72 copyright must be in writing, a parol agreement based on a sufficient consideration to make such an assignment is enforceable," and such a parol agreement is a valid consideration for a counter promise." [252] 7. Construction and Operation. Except as otherwise provided by statute, the validity, construction, and operation of an assignment of copyright is to be determined by the same rules as apply to any other contract or assignment.73 An assignment of copyright differs, however, from other contracts in that it will be liberally construed in favor of the assignor. Title does not pass to the assignee until a definite contract is concluded,75 as in the case of any other sale.76 An assignee's rights are limited to those of his assignor." Where the property assigned is described as the "copyright," all rights of every description secured to the assignor by virtue of his copyright pass to the assignee, except such, if any, as are reserved to the assignor by the terms of the contract.79 Formerly in England, when book rights and performing 78 74 titled to an injunction. Ward v. Long, [1906] 2 Ch. 550, 558 (where the court said: "A difficulty, however, arises from the fact that the book was not in existence, and could not come into existence for some time. I entertain no doubt myself that there can be an assignment of an article to be produced when it shall be produced-book debts, for instance, and many other things of a like nature: I was going to say a picture when painted, but that is too close to this case to be a good illustration-and my opinion has been much supported during the argument by passages read from the case of Tailby v. Official Receiver, 13 App. Cas. 523, 10 ERC 445. I have no doubt that there can be an assignment in that way in the form of an agreement to assign. Why should not that come within s. 2 of the Copyright Act, 1842? Of course, such an assignment as is there contemplated is an assignment of the copyright under the Act; I have nothing to do with the common law right at all for this purpose. The word 'assigns' is construed in s. 2 of the Act; it is to 'mean and include every person in whom the interest of an author in copyright shall be vested, whether derived from such author before or after the publication of any book, and whether acquired by sale, gift, bequest, or by operation of law, or otherwise.' If I am right in my conclusion that this correspondence constitutes a contract vesting the copyright in the plaintiffs, they would be brought immediately within the word 'assigns' as thus construed"). 71. Gould v. Banks, 8 Wend. (N. Y.) 562, 24 AmD 90. See Searle v. Hill, 73 Iowa 367, 35 NW 490, 5 Am SR 688 (where rule was applied to patents). 72. Gould v. Banks, 8 Wend. (N. Y.) 562. 24 AmD 90. 73. See generally Assignments $116-118; Contracts § 46. And see Hubbard v. Thompson, 25 Fed. 188 [rev on other grounds 131 U. S. 123, 9 SCt 710, 33 L. ed. 76]; Re Musical Compositions, etc., 4 Q. B. D. 483; Rippon v. Norton, 2 Beav. 63. 17 Eng Ch 63, 48 Reprint 1102; Taylor v. Neville, 47 L. J. Q. B. 254. [a] Percentage of gross receipts from moving picture scenario.Where an author transferred his rights in a moving picture scenario in return for twenty per cent of the gross receipts derived from their use, he could recover only twenty per cent of the amount actually received by the transferee; and if the purchaser later let the work to a booking agency he need account only for the amount received from. and not by, the agency. Arden v. Lubin, 173 App. Div. 782, 160 NYS 109. Effect of assignment on right to sell copies. In the absence of special contract to the contrary it has been held that the assignor of a copyright is entitled after the assignment to continue selling copies of the work printed by him before the assignment, and remaining in his possession;81 and that, where an author sells the copyright in a book to a publisher for a certain specified time, the publisher has the right after the expiration of that period to sell such copies of the work as he has printed before the expiration of the time limited.82 But these decisions were based on the peculiar wording of former English statutes which were directed only against unlawful printing, and in such cases there was no unlawful printing, and hence there was nothing to make such sales unlawful.83 In the United States, where the statutes confer an exclusive right to sell [b] Assignment of play on condition. Where a copyrighted play was conveyed on the condition, among others, that the transferee should perform such play at least fifty times within one year from the date of the agreement, the transferee is entitled to an injunction restraining the transferors from assigning the right to a third person, although the transferee has not produced the play and has refused to produce it in connection with a certain other actor, where time still remains within which the transferee may produce the play the requisite number of times. Widmer v. Greene, 56 HowPr (N. Y.) 91. 74. Pierpont v. Fowle, 19 F. Cas. No. 11,152, 2 Woodb. & M. 23. [a] Work done in official capacity. An assignment of work done, or to be done, by an author in an official capacity as a state reporter is only operative as long as he may remain in office. Consequently the copyright in work done by him after the expiration of his term does not pass to his assignee by virtue of the contract. Little v. Hall, 18 How. (U. S.) 165, 15 L. ed. 328. 75. Thompson v. Hubbard, 131 U. S. 123, 9 SCt 710, 33 L. ed. 76 [rev 25 Fed. 188]. 76. See generally Sales [35 Cyc 274]. 