actual point decided was that a receipt in writing for the price of the copyright operates as an effectual assignment). "An assignment, therefore, that would vest the assignee with the property of the copy-right, according to the act of Congress, must be in writing, and signed in the presence of two witnesses." Per Nelson, J., in Stephens v. Cady, 14 How. (U. S.) 528. 531, 14 L. ed. 528 (under act of 1831). [a] Statutory provisions.-(1) The American statute merely provides that the copyright "may be assigned by an instrument in writing signed by the proprietor of the copyright." Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 42). (2) The English statute provides: "No such assignment or grant shall be valid unless it is in writing signed by the owner of the right in respect of which the assignment or grant is made, or by his duly authorized agent." 1 & 2 Geo. V c 46 § 5 (2). (3) Former statutes. See U. S. Rev. St. § 4955; 5 & 6 Vict. c 45, § 13; 17 Geo. III c 57; 54 Geo. III c 156 § 4; 25 & 26 Vict. c 68 § 3. 54 has been duly recorded.53 As against all other persons, including the assignor, the assignment is valid, although not recorded." Recording is not necessary to enable one to sue an infringer.55 In England, under former statutes, assignments of performing rights in dramatic and musical compositions were required to be entered in the registry book at Stationers' Hall. In the case of books, an assignee could not sue for infringement until he had registered at Stationers' Hall.57 The assignment of particular rights and privileges under the copyright is void, unless recorded, as against a subsequent assignee without notice, whose assignment 56 has been duly recorded.58 Such " "assignments,' 50. St. 5 & 6 Vict. c 45 § 13; | rules 43, 44. 51. Act March 4, 1909 (35 U. S. St. V. 52. Eaton v. Lake, 20 Q. B. D. 378; London Printing, etc., Alliance, Ltd. v. Cox, [1891] 3 Ch. 291; Leyland v. Stewart, 4 Ch. D. 419; Marsh v. Conquest, 17 C. B. N. S. 418, 112 ECL 418, 144 Reprint 169; Shepherd v. Conquest, 17 C. B. 427, 84 ECL 427, 139 Reprint 1140; Cumberland Copeland, 1 H. & C. 194, 158 Reprint 856; Taylor v. Neville, 47 L. J. Q. B. 254 Lacy v. Toole, 15 L. T. Rep. N. S. 512; Hazlitt v. Templemore, 13 L. T. Rep. N. S. 593. But see Edwardes v. Cotton, 19 L. T. R. 34 (where the words "your song," in the handwriting of the composer, written on a copy of the musical composition, were held to be insufficient). [a] A receipt for the purchase price may be sufficient as a written assignment, and the description of the subject matter may be aided and applied by parol evidence. Savory v. The World of Golf, [1914] 2 Ch. 566. 53. Brady v. Reliance Motion Picture Corp., 232 Fed. 259; Brady v. Reliance Motion Picture Corp., 229 Fed. 137, 143 CCA 413; Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 44). [a] Under the Revised Statutes the provisions as to recording were the same, except that the assignment was required to be recorded "within sixty days after its execution." U. S. Rev. St. § 4955. [b] Regulations of copyright office. "When a copyright has been assigned the instrument in writing signed by the proprietor of the copyright may be filed in this office for record within six calendar months after its execution without the limits of the United States or three calendar months within the United States. After having been recorded the original assignment will be returned to the sender with a sealed certificate of record attached. The assignment will be returned by registered mail, if the post-office registration fee (10 cents) is sent for that purpose. The fee for recording and certifying an assignment is $1 up to 300 words; $2 from 300 to 1,000 words; and another dollar for each additional thousand words or fraction thereof over 300 words. After the assignment has been duly recorded, the assignee may substitute his name for that of the assignor in the copyright notice on the work assigned. Such substitution or transfer of ownership will be indexed in this office upon request. at a cost of 10 cents for each work assigned." Rules and Regulations for Registration of Claims to Copyright (Copyright Office Bul. No. 15) [c] Under former law. "A formal transfer of the copyright by the supplementary act of the 30th of June, 1834, is required to be proved and recorded as deeds for the conveyance of land, and such record operates as notice." Little v. Hall, 18 How. (U. S.) 165, 171, 15 L. ed. 328. 