the courts. Haynes & Co. v. Druggists' Circular, 32 F.2d 215 (CCA 2, 1929).

Attorney's Fee and Costs (Section 40)

Under section 40 the court "may award to the prevailing party a reasonable attorney's fee as part of the costs." Thus it is within the sound discretion of the court whether to award or to deny any such fee. In making the award, the court gives consideration to the importance of the questions involved, the amount of pecuniary damages, the value of the professional services rendered, and the success achieved. Universal Film Co. v. Copperman, 218 F. 582 (CCA 2, 1914), footnote to case. For a more elaborate statement of the elements to be considered, see In re Osorsky, 50 F.2d 927 (1931). The appellate court has power to review the award and to reduce it if found excessive. Davilla v. Brunswick, 36 USPQ 398 (CCA, 2, 1938).

On the other hand, the allowance of "full costs" is made mandatory (as under the prior law, R.S. 927), thus taking it out of the operation of section 815 of the Judicial Code which provides that when a plaintiff brings action in a district court and recovers less than $500, exclusive of costs (in a case which cannot be brought there unless the amount in dispute exceeds that sum), the allowance of costs is discretionary with the court.

Chapter XIV

Miscellaneous Provisions of Copyright Act

False Notice of Copyright (Section 29)

"That any person who, with fraudulent intent, shall insert or impress any notice of copyright required [provided] by this Act, or words of the same purport, in or upon any uncopyrighted article . . . shall be guilty of a misdemeanor, punishable by a fine of not less than $100 and not more than $1000." The italicized words seem to contemplate only works which might have been copyrightable but have fallen into the public domain either by lapse of time or failure to comply with the statutory requirements. The corresponding phrase in the prior law was: "whether such article be subject to copyright or otherwise" (R.S. 4963, as amended, 29 St. L. 694). This was designed to penalize the use of the notice on non-copyrightable works as well as its use on copyrightable works the titles of which had not previously been entered as required by the old law.

Prohibition of Importation (Section 31)

"That during the existence of the American copyright in any book the importation into the United States of any piratical copies thereof or of any copies thereof (although authorized by the author or proprietor) which have not been produced in accordance with the manufacturing provisions specified in section 15 of this Act, . . . shall be, and is hereby, prohibited."

While this says "any book", without qualification, it only applies to a book in the English language, for section 15 expressly exempts from the operation of the manufacturing clause "the original text of a book of foreign origin in a language or languages other than English". Section 15 also exempts "books published abroad in the English language seeking ad interim protection under this Act". In the case of the latter, however, it seems that the exemption applies only to the copy imported for ad interim registration, and ceases to operate after

such registration, for "American copyright" has thereby been secured.

The exemption in subsection (c) in favor of books in foreign languages applies to a case where only a translation into English has been copyrighted in this country. But if copyright has been secured in the United States for the original, the importation of copies of the authorized foreign edition is likewise necessarily sanctioned by virtue of the exemption in section 15. This subsection applied to the situation under the prior law but is out of line with the present law.

In all cases where copies of copyrighted books are permitted to be imported by individuals, libraries, etc., the closing proviso expressly prohibits any use to be made thereof in violation of the rights of the proprietor of the American copyright.

Unlawful Importation (Section 33)

This section was amended by Act approved April 11, 1940 (Public No. 450, 76th Cong.), for the more effective administration of the provisions of section 30 relating to piratical copies of any copyright work and of section 31 relating to books prohibited importation. (The new Customs Regulations formulated under the amendment will be found in the Appendix.) Copyright Distinct from Material Object (Section 41)

Whether or not copyright is "property" is a question we shall leave to the scholastics to wrangle over. Sufficient for our purposes that it is recognized and protected as such by the law.

This section merely reaffirms well-established law. Copyright is an intangible right attaching to a tangible thing, namely, the writing of an author, and may remain in the person entitled thereto even after he parts with the tangible thing. The transfer of the latter is a physical act, while the transfer of the former, the copyright, is a mental act which must be evidenced in the form of "an instrument in writing signed by the proprietor of the copyright", as provided in the next section. Public Ledger v. Post Printing & Pub. Co., 294 F. 430 (CCA 8, 1923); Davenport Quigley Expedition v. Century Productions, Inc., 32 USPQ 608 (1937).