77. Davies v. Bowes, 209 Fed. 53 [aff 219 Fed. 178, 134 CCA 552]; London Printing, etc., Alliance, Ltd. v. Cox, [1891] 3 Ch. 291. See also supra §§ 39, 251; infra § 259. can publish new editions with alterations so long as they are not of such a character as to injure the reputation of the author. The alterations may consist of condensation or omissions; but if new matter written by another person is added and the author's name appears upon the work, the publisher may be liable for damages on the ground of injury to the author by the work of another writer being 'passed off' as his." 8 Halsbury L. Eng. p 159. [a] Assignment of dramatic copyright reserving "publication" rights.Where the publisher of a play after copyrighting it assigned the copyright thereof with other copyrights to the author by an assignment which provided that it should not affect the right of the publisher to publish such works, and that it should continue to have the sole and exclusive right to publish them, as though the assignment had not been made, it conveyed to the author only the statutory play right, and reserved the copyright, since, while the statute, in defining copyright, uses other words than "publish," they were all covered by the word "publish," as used in the assignment. Fitch v. Young, 230 Fed. 743 [aff 239 Fed. 1021 mem, 152 CCA 664 mem]. 80. Re Musical Compositions, etc., 4 Q. B. D. 483; 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. [a] The words "All property, inposition are sufficient to pass the copy-performing right. Re Musical Compositions, etc., 4 Q. B. D. 483. 81. Taylor v. Pillow, L. R. 7 Eq. 418 (where one sold his copyright at auction but retained copies already printed, and it was held that he was entitled to sell the copies SO retained). [a] Rule applied.(1) Where terest, and benefit" in a musical comcomplainant wrote a short story which was published in a righted newspaper, after which the publishers assigned their rights under the copyright to complainant, his rights were limited to those of his assignors. Davies v. Bowes, 209 Fed. 53 [aff 219 Fed. 178, 134 CCA 552]. (2) An agreement between the owner of the copyright of a book and certain plates for printing it. and one to whom it sells a set of the plates and the right to publish the book from such set, that the book shall not be sold at less than a certain price, is binding on one who thereafter buys the copyright and other plates, with notice. Murphy v. Christian Press Assoc. Pub. Co., 38 App. Div. 426, 56 NYS 597. 78. American Law Book Co. V. Chamberlayne, 165 Fed. 313, 91 CCA 281. See also supra § 38. 79. American Law Book Co. v. Chamberlayne, 165 Fed. 313, 91 CCA 281; Archbold v. Sweet, 5 C. & P. 219, 24 ECL 535; Lee v. Gibbings, 67 L. T. Rep. N. S. 263. "By an assignment of copyright the author deprives himself of the control of his work, apart from express agreement, and the assignee 82. Warne v. Routledge, L. R. 18 Eq. 497; Howitt v. Hall, 6 L. T. Rep. N. S. 348. [a] Rule applied.-The author had parted with his copyright "and the sole right of sale" for four years to the assignee, and the latter was allowed to sell his stock left unsold at the expiration of the term of four years. Howitt v. Hall, 6 L. T. Rep. N. S. 348. 83. St. 5 & 6 Vict. c 45 §§ 2, 15; 8 Anne c 19. [a] Reason for rule.-(1) "I was at first in favour of the Plaintiff's view; but on looking at the Copyright Act (5 & 6 Vict. c. 45), I find that the definition given of copyright is the sole and exclusive liberty of printing or otherwise multiplying copies;' and unless there is some stipulation to the contrary in the conditions of sale, the vendor of rights pass to the personal representative like other personal property;90 but the right to the renewal does not pass to an administrator." 91 [255] E. Attachment, Execution, Bankruptcy, and Creditors' Bill. A copyright is not subject to seizure or sale on execution or attachment,92 and if the plate or physical means of reproduction is so seized and sold, the purchaser may not use it for the purpose of multiplying copies.93 A copyright may be reached and subjected to its owner's debts by means of a creditors' bill,94 but the court would be compelled to decree and enforce a transfer in the mode provided by statute." 95 A bankrupt's copyrights pass to his trustee in bankruptcy,96 except where such copyrights are held by the bankrupt not as absolute owner but under a mere nonassignCreditors' bills see generally Creditors' Suits [12 Cyc 1]. a copyright may print any number | make, by reason of the ownership of as in this case, the deft. had acquired the right of lawfully printing the work, he was at liberty to sell any time what he had so printed." Per Wood, V. C., in Howitt v. Hall, 6 L. T. Rep. N. S. 348, 350. (3) These decisions proceed on a very narrow view of copyright, and their soundness may well be questioned. Drone Copyright p 342. 84. Drone Copyright p 339. 85. Sims v. Marryat, 17 Q. B. 281, 79 ECL 281, 117 Reprint 1287. 86. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 42); In re Jude's Musical Compositions, [1907] 1 Ch. 651. [a] The prior statute contained no such express authority to mortgage, but speaks of mortgagees of copyrights in connection with the recording of assignments. U. S. Rev. St. § 4955. 87. See Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 44), and supra § 250. 88. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 42); Willis v. Curtois, 1 Beav. 189, 17 EngCh 189. 48 Reprint 911 (where it was held that a bequest of "all my books" included valuable manuscript notes left by the testator). 89. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 §§ 23, 24). 90. Copyright Act, 1842 (5 & 6 6 Vict. c 45 § 25); Latour v. Bland, 2 Stark. 382, 3 ECL 455; 8 Halsbury L. Eng. p 140. 91. See supra § 239. 