54. New Fiction Pub. Co. v. Star Co., 220 Fed. 994: Webb v. Powers, 29 F. Cas. No. 17,323, 2 Woodb. & M. 497. 55. New Fiction Pub. Co. v. Star Co., 220 Fed. 994, 995. "If the transaction described constitutes an assignment of the copyright, it was not necessary for the purposes of this cause of action that the assignment should be recorded as provided in section 44 of the act. That section protects subsequent purchasers or mortgagees for value, and is akin in principle to the filing or recording acts, which relate to bills of sale or chattel mortgages. As against infringers, an assignee would have a cause of action, irrespective of the recording provisions of the act." New Fiction Pub. Co. v. Star Co., supra. 56. St. 5 & 6 Vict. c 45 § 22. [a] Registration not necessary in assignment of right of representation.-Lacy v. Rhys, 4 B. & S. 873, 116 ECL 873, 122 Reprint 687; Marsh v. Conquest, 17 C. B. N. S. 418, 112 ECL 418, 144 Reprint 169. 57. Liverpool General Brokers' Assoc., Ltd. V. Commercial Press Telegram Bureaux, Ltd., [1897] 2 Q. B. 1. See generally supra § 225. 58. Photo-Drama Motion Picture Co. v. Social Uplift Film Corp., 220 Fed. 448, 137 CCA 42 [aff 213 Fed. 374]. [a] An unrecorded assignment of the motion picture rights (1) in a copyrighted novel was void as against a subsequent assignee without notice, whose assignment was duly recorded. Photo-Drama Motion Picture Co. v. Social Uplift Film Corp., 220 Fed. 448, 137 CCA 42. (2) An assignee of motion picture rights in a copyrighted novel was not charged with notice of prior assignment, by the assignor's statement that he had licensed another person to reproduce the story as a drama. Photo-Drama Motion Picture Co. v. Social Uplift Film Corp., 220 Fed. 448, 137 CCA 42 [aff 213 Fed. 374]. 59. Photo-Drama Motion Picture Co. v. Social Uplift Film Corp., 220 Fed. 448, 137 CCA 42 [aff 213 Fed. 374]. It "It is really not necessary to consider whether or not this is a license or an assignment, because a license falls before an assignment taken in good faith anyway. 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." Photo-Drama an executory contract to assign a copyright is insufficient to pass the legal title, nor will it invalidate a subsequent regular assignment to others,68 although a subsequent assignee will take subject to prior equities of which he had notice.69 It has even been held that a contract to prepare and assign the copyright of a work not in existence gives a title superior to that of a subsequent bona fide assignee without notice.70 Parol agreement. [251] 6. Agreement to Assign. Although a statutory copyright must be in existence before it can be assigned at law,63 an agreement may be made to assign at a future time,64 in which case an equitable title may vest in the assignee,65 and the contract to assign may be specifically enforced.66 Motion Picture Co. v. Social Uplift | act of Aug. 24, 1912 (37 U. S. St. at Film Corp., 213 Fed. 374, 377. [a] Reason for rule.-(1) "As to the recording section 44, we find it difficult to appreciate complainant's point. If a book can be copyrighted, if a drama giving the story of the book can be copyrighted, if a moving picture showing such story fictionally also can be copyrighted, then each of these copyrights can be separately assigned, and must be recorded to avail of the constructive notice which the section contemplates. We fail to see how, since the amendment, a motion picture play, for which by itself a copyright may be taken, can be described merely as 'an incidental right' under a copyright." Photo-Drama Motion Picture Co. v. Social Uplift Film Corp., 220 Fed. 448, 450, 137 CCA 42. (2) But in the above case the court seems to overlook the fact that