Copyrights Acquired under Prior Law (Section 24)

Section 24 became obsolete July 1, 1937, when section 23 went into operation. It related solely to copyright originally acquired under the prior law and still subsisting when the present Act came into force, July 1, 1909. The purpose was to extend to such copyrights the benefit of the increased renewal term; so that if the first term of 28 years, or the former renewal term of 14 years, was still running, it could be renewed or extended for 28 or 14 years respectively. This would bring the maximum protection up to 56 years in all, reckoning from the date of original entry of the title. In order to determine the exact status of the copyright in such cases, it is necessary to have a search made in the files and records of the Copyright Office.

Section 24 continued the renewal privilege to the author, widow and children as under prior law, and in addition, if none of these were living when the statutory year arrived, the privilege went to the author's executors, or in the absence of a will, to his next of kin. It further provided that if the work were a "composite work" upon which copyright was originally secured by the proprietor thereof, then "such proprietor" was entitled to renew, thus excluding his successor in interest.

Because section 24 did not mention an "employer for hire", the Copyright Office deemed that he was excluded from the right of renewal thereunder, and so consistently refused to register a claim presented on that basis. But when the question came up later for adjudication, the court held that section 62 must be taken into consideration in this connection, wherein it is provided that "in the interpretation and construction of this Act. . . the word 'author' shall include an employer in the case of works made for hire", the effect of this being to take away from the actual author, his widow, children, etc., the privilege of renewal for such works and to confer it exclusively upon the employer for hire. Tobani v. Carl Fischer, Inc., 38 USPQ 198 (CCA 2, 1938), certiorari denied, 39 USPQ 559. [See later comments in Shapiro v. Bryan, 51 USPQ 422 (CCA 2, 1941).]

In this case the lower court (36 USPQ 97) had held that the renewals actually taken out by one of the children of the deceased author (the widow having died before the statutory year arrived) were valid but belonged to the defendant, the

successor in interest to the original employer for hire, and ordered the renewed copyrights to be assigned to the defendant. On this point, however, the Circuit Court of Appeals took a different view and held that the renewals thus taken out were void, because the author in his contract of employment had parted with all interest in the works in question and therefore the children of the author had no rights to assign. And so the employer found himself between the devil and the deep sea, inasmuch as he had failed to apply for renewal, and the works fell into the public domain. Had he taken the precaution to apply for renewal as "author" of a work made for hire (by virtue of section 62), the court would undoubtedly have given cognizance to that fact even though the registration was refused. See White-Smith Music Pub. Co. v. Goff, 187 F. 247 (CCA 1, 1911).

Summary of Principles in Relation to Renewals

(a) If the author dies before the renewal year arrives, leaving no surviving spouse or children, the right to renew is given by the statute directly to the author's executors for the benefit of the persons entitled to receive the estate according to the law of the author's domicile at the time of his or her death; or, in the absence of a will, then to the author's next of kin. Fox Film Corp. v. Knowles, 261 U.S. 326 (1923). But no right of renewal is given to an assignee or legatee, nor to an administrator of the estate, including an administrator de bonis non with the will annexed. White-Smith Music Pub. Co. v. Goff, 187 F. 247 (CCA 1, 1911); Danks v. Gordon, 272 F. 821 (CCA 2, 1921); Silverman v. Sunrise Pictures Co., 290 F. 804 (CCA 2, 1923).

(b) The Attorney General rendered an opinion in 1910 for the guidance of the Register of Copyrights, that "he should be. governed by the language of the statute and grant a renewal to no one other than the person or persons mentioned therein." 28 Op. Att. Gen. 170.

(c) In White-Smith Music Pub. Co. v. Goff, supra, there is a dictum to the effect that the author or widow may, during the year prior to the expiration of the existing term, "assign the right to renewal, so that the then proprietor may make the new registration required, and take out the extension in his own. name." But there is no mention of an assignee in either section

23 or section 24 for the purpose of renewal. The approved course to take in such case is to register the renewal in the name of the statutory beneficiary in being, who may then assign all his right, title and interest in the new term of copyright thus secured. There is nothing in the statute to imply that the assignor must live out the year before the new copyright becomes vested in his assignee.

(d) Where the executor has concluded his duties and been discharged by the court before the arrival of the renewal year, it has been held that the situation is the same as if there had been no will (at least none affecting the renewal right), and that consequently, in the event of no widow or children surviving, the right of renewal passes to the author's next of kin. Silverman v. Sunrise Pictures Co., supra.