92. Stevens v. Gladding, 17 How. (U. S.) 447, 15 L. ed. 155; Stephens v. Cady, 14 How. (U. S.) 528, 14 L. ed. 528; Cooner v. Gunn, 4 B. Mon. (Ky.) 594; Dart v. Woodhouse, 40 Mich. 399, 29 AmR 544. 93. Stevens v. Gladding, 17 How. (U. S.) 447, 15 L. ed. 155; Stephens v. Cady, 14 How. (U. S.) 528, 14 L. ed. 528; Patterson v. J. S. Ogilvie Pub. Co.. 119 Fed. 451. an [a] Reason for rule.-"The manufacture of stereotype plates is established business, and the ownership of the plates of a book under copyright may be, and doubtless in practice is, separated from the ownership of the copyright. If an execution against a stereotype founder were levied on such plates, which he had made for an author and not delivered, the title to those plates would be passed by the execution sale, and the purchaser might sell them, but clearly he could not print and publish the book for which they were made. The right to print and publish is therefore not necessarily annexed to the plate, nor parcel of it. The sale of a copperplate passes the right to such lawful thereof as the purchaser can use . the thing he has bought; but not the right to a use thereof, by reason of the ownership of something else which he has not bought, and which belongs to a third person. If he has not acquired a press, or paper, or ink, he cannot use his plate for printing, because each of these kinds of property is necessary to enable him to use it for that purpose. So, if he has not acquired the right to print the map, he cannot use his plate for that purpose, because he has not made himself the owner of something as necessary to printing as paper and ink, or as clearly a distinct species of property as either of those articles. He may make any other use of the plate of which it is susceptible. He may keep it till the limited time, during which the exclusive right exists, shall have expired, and then use it to print maps. He may sell it to another, who has the right to print and publish, but he can no more use that right of property than he can use a press or paper, which belongs to a third person." Stevens v. Gladding, 17 How. (U. S.) 447, 452, 15 L. ed. 155. 94. Stevens v. Gladding, 17 How. (U. S.) 447, 15 L. ed. 155; Stephens v. Cady, 14 How. (U. S.) 528, 14 L. ed. 528. But see Cooper v. Gunn, 4 B. Mon. (Ky.) 594, 596 (where the court said: "But although an author who has obtained a copyright for his book, according to the acts of Congress on the subject, cannot, as we suppose, be deprived, against his will, and in favor of any of his creditors, of any of the rights secured to him by said acts, we are of opinion that this protection does not extend, and was not intended to extend to the proceeds of the sale of the copyright, whether existing in his own hands, in the shape of visible property or choses in action, or held by another for his use. The creditors of an author cannot compel him to write or to publish a book for which he has obtained a copyright, or to give up the manuscript, nor can they compel him to sell his right of printing and publishing or of selling his books. And possibly they cannot, against his will, seize and sell the books themselves, the exclusive right of vending which is, in terms, vested in him by the act of Congress. But when, by voluntary sale, he has converted this privileged property into property of a different sort, we do not perceive that the security of the privilege intended to be conferred on authors requires that this other property should also be privileged, in consequence of the manner in which it has been acquired. If it were So, then the same principle would tend the privilege to all of his property which could be traced. no matter through how many conversions, up to the original privileged source; and his speculations, as well as his writings, might be made to partake of the privilege"). ex 95. Stephens v. Cady, 14 How. (U. S.) 528, 14 L. ed. 528. See Pacific Bank v. Robinson, 57 Cal. 520, 40 AmR 120; Barnes V. Morgan, 3 Hun (N. Y.) 703 (both cases applying the dictum in Stephens v. Cady, supra, so as to subject a patent to the claims of creditors). The [a] Reason for rule-"No doubt the property may be reached by a creditor's bill, and be applied to the payment of the debts of the author, the same as stock of the debtor is reached and applied, the court compelling a transfer and sale of the stock for the benefit of the creditors. Hadden v. Spader, 20 Johns. (N. Y.) 554; Edmeston v. Lyde, 1 Paige (N. Y.) 637; Spader v. Davis, 5 Johns. Ch. (N. Y.) 280; M'Dermutt v. Strong, 4 Johns. Ch. (N. Y.) 687. But in the case of such remedy, we suppose, it would be necessary for the court to compel a transfer to the purchaser, in conformity with the requirements of the copyright act, in order to invest him with a complete title to the property. first section of that act provides, that the author of any map. chart, &c., his executors, administrators, or legal assigns, shall have the sole right of printing, publishing, and vending the same, during the period for which the copy-right has been secured. And the seventh section forbids any person from printing, publishing, or selling the map or chart, under heavy penalties, without the consent of the proprietor of the copy-right, first obtained in writing. signed in the presence of two credible witnesses. Act of Congress, Feb. 3, 1831. 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, and it may, I think, well be doubted whether a transfer even by a sale, under a decree of a court of chancery, would pass the title so as to protect the purchaser, unless by a conveyance in conformity with this requirement. Bloxam v. Elsee. 6 B. & C. 169, 13 ECL 88, 108 Reprint 415. 