M. Witmark & Sons v. Fred Fisher Music Co.

• Decision Date: 11 February 1942
• Docket Number: No. 123.,123.
• Parties: M. WITMARK & SONS v. FRED FISHER MUSIC CO., Inc., et al.
• Court: U.S. Court of Appeals — Second Circuit

125 F.2d 949 (1942)

M. WITMARK & SONS v. FRED FISHER MUSIC CO., Inc., et al.

No. 123.

Circuit Court of Appeals, Second Circuit.

February 11, 1942.

Stuart H. Aarons, of New York City (R. W. Perkins, of New York City, on the brief), for plaintiff-appellee.

John Schulman, of New York City (Hays, St. John, Abramson & Schulman and Milton Sargoy, all of New York City, on the brief), for defendants-appellants.

Before AUGUSTUS N. HAND, CLARK, and FRANK, Circuit Judges.

CLARK, Circuit Judge.

We are presented with a question of statutory construction which has apparently never arisen before, though the general statutory provision has existed for over a hundred years. Simply stated, the problem is whether or not a copyright holder may assign his expectancy of the renewal right which arises under 17 U.S.C.A. § 23 at the expiration of the original twenty-eight year copyright grant. The district court upheld the validity of the assignment. 38 F.Supp. 72. This was in accordance with a strong dictum of this court in the case of Tobani v. Carl Fischer, Inc., 2 Cir., 98 F. 2d 57, 60, certiorari denied 305 U.S. 650, 59 S.Ct. 243, 83 L.Ed. 420. We think it interpreted the law correctly.

The question arose in connection with the renewal of the copyright on the song "When Irish Eyes Are Smiling." One of the defendants, George Graff, Jr., collaborated in the writing of this song in 1912, at which time he was acting under a general agreement to assign all copyrights to the plaintiff, M. Witmark & Sons, with a reservation of royalties. Five years later, Graff has stated, he was in financial difficulties; at any rate he then entered into a second agreement with the plaintiff by which for the consideration of $1,600 he released all his royalties on some sixty-nine songs, including "When Irish Eyes Are Smiling," and also made a further assignment of the renewal rights. This further assignment purported to bind Graff and his "heirs, executors, administrators and next of kin," and granted an irrevocable power of attorney to plaintiff to execute in Graff's name or that of his heirs, etc., all documents necessary to secure the renewal of the copyright and all rights therein for the term of the renewal. That is, the assignment was supported by the traditional power of attorney to enforce its terms, which has historically been the bridge whereby assignments anciently not recognized "at law" were actually made effective according to the intent of the parties. Cook, The Alienability of Choses in Action, 29 Harv.L.Rev. 816, 822, 824; Ames, Lectures on Legal History, 213, 214; 34 Yale L.J. 409; In re Barnett, 2 Cir., 124 F. 2d 1005, 1008. This agreement, dated May 19, 1917, was duly recorded in the Copyright Office on November 19, 1935.

On August 12, 1939, the first day of the twenty-eighth year of the copyright in question — renewals must be applied for within that year — plaintiff entered an application for renewal in Graff's name, registered the renewal in Graff's name, assigned the renewal copyright to itself, and recorded the assignment. Eleven days later Graff applied for his renewal and assigned this renewal to defendant Fred Fisher Music Co.¹ When Fisher threatened to publish the song, the plaintiff instituted this action asking for an injunction, accounting, and damages, and moved for an injunction pendente lite. On the grounds that the assignment was valid, the motion was granted below and this appeal followed.

We start with the statute. It says that "the author * * * if still living, or the widow, widower, or children of the author, if the author be not living, or if such author, widow, widower, or children be not living, then the author's executors, or in the absence of a will, his next of kin shall be entitled to a renewal and extension of the copyright * * * for a further term of twenty-eight years when application for such renewal and extension shall have been made * * * within one year prior to the expiration of the original term of copyright." 17 U.S.C.A. § 23. It is conceded by all concerned that this creates only an expectancy, and that in any event the author must be alive on the first day of the twenty-eighth year in order to obtain a renewal. An assignment of this expectancy likewise must rest also on survival. It is also apparent that the assignment here would not have cut off the rights of renewal extended to the widow, children, executors, or next of kin, in the event of Graff's death prior to the renewal period. See Fox Film Corp. v. Knowles, 261 U.S. 326, 43 S.Ct. 365, 67 L.Ed. 680. The only contested point is whether or not the statute absolutely forbids assignment. Certainly the passage does not say it does. There are no words that an assignment "shall be void and of no effect," as, for example, in 38 U.S. C.A. § 129, dealing with the pledge or transfer of a pension. If we had no more than the words of the statute to go on, we could hardly find in that a restraint on freedom of assignment.