what was "assigned" was not the copyright of a dramatization, either in "old-style" or moving picture form, but merely the right to make such a dramatization based on the copyrighted novel. Surely this is "an incidental right" merely, and surely the copyright on the novel was not assigned. It was the novel's copyright which was infringed, and there had never been any assignment of that, but merely a grant of licenses under it. 60. Brady v. Reliance Motion Picture Corp., 232 Fed. 259; Brady v. Reliance Motion Picture Corp., 229 Fed. 137, 143 CCA 413; Photo-Drama Motion Picture Co. v. Social Uplift Film Corp., 213 Fed. 374 [aff 220 Fed. 448, 137 CCA 42]. [a] Notice to licensee.-(1) The purchaser of the dramatic rights in a copyrighted publication from the publisher, who holds the record title to the copyright, is not bound to inquire as to the latter's contract with the author, and takes title free from a trust under which the copyright was taken, unless he had either actual knowledge of it or of facts which should have put him on inquiry. Brady v. Reliance Motion Picture Corp., 232 Fed. 259, 262 (where the court said: "What this allegation amounts to is that, where a publisher copyrights a work of an author, there must of necessity exist some arrangement between them, and that, perchance, the author may have reserved something undisclosed which the person dealing with the owner of the copyright should have suspected, although an examination of the record title provided for by law shows good title. This, to my mind, would place a duty upon a person dealing with the owner of a copyrighted work which the law never contemplated, and which, from the standpoint of commercial requirements, would be unjust and seriously hamper legitimate dealings. Of course, a cautious purchaser may require all sorts of assurances from the owner of the copyright, and thus, perhaps, avoid unexpected litigation; but am unable to follow the reasoning which requires a person dealing with the owner of a copyright to rely on anything more than the statute requires, unless, of course, either actual notice has been given or some facts are within his knowledge from which he is put upon his inquiry"). (2) Since the amendment of the copyright statute by the But While the assignment of a not necessary. An agreement to as'sign, in matters of this kind, is quite as good as a direct assignment in words, is enforceable in equity, and, as between business men, is com I do not think that any difficulty arises, therefore, from the fact that there are no words purporting to be an operative assignment." Ward v. Long, supra. L. 488) under which a copyright on a drama proper and one on a moving picture play may be separately secured, the owner of the dramatic and motion picture rights in a copy-plete. righted book may sell and assign the two separately, and notice to the purchaser of the motion picture rights alone that the assignor had sold the dramatic rights did not charge him with notice of an unrecorded assignment covering also the motion picture rights. Photo-Drama Motion Picture Co. v. Social Uplift Film Corp., 213 Fed. 374 [aff 220 Fed. 448, 137 CCA 42]. 61. Anglo-Canadian Music Publisher's Assoc. v. Dupuis, 27 Que. Super. 485, 5 Que. Pr. 351. 62. Anglo-Canadian Music Publisher's Assoc. v. Dupuis, 27 Que. Super. 485, 5 Que. Pr. 351. "A careful reading of sections 15 and following, on assignments and renewals, has convinced me that these provisions apply to the assignment of Canadian copyrights and not to assignments of foreign copyrights in musical compositions, such as are in question here. There have been decisions on this point already, more particularly in the case of the Anglo-Canadian Music Pub. Assoc. v. Shaw, 2 ComL 512. In this case Chancellor Boyd held the view of the plaintiff to be the right one, and in delivering judgment he said: 'I think that reasonable evidence has been given to show that the originators of these different pieces of composition have assigned to Boosey & Co. and the other English proprietors, and that from them there have been