1 C. & P. 558, 12 ECL 320." Stephens v. Cady, 14 How. (U. S.) 528, 531, 14 L. ed. 528. 96. In re Howley-Dresser Co., 132 Fed. 1002; Mawman v. Tegg, 2 Russ. 385, 3 EngCh 385, 38 Reprint 380. [a] Claim by author for royalties. An author sold the absolute copyright in a book to a publisher in consideration of the payment of certain royalties. The publisher became bankrupt and the trustee in bankruptcy carried on the business for some time. The author claimed to be paid in full his proportion of the royalties received by the trustee in bankruptcy in respect of sales of the book since the bankruptcy. But it was held that he was only entitled to prove for damages for breach of contract in not paying the royalties, able publishing arrangement. Royalties due to an author, or to become due on a future accounting, under a publishing contract may be reached by a creditors' bill.98 A [256] F. Licenses-1. In General. The nature of a license has been indicated in distinguishing a license from an assignment.99 license to use a copyrighted work may be given by the owner of the copyright. In such case the legal title remains in the proprietor; and a beneficial interest, to the extent which is agreed on, vests in the other party who has acquired an equitable. right in the copyright and who may be properly styled "an assignee of an equitable interest." 2° [257] 2. Writing and Signing. Under a statute which merely requires an assignment of copyright to be in writing, a license to print and publish or otherwise use a copyrighted work may be given by parol.3 The act of 1909 makes no express provision on the subject of licenses.* Under prior statutes a license was required to be "in writing, signed in presence of two or more witnesses, to protect the licensee from liability for the statutory penalties, except in the case of dramatic or musical compositions, which could be per and could not claim for payment of the royalties in full. Ex p. Deeping, [1907] 2 K. B. 33. 4 BRC 597. 97. In re Howley-Dresser Co., 132 Fed. 1002; In re D. H. McBride, 132 Fed. 285; 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 [aff 6 De G. M. & G. 223, 55 EngCh 175, 43 Reprint 1218]; Griffith v. Tower Pub. Co., [1897] 1 Ch. 21; Lucas v. Moncrieff, 21 T. L. R. 683. 6 formed or represented by a licensee, although the consent of the proprietor or his heirs or assigns was not evidenced by writing. A part owner of a copyright could not authorize the publication of the copyrighted work by a stranger except in writing, as required by the statute." In England, under the act of 1911, a license, to be valid, must be in writing signed by the owner of the right or by his duly authorized agent. Under former statutes also the consent in writing of the owner was necessary to the validity of a license." But a parol license followed by acquiescence afforded the licensee a defense to a bill in equity for an injunction and an accounting.10 11 In Canada, to afford a strict legal defense, a license must be in writing, but an oral license will defeat a bill in equity for an injunction.12 [258] 3. Assignability of Licenses. Where considerations of personal trust and confidence enter into a license contract, the rights of the licensee thereunder are not assignable. This is generally true of ordinary publishing agreements which are deemed to involve the personality of the publisher,1 even where such publisher is a corporation,15 or a limited liability company. But this rule does not the trustee. by operation of law, the See supra § 248. 99. [a] The part owner of a dramatic 2. Black v. Henry G. Allen Co., 42 3. Power v. Walker, 4 Campb. 8. 4. Act March 4, 1909 (35 U. S. St. at L. 1075). 1909 (35 U. S. St. at L. 1075 c 320 5. U. S. Rev. St. § 4964, as "The precise question was considered in England by Sterling, J., in the recent case of Griffith v. Tower Pub. Co., [1897] 1 Ch. 21, where, after reviewing the authorities, the learned justice held it clear that an agreement between author and publisher was of a personal nature, and that the benefit of it was not assignable by a receiver in bankruptcy. An injunction was granted against the receiver, who was threatening to [a] The only reference to licenses sell all of his rights under the agree- in the entire act is in reference to ment between the author and the the use of devices for the mechanical bankrupt publisher, to another pub-reproduction of music. Act March 4. lishing house. The same suggestion was made in that case as in this, viz., that the receiver was only selling the right, title and interest of the bankrupt, and that only the purchaser was affected by the claim of non-assignability. But the learned justice disposed of the suggestion in the following words: 'It is true that any assignment of the agreement might be inoperative; but still, it might give rise to disputes between the plaintiff and persons who might seek to avail themselves of the position of assignees.' That such disputes do arise is evident from the decision in the leading English case of Stevens v. Benning, 1 Kay & J. 168, 69 Reprint 414 [aff 6 De G. M. & G. 223, 55 EngCh 175, 43 Reprint 1218], where the purchasers of the copyrights at an assignment sale sought to restrain the author from publishing the same work through another publisher. This case, together with Hole v. Bradbury, 12 Ch. D. 886. and Reade v. Bentley, 4 Kay & J. 656, 70 Reprint 273, are additional authorities for the conclusions I have reached in this matter." In re McBride, 132 Fed. 285, 288. [a] Reclamation of copyright."The title to the copyrights being in [a] Oral evidence of a written license, which was not produced and not satisfactorily accounted for, to use copyrighted matter, can be disregarded in a suit for infringement, where the complainant, who was the alleged licensor, was not the owner of the copyright at the date the 6. U. S. Rev. St. $ 4966. as 324. 