The same principle applies where an author parts with his manuscript. He may retain or dispose of all or a part of his common-law rights, including the right to secure copyright, and these rights may be transferred by parole. Witmark v. Cal

loway, 22 F.2d 412 (1927); Parton v. Prang, Fed. Cases No. 10,784 (1872).

Adverse possession of the manuscript, however, is prima facie evidence of title, and presumptively includes all the rights recognized by the common law, among them being the privilege of publication and of securing a statutory copyright. GerlachBarklow Co. v. Morris & Bendien, Inc., 23 F.2d 159 (CCA 2, 1927); O'Neill v. General Film Co., 157 N.Y.S. 1028 (NY App. Div. 1916).

Assignments, Mortgages and Bequests (Section 42)

"That copyright secured under this or previous acts of the United States may be assigned, granted, or mortgaged by an instrument in writing signed by the proprietor of the copyright, or may be bequeathed by will."

It is difficult to reconcile the various expressions of the courts on the problem whether or not a grant of anything less than the sum total of the rights embraced in copyright constitutes a true assignment or merely a license, at least for the purpose of bringing suit for infringement. But the weight of authority seems to be that such limited grants operate merely as licenses, although often spoken of as assignments, and hence the licensor must be joined as a party to the suit. Witmark v. Pastime Amusement Co., 298 F. 490 (1924); Eliot v. Geare-Marston, Inc., 43 USPQ 249 (1939). In Goldwyn Pictures Co. v. Howell Sales Co., 282 F. 9 (CCA 2, 1922), Judge Hough remarked that "the license under a copyright is analogous with that under a patent so far as affects the right to sue, and beginning with the much cited case of Waterman v. Mackenzie, 138 U.S. 252 (1891), the inability of a licensee to sue for an infringement [solely in his own. name] is no longer an arguable question." The object of course is to avoid a multiplicity of suits for the same infringement.

An examination of the Waterman case, however, reveals the interesting fact that the Supreme Court remarked that if the right granted was the exclusive right "to make, sell and operate a patented machine within a given territory", this would be an assignment and not a mere license.

In Photo-drama v. Social Uplift Film Co., 213 F. 374 (1914), it was held that the grant of moving-picture rights in a play was an assignment of the copyright, and that such grant was void as against a subsequent purchaser of any such right, with

out actual notice, where it was not recorded in the Copyright Office within three months after execution as provided in section 44. See also Brady v. Reliance Motion Picture Corp., 229 F. 137 (CCA 2, 1916).

If section 42 were changed to read: "That copyright or any right or rights embraced therein may be assigned", etc., and section 36 were changed to include owners of partial rights among the parties "aggrieved", the problem of "divisible copyright" which has so long plagued the authors would be largely solved in this respect.

Trustee in Bankruptcy

The title of a bankrupt proprietor of copyright passes to his trustee in bankruptcy by operation of law. U. S. Code, Title 11, section 110: "The trustee of the estate of a bankrupt, upon his appointment and qualification, and his successor or successors if there be one . . . shall in turn be vested by operation of law with the title of the bankrupt as of the date he was adjudged a bankrupt. . . to (1) all documents relating to his property; (2) interests in patents, patent rights, copyrights, and trade marks." And, further, that such property rights may, when practicable, be sold by the trustee, subject to the approval of the court; and that the title to such property when sold shall be conveyed to the purchaser by the trustee. The assignment of any copyrights by the trustee should be recorded in the Copyright Office, as constructive notice of the transaction.

In the case of In re Waterson, Berlin & Snyder Co., 48 F.2d 704 (CCA 2, 1931), it was held that the trustee in bankruptcy was authorized to sell the copyrights of the bankrupt, but subject to the authors' right to have the copyrights "worked" and to receive the royalties according to the original contracts between authors and publishers.

Recordation of Assignments and Mortgages (Sections 44 and 45)

The purpose here is of course to safeguard a purchaser or mortgagee against the possibility of there being a prior grant in existence covering the same copyright; similar to liens against real estate. Section 44 provides:

"That every assignment of copyright shall be recorded in the Copyright Office within three calendar months after its execution in the United States or within six calendar months