318 U.S. 643 (1943), 327, Fred Fisher Music Co. v. M. Witmark & Sons

Docket Nº:No. 327
Citation:318 U.S. 643, 63 S.Ct. 773, 87 L.Ed. 1055
Party Name:Fred Fisher Music Co. v. M. Witmark & Sons
Case Date:April 05, 1943
Court:United States Supreme Court

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318 U.S. 643 (1943)

63 S.Ct. 773, 87 L.Ed. 1055

Fred Fisher Music Co.


M. Witmark & Sons

No. 327

United States Supreme Court

April 5, 1943

Argued January 14, 15, 1943




Under the Copyright Act of 1909, as amended, an author's right to obtain a renewal and extension of his copyright is assignable by him by an agreement made before the expiration of the original copyright term. P. 656.

125 F.2d 949 affirmed.

Certiorari, 317 U.S. 611, to review the affirmance of a decree of the District Court, 38 F.Supp. 72, granting an interlocutory injunction in a case of alleged copyright infringement.

FRANKFURTER, J., lead opinion

MR. JUSTICE FRANKFURTER delivered the opinion of the Court.

This case presents a question never settled before, even though it concerns legislation having a history of more than two hundred years. The question itself can be stated very simply. Under § 23 of the Copyright Act of

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1909, 35 Stat. 1075, as amended,1 a copyright in a musical composition lasts for twenty-eight years from the date of its first publication, and the author can renew the copyright, if he is still living, for a further term of twenty-eight years by filing an application for renewal within a year before the expiration of the first twenty-eight year period. Section 42 of the Act provides that a copyright

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"may be assigned . . . by an instrument in writing signed by the proprietor of the copyright. . . ." Concededly, the author can assign the original copyright, and, after he has secured it, the renewal copyright as well. The question is -- does the Act prevent the author from assigning his interest in the renewal copyright before he has secured it?

This litigation arises from a controversy over the renewal rights in the popular song "When Irish Eyes Are Smiling." It was written in 1912 by Ernest R. Ball, Chauncey Olcott, and George Graff, Jr., each of whom was under contract to a firm of music publishers, M. Witmark & Sons. Pursuant to the contracts, Witmark, on August 12, 1912, applied for and obtained the copyright in the song. On May 19, 1917, Graff and Witmark made a further agreement under which, for the sum of $1,600, Graff assigned to Witmark "all rights, title and interest" in a number of songs, including "When Irish Eyes Are Smiling." The contract provided for the conveyance of

all copyrights and renewals of copyrights and the right to secure all copyrights and renewals of copyrights in the [songs], and any and all rights therein that I [Graff] or my heirs, executors, administrators or next of kin may at any time be entitled to.

To that end, Witmark was given an irrevocable power of attorney to execute in Graff's name all documents

necessary to secure to [Witmark] the renewals and extensions of the copyrights in said compositions and all rights therein for the terms of such renewals and extensions.

In addition, Graff agreed that, "upon the expiration of the first term of any copyright," he would execute and deliver to Witmark

all papers necessary in order to secure to it the renewals and extensions of all copyrights in said compositions and all rights therein for the terms of such renewals and extensions.

This agreement was duly recorded in the Copyright Office.

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On August 12, 1939, the first day of the twenty-eighth year of the copyright in "When Irish Eyes Are Smiling," Witmark applied for and registered the renewal copyright in Graff's name.2 On the same day, exercising its power of attorney under the agreement of May 19, 1917, Witmark also assigned to itself Graff's interest in the renewal. Eleven days later, Graff himself applied for and registered the renewal copyright in his own name, and, on October 24, 1939, he assigned his renewal interest to another music publishing firm, Fred Fisher Music Co., Inc. Both Graff and Fisher knew of the prior registration of the renewal by Witmark and of the latter's assignment to itself. Relying upon the validity of the assignment made to it on October 24, 1939, and without obtaining permission from Witmark, Fisher published and sold copies of "When Irish Eyes Are Smiling," representing to the trade that it owned the renewal rights in the song. Witmark thereupon brought this suit to enjoin these activities. The District Court granted a preliminary injunction pendente lite solely upon the ground that there was no statutory bar against an author's assignment of his interest in the renewal before it was secured. 38 F.Supp. 72. The court considered no evidence, and made no findings upon the question whether equitable relief should be denied on other grounds, such as inadequacy of consideration, and the like.3 Upon appeal to the Circuit