8. 16 or block for printing see supra 67. 9. St. 25 & 26 Vict. c 68 § 3; 5 & 6 Vict. c 45 & 15; 3 & 4 Wm. IV c 15; 54 Geo. III c 156; 8 Anne c 19; Eaton v. Lake, 20 Q. B. D. 378; Cooper v. Stephens, [1895] 1 Ch. 567; Hole v. Bradbury, 12 Ch. D. 886; Morton v. Copeland, 16 C. B. 517, 81 ECL 517, 139 Reprint 86; Davidson v. Bohn, 6 C. B. 456, 60 ECL 456, 136 Reprint 1327; Jefferys v. Boosey, 4 H. L. Cas. 815. 10 Reprint 681; Power v. Walker, 3 M. & S. 7, 105 Reprint 514; Strahan v. Graham, 17 L. T. Rep. N. S. 457; Edwards v. Cotton, 19 T. L. R. 34. 10. Rundell v. Murray, 1 Jac. 311, 4 EngCh 311, 37 Reprint 868; Platt v. Button, 19 Ves. Jr. 447, 34 Reprint 583. 11. Rev. St. (1906) c 70 § 17; Allen v. Lyon, 5 Ont. 615. See 12. Allen v. Lyon, 5 Ont. 615. 13. See cases infra note 14. also generally Assignments §§ 46, 47. 14. In re Howley-Dresser Co., 132 Fed. 1002; In re McBride, 132 Fed. 285; Pulte v. Derby, 20 F. Cas. No. 11,465, 5 McLean 328; Wooster v. Crane, 73 N. J. Eq. 22, 66 A 1093; Griffith v. Tower Pub. Co., Ltd., [1897] 1 Ch. 21 (limited company); Hole v. Bradbury, 12 Ch. D. 886; Stevens v. Benning, 6 De G. M. & G. 223, 55 EngCh 175, 43 Reprint 1218; Reade v. Bentley, 4 Kay & J. 656, 70 Reprint 273; Reade v. Bentley, 3 Kay & J. 271, 69 Reprint 1110; Stevens v. Benning, 1 Kay & J. 168, 69 Reprint 414 [aff 6 De G. M. & G. 223, 55 EngCh 175, 43 Reprint 1218]; Gibson v. Carruthers, 8 M. & W. 321, 151 Reprint 1061 (where it was said that the death or bankruptcy of a publisher will terminate a publishing agreement); Lucas v. Moncrieff, 21 T. L. R. 683. [a] A half-profit agreement cannot be assigned by a publisher's firm to a firm which has succeeded to their business, but which contains none of the partners of the original firm. Hole v. Bradbury, 12 Ch. D. 886. 15. In re McBride, 132 Fed. 285; Wooster v. Crane, 73 N. J. Eq. 22, 66 A 1093. [a] Reorganized corporation.-A publishing contract with a corporation cannot be assigned to a corporation formed under the laws of another state, although composed of practically the same personnel. Wooster v. Crane, 73 N. J. Eq. 22, 66 A 1093. 16. Griffith v. Tower Pub. Co., Ltd., [1897] 1 Ch. 21. [a] Reason for rule.-"An author may have confidence in a limited apply where there is an absolute and unqualified assignment of the copyright to the publisher.17 But there may be agreements which are technically licenses under which the rights granted are assign able,18 as where an intent appears to grant absolutely particular rights and privileges under the copyright without regard to the personality of the licensee.19 [§ 259] 4. Construction and Operation of company as well as in an individual publisher. A limited company may have a reputation for producing books in good style and attractive form, and an author selecting such a company as his publisher may do so in the reasonable expectation that the company, although its members and its officers may fluctuate, may nevertheless consider itself under an obligation to maintain its reputation." Griffith V. Tower Pub. Co., Ltd., [1897] 1 Ch. 21, 24. 17. In re Howley-Dresser Co., 132 Fed. 1002. 18. 9, 46. See generally Assignments 19. See cases supra § 247 (many of which treat such licenses as valid partial assignments from which the text proposition would follow). 20. See generally Contracts §§ 481492. And see Holt v. Silver, 169 Mass. 435, 48 NE 837 (construction of publishing contract); Bowden v. Amalgamated Pictorials, [1911] 1 Ch. 386 (offer and acceptance necessary to conclude license contract). 21. Mills, Inc. v. Standard Music Roll Co., 223 Fed. 849; Maxwell v. Faust Co., 90 Misc. 702, 154 NYS 224; Strahan v. Graham, 17 L. T. Rep. N. S. 457 [aff 16 L. T. Rep. N. S. 87]. to [a] "Serial rights."-"The words 'serial rights' have, as plaintiff alleges (and this allegation must be accepted for the purposes of this motion), a definite meaning among publishers, and are understood comprehend all publishing rights, including magazine and newspaper publishing rights, and excepting only book, dramatic, and moving picture scenario rights." New Fiction Pub. Co. v. Star Co., 220 Fed. 994, 995. [b] The term "played in stock" is a term having a technical meaning in the trade, referring to a play produced by some company other than the owner under a license, on the customary commission of ten per cent of the gross receipts. Fitch v. Shubert Theatrical Co., 174 App. Div. 229, 160 NYS 1066. [c] Mistake of fact-Where a contract for royalties for licensing plays to be played in stock was made under a mistake of fact, a court of equity would give plaintiff some relief, either on that ground or on ground of constructive fraud. Fitch v. Shubert Theatrical Co., 174 App. Div. 229, 160 NYS 1066. [d] Liability for agreed compensation. The fact that a licensee of the right to perform musical compositions had given no performances for profit did not relieve him from his fiability for the agreed monthly compensation. Maxwell v. Faust Co., 90 Misc. 702, 154 NYS 224. 22. Hudson V. Patten, 1 Root (Conn.) 133; In re Jude's Musical Compositions, [1907] 1 Ch. 651 (serial or volume publication); Griffith v. Tower Pub. Co., Ltd., [1897] 1 Ch. 21 (serial or volume publication); Reade v. Bentley, 4 Kay & J. 656, 70 Reprint 273; Duck v. Mayen, 8 T. L. R. 339 (performing license). [a] Meaning of "edition."