proper assignments to these plaintiffs. I don't feel pressed by the objection in criticism of the Act, that in the one section it does not refer to assignees but simply to legal representatives. The Act does give the right to the author to assign. It gives the right to the authors to sell to another proprietor. And no one would unless compelled, that the word author in that section was limited to the person who originated the composition, and did not extend to the purchaser or the assignee. I shall hold that it applies to conclude the assignee and therefore the plaintiffs are within the meaning of the statute in this place.' AngloCanadian Music Publishers Assoc. v. Dupuis, 27 Que. Super. 485, 487, 5 Que. Pr. 351. 63. Sweet v. Shaw, 1 Jur. 917; Colburn v. Duncombe, 9 Sim. 151, 16 EngCh 151, 59 Reprint 316. See also generally Assignments § 16 et seq. 64. Leader v. Purday, 7 C. B. 4, 62 ECL 4, 137 Reprint 2. 65. Order of St. Benedict v. Steinhauser, 234 U. S. 640, 34 SCt 932, 58 L. ed. 1512, 52 LRANS 459, AnnCas 1917A 463 [rev 194 Fed. 289, 114 CCA 249]; Ward v. Long, [1906] 2 Ch. 550, 557; Sims v. Marryat, 17 Q. B. 281, 79 ECL 281, 117 Reprint 1287. "The book was not only not in existence, but was known to both parties not to be in existence, and it was known to both parties that it could not be in existence for at any rate some months. Does that contract under those circumstances constitute an assignment within the Act? In the first place there are no words of assignment; but those are [a] Copyright by member of monastery. The equitable ownership of the copyrights obtained by a member of a monastic brotherhood, and of the proceeds of his literary labors, vested in the order under an agreement in the constitution that the gains and acquisitions of members shall belong to the order, and as to both the member stood in the position of a trustee. Order of St. Benedict v. Steinhauser, 234 U. S. 640, 651, 34 SCt 932, 58 L. ed. 1512, 52 LRANS 459, AnnCas1917A 463 [rev 194 Fed. 289, 114 CCA 249] (where it is said: "It is not unlikely that the copyrights upon his books derived their commercial value largely, if not altogether, from his membership. Certainly, the equitable ownership of these copyrights, by virtue of his obligations, vested in the complainant and the moneys in question when received became in equity its property and were subject to its disposition. As to both, Father Wirth stood in the position of a trustee"). 66. Thombleson v. Black, 1 Jur. 198. See also Searle v. Hill, 73 Iowa 367, 35 NW 490, 5 AmSR 688 (where the same rule was applied to a parol agreement to assign a patent). 67. AlliLondon Printing, etc., ance, Ltd. v. Cox, [1891] 3 Ch. 291; Levy v. Rutley, L. R. 6 C. P. 523; Leader v. Purday, 7 C. B. 4, 62 ECL 4, 137 Reprint 2; Colburn v. Duncombe, 9 Sim. 151, 16 EngCh 151, 59 Reprint 316. 68. Leader v. Purday, 7 C. B. 4. 62 ECL 4, 137 Reprint 2. 69. See §§ 135-140. 70. 550. 259. generally Assignments Ward v. Long, [1906] 2 Ch. See also supra § 39; infra [a] Rule applied. Plaintiffs, a firm of publishers, agreed with an author to pay him £200 for the complete copyright of a story to be written on the lines of a synopsis already approved by them, containing not less than eighty thousand words, copy to be delivered within six months. The story was completed and a typewritten copy delivered to plaintiffs within the specified time. Pending a dispute about an alleged deficiency in the number of words, plaintiff withheld payment of part of the £200, and in the interval the author sold the volume rights in the story to defendant, a purchaser for value without notice. Plaintiffs published the story in volume form, and were duly registered as proprietors of the copyright in the book. They now sought to restrain defendant from publishing the story. It was held that the agreement constituted a good equitable assignment of the complete copyright in the story, when written, to plaintiffs. who thereby became "assigns" of the author within the definition contained in $ 2 of the Copyright Act of 1842; and that plaintiffs were en |