Reliance is had, however, upon the statutory history. The Copyright Act of 1790 said that the "exclusive right shall be continued to the author * * * executors, administrators or assigns." 1 Stat. 124. In 1831, the Act was amended; and in changing the renewal provision to approximately its present form, the words "executors, administrators or assigns" dropped out. 4 Stat. 436. This, we are told, indicates that assignments are not tolerated.² But it may just as well be argued that the statute sought only to prevent an assignment that would cut off the widow's and children's rights in case the author died; or that Congress intended only the author and his family to be able to get a renewal, and thus "executors, administrators" went out along with "or assigns"; or, as said in White-Smith Music Pub. Co. v. Goff, 1 Cir., 187 F. 247, 250, that Congress enacted "an entirely new policy, completely dissevering the title, breaking up the continuance in a proper sense of the word, whatever terms might be used, and vesting an absolutely new title eo nomine in the persons designated." All that this says, however, is that assignment of copyright is not assignment of renewal; that renewal is an expectancy, not a present right. It does not express a public policy against disposal of the possibility of renewal. We cannot find a policy of "void and of no effect" in this change. Nor do the Goff case and others like it express such a policy. At most they indicate that an assignment would have to be like the one in this case to be effective. And since the issue was not present in those cases, it was not passed upon. See Fox Film Corp. v. Knowles, supra; Silverman v. Sunrise Pictures Corp., 2 Cir., 273 F. 909, 19 A.L.R. 289, certiorari denied 262 U.S. 758, 43 S.Ct. 705, 67 L.Ed. 1219.

More to the point is the Congressional Report on the Act of March 4, 1909, which is the present statute, 17 U.S.C.A. § 23 — except for a slight textual change of 1940, here immaterial. The committee was supporting the decision to extend the right of renewal another fourteen years to make a total renewal period of twenty-eight years, and it stated its preference for this arrangement, rather than a single and longer term as for life or fifty years. So it said:

"Your committee, after full consideration, decided that it was distinctly to the advantage of the author to preserve the renewal period. It not infrequently happens that the author sells his copyright outright to a publisher for a comparatively small sum. If the work proves to be a great success and lives beyond the term of twenty-eight years, your committee felt that it should be the exclusive right of the author to take the renewal term, and the law should be framed as is the existing law, so that he could not be deprived of that right.

"The present term of twenty-eight years, with the right of renewal for fourteen years, in many cases is insufficient. The terms, taken together, ought to be long enough to give the author the exclusive right to his work for such a period that there would be no probability of its being taken away from him in his old age, when, perhaps, he needs it the most." H.R.Rep. No. 2220, 60th Cong., 2d Sess., p. 14. The House Report was adopted by the Senate Committee on Patents as its own. Sen.Rep. No. 1108, 60th Cong., 2d Sess.

We think it fair to say that defendants' case substantially depends on this quotation, as expressing a clear intent as to the statutory meaning and one to which we should give effect. But several observations must be made about it, for it contains its own ambiguities. Its direct purpose was clearly to explain the continuance of a renewal term as against the substitution of a single long term. In other words, it argued for an existing arrangement — "the existing law" — and so not necessarily or clearly for an absolute prohibition. If the committee had really meant the latter, they could easily have so drafted the statute. And they could easily have stated their purpose in unambiguous words in their report. As it is, their own words are almost as ambiguous as the statute itself. They said the author "could not be deprived of" the right to renew. Does this mean he could not be deprived of it if he "sells his copyright outright to a publisher"?³ If so, we agree. Or did they mean that a court was to strike down the author's attempt specifically to dispose of his expectancy? If so, "deprive" was a poor word to use, for the result is that he is "deprived" of his privilege to alienate his renewal right, not saved from "deprivation" of the right itself. As for the statement about the "probability of its being taken away from him in his old age," this is no more than a repetition of the same thought, and suffers from the same ambiguity.

If we could find that the statute had been interpreted — in the light of the committee's report — to forbid such assignments as we find here, we might well be inclined to give the committee the benefit of any doubts as to the...