-"An 'edition' of a work is the putting of it forth before the public, and if this be done in batches at successive periods, each successive batch is a new edition; and the question whether the individual copies have been printed by means of moveable type or by stereotype does not seem 20 License Contracts. The general rules governing the construction and operation of contracts apply generally to copyright license contracts." The terms of the license contract and the intent of the parties are the paramount considerations.21 Licenses may 23 23. Holt v. Silver, 169 Mass. 435, 48 NE 837; Reade v. Bentley, 4 Kay & J. 656, 70 Reprint 273. [a] Where no time is fixed, a license is revocable. London Printing, etc., Alliance v. Cox, [1891] 3 Ch. 291; Warne v. Routledge, L. R. 18 Eq. 497; Reade v. Bentley, 3 Kay & J. 271, 69 Reprint 1110. be limited or unlimited as to editions, duration, or extent; 22 they may be revocable or irrevocable during an ascertained period; and may or may not be exclusive. Any limitations or conditions which to me to be material. If moveable | make any use of the same that he type is used, the type having been might see filt, it was held that neither broken up, the new edition is pre- the holder of the legal title nor any pared by setting up the type afresh, one claiming under her had the right printing afresh, advertising afresh, to use such notes without the reand repeating all the other necessary quired consent of the editor. Lawsteps to obtain a new circulation of rence v. Dana, 15 F. Cas. No. 8,136, the work. In that case the contem- 4 Cliff. 1. plated break between the two editions is more complete, because until the type is again setup,_nothing further can be done. But I apprehend it makes no substantial difference as regards the meaning of the term 'edition,' whether the new thousand' have been printed by a re-setting of moveable type, or by stereotype, or whether they have been printed at the same time with the former thousand, or subsequently. A new 'edition' is published whenever, having in his storehouse a certain number of copies, the publisher issues a fresh batch of them to the public. This, according to the practice of the trade, is done, as is well known, periodically. And if, after printing 20,000 copies, a publisher should think it expedient, for the purpose of keeping up the price of the work, to issue them in batches of a thousand at a time, keeping the rest under lock and key, each successive issue would be a new 'edition' in every sense of the word." Reade v. Bentley, 4 Kay & J. 656. 667, 70 Reprint 273 (this was said in answer to the contention that when a work has once been stereotyped the term "edition" is no longer applicable, and that when a work is published in what are called "thousands," twenty thousand or thirty thousand being circulated, each thousand could not properly be called an edition). [b] Subsequent editions.-—The author of an article, who has licensed its use in some general book containing articles of a like character, such for instance as an encyclopedia, fairly and reasonably intends, in the absence of some explicit declaration to the contrary, that future editions of the book containing the article may be issued, and also that such future editions may be characterized by omissions or additions of other articles, or changes in the other articles within fair limits, if such changes are not inconsistent with the general tenor of the original work. Per Grosscup, D. J., in Gabriel v. McCabe, 74 Fed. 743 (where defendant had been, by the owner of the copyright, licensed to publish a song in a certain collection, which he did; later on defendant published the song in an abridged and also in an larged edition of the original collection, and in neither the abridged nor the enlarged work was there any change in the print of the music or the words of the copyrighted song, nor was there any change in the music and words of the other songs, except that in the abridgment certain songs were omitted; and it was held that defendant was by virtue of his license entitled to make the republications complained of). en [c] Restricted use of annotations. -Under an agreement between the holder of the legal title to copyrights and the editor of a new edition that the former should make no use of the notes in the new edition without the written consent of the editor, and that he should be given the right to [b] A profit sharing agreement between the author and publisher, by which the publisher assumed the expense and risk, confers a license which the author may revoke after the publication of a given edition, notwithstanding the publisher has made stereotyped plates of the work. Reade v. Bentley, 4 Kay & J. 656, 70 Reprint 273. 24. Baldwin v. Baird, 25 Fed. 293; Pulte v. Derby, 20 F. Cas. No. 11,465, 5 McLean 328; Willis v. Tibbals, 33 N. Y. Super. 220; Heap v. Hartley, 42 Ch. D. 461; Warne v. Routledge, L. R. 18 Eq. 497. [a] Royalty contracts.-(1) Where an authoress entered into a verbal agreement with a publisher that he should publish a work at his own expense and pay her a royalty, and the work was accordingly published, but before all the copies were sold she arranged with another publisher to bring out a second edition of her work, it was held that no agreement could be implied on the part of the authoress not to bring out a new edition until all the first edition was sold, and that a suit against her and the second publisher to restrain such publication could not be sustained. There may, however, be an express agreement giving the licensee an exclusive right during a definite period. Warne v. Routledge, L. R. 18 Eq. 497. (2) In the absence of an established usage a contract whereby a publisher agrees to publish a copyrighted work and to pay the author a fixed sum for each copy published does not give an exclusive right of publication. Willis v. Tibbals, 33 N. Y. Super. 