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Court of Appeals for the Second Circuit under § 129 of the Judicial Code, 28 U.S.C. § 227, permitting appeals from interlocutory decrees, the order was affirmed. 125 F.2d 949. The Circuit Court of Appeals limited itself, as did the parties before it, to the question of statutory construction, wholly apart [63 S.Ct. 775] from the particular circumstances of the case. The court expressly left open "other contentions which the parties may wish and be entitled to raise on the merits, including possibly claims of inadequacy of consideration." 125 F.2d at 954. The petition for certiorari in this Court stated that the

sole question is whether . . . an agreement to assign his renewal, made by an author in advance of the twenty-eighth year of the original term of copyright, is valid and enforceable.

Because of the obvious importance of this question of the proper construction of the Copyright Act, we brought the case here. 317 U.S. 611.

Plainly, there is only one question before us -- does the Copyright Act nullify an agreement by an author, made during the original copyright term, to assign his renewal? The explicit words of the statute give the author an unqualified right to renew the copyright. No limitations are placed upon the assignability of his interest in the renewal. If we look only to what the Act says, there can be no doubt as to the answer. But each of the parties finds support for its conclusion in the historical background of copyright legislation, and to that we must turn to discover whether Congress meant more than it said.

Anglo-American copyright legislation begins in 1709, with the Statute of 8 Anne, c.19. That act gave the author and his assigns the exclusive copyright for fourteen years from publication, and, after the expiration of such term, if the author was still living, the copyright could be renewed for another fourteen years. The statute did not expressly provide that the author could assign his renewal interest during the original copyright term. But the

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English courts held that the author's right of renewal, although contingent upon his surviving the original fourteen-year period, could be assigned, and that, if he did survive the original term, he was bound by the assignment. Carnan v. Bowles, 2 Bro.C.C. 80; Rundell v. Murray, Jac. 311; see Maugham, Law of Literary Property (1828) 73; Curtis on Copyright (1847) 235. Subsequent English legislation eliminated the problem by providing for one continuous term of copyright. In 1814, the statute was amended to provide that the author and his assigns should have the copyright for twenty-eight years, "and also, if the author shall be living at the end of that period, for the residue of his natural life." 54 Geo. III, c. 156. In 1842, the copyright term was extended to forty-two years or the life of the author and seven years, whichever should prove longer. 5 & 6 Vict., c. 45; see Macgillivray, Law of Copyright (1902) 56-57. The English law today, with minor qualifications not relevant here, gives the author and his assigns the exclusive copyright for the life of the author and fifty years after his death. Copyright Act of 1911, 1 & 2 Geo. V, c. 34; see Oldfield, Law of Copyright (1912) 60-66; Robertson, Law of Copyright (1912) 44-50; Copinger, Law of Copyright (7th Ed.1936) 78-86.

In this country, the copyright laws enacted by the original thirteen states prior to 1789 were based largely upon the Statute of Anne. In 1783, the Continental Congress passed a resolution calling upon the states to adopt copyright legislation for the protection of authors and publishers. The resolution recommended that copyright be given to authors and publishers

for a certain time, not less than fourteen years from the first publication, and to secure to the said authors, if they shall survive the term first mentioned, and to their executors, administrators and assigns, the copyright of such books for another term of time not less than fourteen years.

Journals of

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the Continental Congress, 1774-1789 (1922), vol. XXIV, pp. 326-27. When the resolution was adopted, laws governing copyrights were on the statute books of at least three states, Connecticut, Massachusetts, and Maryland. The Connecticut and Maryland statutes substantially followed the Statute of Anne: in both states, copyright was granted for a term of fourteen years, renewable for another term of the same length if the author survived the original term. Connecticut, Acts & Laws (Green, 1783) 617-19; Maryland, Laws (Green, 1783) c. 34. The Maryland statute employed the phraseology of the Statute of Anne, providing simply that the privilege of renewal belonged to the author. The Connecticut statute, however, explicitly incorporated the construction made by the English courts, and conferred the right of renewal upon the author and "his heirs [63 S.Ct. 776] and assigns." The Massachusetts statute created a single copyright term of twenty-one years. Massachusetts, Acts & Laws (Edes, 1783) 236.


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