(e) Where the executor has exercised the renewal right, the person entitled to enjoy the renewed copyright will receive it through the executor without the need of any formal assignment from him; for the executor holds the property right only for the purposes of administration in accordance with the distribution order of the probate court. Fox Film Corp. v. Knowles, 274 F. 731 (1921).

(f) How far an executor is or can be discharged of his office by anything short of death or revocation of letters is a matter of state legislation and capable of greatly complicating questions arising under national statutes. Hough, J. in Silverman v. Sunrise Pictures Co., 273 F. 909 (CCA 2, 1921).

(g) The statute does not prevent the author from specifically agreeing to assign in futuro his own renewal rights, but the fulfillment of such contract is contingent upon his surviving into the renewal year. He cannot by any previous act of his own cut off the right of renewal from other beneficiaries named in the statute. Fox Film Co. v. Knowles, 274 F. 731 (1921); Witmark & Sons v. Fred Fisher Music Co., Inc., 49 USPQ 171 (1941), aff'd 52 USPQ 385 (CCA 2, 1942); Schirmer v. Robbins. Music Corp., 49 USPQ 467 (N.Y. Sup. Ct. 1941). The Schirmer case was an action for specific performance of a contract to renew in behalf of the assignee. In the Witmark and Fisher case, the contract authorized the plaintiff to apply for renewal in the name of the author and then, as the latter's attorney and representative, to draw up and record the assign

ment of the renewed copyright, which was done and held valid to pass title. The renewal right being personal to the author, it is doubtful whether, in the event of his dying before the statutory year arrives, the widow or children could be bound by having joined in any such contract. This would plainly be contrary to the general policy of the Act, and enable the author to accomplish indirectly what he is not permitted to do directly.

(h) Where two or more authors act in concert and common design, the resulting production is to be deemed a work of joint authorship rather than a composite work, and the authors are entitled to the renewal privilege. If one author takes out the renewal in his own name, he holds in trust for the benefit of all. Marks Music Co. v. Jerry Vogel Music Co., 52 USPQ 219 (DC SNY 1942). Where the original production was not the result of such joint authorship, the general rule is that each author is entitled to secure separate renewal for his own distinct component part of the work. Harris v. Coca-Cola Co., 23 USPQ 182 (CCA 5, 1934).

(i) Where there are several surviving children or next of kin, any one of them may renew for the benefit of all concerned as tenants in common; for otherwise, if one owner of a microscopic fraction of right cannot be found or can be bought off, the rest of the family would be helpless. Hence it is only by treating the act of a fraction as a class act that such possible injustice can be prevented. Hough, J. in Silverman v. Sunrise Pictures Co., 273 F. 909 (CCA 2, 1921).

(j) The term "children" of the author is apparently used in these renewal sections in the common-law sense of offspring, and does not include stepchildren or grandchildren. It has been so construed by the Copyright Office. In the case of adopted children, however, it appears that under the law of certain states (e.g., New York) they are made members of the family for all legal purposes, and hence the law of their domicile might properly be deemed to govern here.

(k) Where the author of a play died intestate prior to the renewal year, leaving no widow or children surviving him, and the copyright was duly renewed by his next of kin, the latter thereby "acquired a new and independent right in the copyright, free and clear of any rights, interests, or licenses attached to the copyright for the initial term." Fitch v. Schubert, 35

USPQ 245 (1937). which the defendants had acquired to use the play as the basis of a musical operetta expired by operation of the statute, when the original term ended and a new grantee appeared on the scene as owner of the copyright for the renewal term.

The court accordingly held that all rights

(1) Under section 23 the right of renewal of copyright in a work made for hire is not given to the employer as "author" as defined in section 62, but to the existing "proprietor". The application for renewal in such case should therefore describe the claimant as "proprietor of a work made for hire." Shapiro, Bernstein & Co., Inc. v. Bryan, 48 USPQ 69 (1940), aff'd 51 USPQ 422 (CCA 2, 1941).

(m) There is no express provision in the Act for a notice of renewal upon copies subsequently issued. In Fox Film Co. v. Knowles, 274 F. 731 (1921), District Judge Chatfield was of opinion that in such case a notice giving the year date of renewal and the name of the renewal claimant would in itself be sufficient without more. But the question is not entirely free from doubt, and it is recommended that the original notice be included as well. For example: Copyright 1914 by John Doe. Copyright renewed 1942 by Richard Roe.