220. (3) An author of a work in manuscript contracted with a publisher in writing, but not under seal, or attestation, or acknowledgment, that he might publish a first edition of one thousand copies paying the author fifteen cents for each copy sold; and if a second edition should be called for the author would revise and correct the first edition and the publisher would stereotype it and might print as many copies as he could sell, paying the author twenty cents for each copy sold. The publisher took out a copyright in his own name, with the knowledge and consent of the author, and, the first edition being exhausted, stereotyped the corrected manuscript of the second edition, but only printed one thousand five hundred copies of the first impression, and when these were sold proceeded to print more called a third edition, accounting to the author according to the contract. then sold the plates to a publisher in another state to account to himself on the same terms. The author thereupon revised a third edition and He form of a spoken drama, if such is the intent.29 But the circumstances and the language used in the license agreement may exclude the right to produce the work as a photoplay.30 A license to use a musical composition in the manufacture of sound records for use in mechanical reproduction is limited to the music alone, so that printing and distributing the words is an infringement.31 A license to reproduce engravings or other pictures as illustrations 27. Bobbs-Merrill Co. v. Universal, ownership of Fitch's work by FrohFilm Mfg. Co., 160 NYS 37. man for all purposes. The language there was: the parties see fit to insert will be binding and may be enforced,25 except where they are contrary to public policy, or in violation of law. 26 Time of performance by the licensee may be of the essence, whether expressly made so or not,27 as in the case of a license to produce a photoplay on a royalty basis.28 A license to dramatize a nondramatic work may include the right to do so by means of a motion picture photoplay as well as in the ordinary caused it to be stereotyped and printed, and took out a copyright in his own name, and then sought an injunction against the publishers who filed their cross bills against him. praying an injunction. It was held that the author had no right to print an edition for himself and take out a copyright so long as his licensee complied with his contract. Pulte v. Derby, 20 F. Cas. No. 11,465, 5 McLean 328. [b] Exclusive license until sale of whole edition.-By an agreement between the author and a bookseller, after reciting that the author had prepared a new edition of one of his works and that the bookseller was desirous of purchasing it, it was agreed that a named printer should print two thousand five hundred copies of the work of a certain type and style at the sole cost of the bookseller, and that the latter should pay to the author, for the said edition, a certain sum by installments, the first to be paid as soon as the edition was ready for publication, the work to be divided into three volumes and to be sold to the public at a specified sum. It was held that the bookseller was not merely a purchaser of the two thousand five hundred copies of the work, but was in equity a licensee to the extent that he was to be the sole publisher of it until the whole edition, consisting of two thousand five hundred copies, should be sold. Sweet v. Cater, 11 Sim. 572, 34 EngCh 572, 59 Reprint 994. A [c] Exclusive rights in defined territory. By contract between the owner of a copyright and a firm of publishers, the territory was divided by specified boundaries between them, and the latter were given the exclusive privilege of printing and manufacturing, and were bound to furnish the author at cost price with such copies as he might need to supply the territory allotted to him. dispute arose as to what was a fair cost price, and the publishers refused to supply the copies required. The owner of the copyright proceeded to reprint the work and to sell it in the territory of complainants as well as in his own. It was held that the breach of contract by complainants did not justify the owner of the copyright in assuming that the contract was canceled. His proper remedy was an action for damages. Baldwin v. Baird, 25 Fed. 293. [d] Exclusive license to perform. -Where a copyrighted play was conveyed on the condition, among others, that the transferee should perform such play at least fifty times within one year from the date of the agreement, the transferee is entitled to an injunction restraining the transferors from assigning the right to a third person, although the transferee has not produced the play and has refused to produce it in connection with a certain other actor, where time still remains within which the transferee may produce the play the requisite number of times. Widmer v. Greene, 56 HowPr (N. Y.) 91. 25. Bobbs-Merrill Co. v. Universal Film Mfg. Co., 160 NYS 37; London Printing, etc., Alliance v. Cox, [1891] 3 Ch. 291 (of license to print in monochrome). 26. See infra § 260. Illegal contracts see generally Contracts §§ 339-480; Monopolies [27 Cyc 888]. 28. Bobbs-Merrill Co. v. Universal Film Mfg. Co., 160 NYS 37. [a] Rule applied. Where a contract provided for sale of right to produce photoplays, defendant agreeing to produce them within nine months, time was of the essence, and failure to produce within that time, or to make additional payment for an extension, was a breach justifying plaintiff in declaring contract at an end. Bobbs-Merrill Co. v. Universal Film Mfg. Co., 160 NYS 37, 39 (where the court said: "Although time is not by the terms of the contract in this case made of the essence thereof, it is manifestly so from the very subject-matter of the agreement. Plaintiff's royalties depend upon the production of the plays, and the longer their production is delayed the less in point of substance will be the plaintiff's returns. The situation disclosed has thus, to my mind. none of the elements of that forfeiture' which equity abhors, but partakes rather of the nature of defendant's determination to expropriate plaintiff's property and retain it without compensation. Indeed, defendant's complaint that plaintiff refuses to grant an extension of time without an additional payment indicates that plaintiff is not insisting on a forfeiture. Defendant's refusal to meet this apparently reasonable request shows that it is not even willing to do that which is equitable or fair to protect its interests in the agreement"). 29. Harper v. Klaw, 232 Fed. 609. [a] Illustration.-"If by the agreement of 1899 the defendants had been granted the exclusive right of dramatizing Ben Hur, or producing any play or plays that might be made out of Ben Hur, there would be no doubt at all as to their right to make a 'movie play,' as well as the kind of play that has heretofore been produced." Harper v. Klaw, 232 Fed. 609, 612. 30. Harper v. Klaw, 232 Fed. 609; Klein v. Beach, 232 Fed. 240 [aff 239 Fed. 108, 151 CCA 282]. See Frohman v. Fitch. 164 App. Div. 231, 149 NYS 633 (license under common-law dramatic right). [a] Dramatization as including motion pictures.-(1) "The right to dramatize a novel for presentation on the stage does not necessarily carry with it all the motion picture rights. There is nothing in the reported cases to lead to any other conclusion. In the Kalem Case [Kalem Co. v. Harper. 222 U. S. 55, 32 SCt 20, 56 L. ed. 92, Ann Cas1913A 1285 (aff 169 Fed. 61. 94 CCA 429)], a contract was not being construed, but the court was dealing with the question as to whether one without authority could appropriate the essential features of a copyrighted work and produce them in a motion picture. The court held that such a production was dramatized within the meaning of the statute. No one now questions that the moving picture may show a dramatization, and in the case at bar the presentation on the screen is a dramatization; but we are not dealing with definitions, but with the intent of the parties. In Frohman v. Fitch, 164 App. Div. 232. 149 NYS 633, Fitch, who had agreed to write and deliver a play, had sold his original work to Frohman under a broad grant which clearly comprehended the 'Whereas, the said party of the first part [Fitch] agrees to write and deliver a play on or before January 1, 1901; and, 'Whereas, the said party of the second part [Frohman] desires the exclusive right to produce or to have produced the said play in the United States of America and in Canada: 'Now, therefore the said party of the first part agrees to sell, assign, and transfer, and thereby does sell, assign, and transfer to the said party of the second part the exclusive right to produce the said play in the United States of America and in Canada, for which sale, assignment and transfer the said party of the second part agrees to pay to the said party of the first part or his authorized agent, as follows.' In Harper v. Klaw, 232 Fed. 609, decided by Judge Hough on January 6, 1916, the agreement was made at a time (1899) when motion picture plays were not in the contemplation of either party, and he held, on the facts in that case, therefore, that neither party could produce motion pictures. He was considering a contract made at a time when conditions were radically different from those which existed in 1911; but, in so far as he construed the language used in that contract (which, in substance, resembles that in the case at bar), he held that the grant did not pass the motion picture rights." Klein v. Beach, 232 Fed. 240, 246 [aff 239 Fed. 108, 151 CCA 282]. (2) "The right conferred was to produce one version only, and that in a particular manner, and in places limited to cities of a certain size. The contract prohibits any change in the manner of performance or text, and contains provisions as to royalties and their computation, confessedly incapable of application to any method of producing photoplays in commercial use or known to witnesses or counsel. It is unnecessary to expand this thought. The whole arrangement made between the parties in 1899 is not only inconsistent with, but repugnant to, the_thought of making 'movies' out of Ben Hur. This differentiates the case at bar from Frohman v. Fitch, 164 App. Div. 231, 149 NYS 633, with which I fully concur; but these defendants never got so ample a grant as did Mr. Frohman." Harper v. Klaw, 232 Fed. 609, 612. [b] Judicial notice of motion picture photoplays. "It may be assumed that in November, 1911, the time of the contract, the motion picture play was well known. This knowledge is judicially obtained from the files of the court and from reported decisions, notably Kalem Co. v. Harper, 222 U. S. 55, 32 SCt 20, 56 L. ed. 92, AnnCas1913A 1285 [aff 169 Fed. 61, 94 CCA 429]." Klein v. Beach, 232 Fed. 240, 244 [aff 239 Fed. 108, 151 CCA 282]. 31. Mills, Inc. v. Standard Music Roll Co., 223 Fed. 849. [a] Rule applied.-A license agreement which recites that plaintiff is the owner of a copyrighted musical composition, that defendant desires to secure the privilege of using it in the manufacture of its music rolls, and which declares that plaintiff gives to defendant the privilege to use the copyrighted musical composition in the manufacture of its sound records in any form, and con |