Rose v. Bourne, Inc.

• Decision Date: 15 September 1959
• Citation: 176 F. Supp. 605
• Parties: Billy ROSE, Ray Henderson and Mel Torshin, as Executor of the Estate of Mort Dixon, Plaintiffs, v. BOURNE, INC., Defendant.
• Court: U.S. District Court — Southern District of New York

176 F. Supp. 605

Billy ROSE, Ray Henderson and Mel Torshin, as Executor of the Estate of Mort Dixon, Plaintiffs, v. BOURNE, INC., Defendant.

United States District Court S. D. New York.

September 15, 1959.

COPYRIGHT MATERIAL OMITTED

Schulman & Stern, New York City, John Schulman, Lloyd I. Isler, Martin Bressler, New York City, of counsel, for plaintiffs.

Phillips, Nizer, Benjamin, Krim & Ballon, New York City, Walter S. Beck, Simon Rose, Albert F. Smith, New York City, of counsel, for defendant.

DIMOCK, District Judge.

This is an action which originated as plaintiffs' suit for copyright infringement. Plaintiffs have suffered a voluntary dismissal of their claim without prejudice, D.C., 172 F.Supp. 536, and the trial has proceeded upon defendant's counterclaim for a declaratory judgment. The controversy involves the ownership of the renewal of the copyright of a musical composition, "That Old Gang of Mine". The three composers of this were the two plaintiffs who sue individually and the testator of the one who sues as executor. The issue to be tried was framed by the court as follows:

"The defendant's claim that it is the legal owner of the copyright as renewed, or that the defendant is the legal owner subject only to the filing by it of an assignment in the names of plaintiffs in the copyright office which defendant has an irrevocable right to do despite any objection by plaintiffs."

Plaintiffs, hereinafter referred to for convenience as "the composers", maintain (1) that the instrument under which defendant claims did not constitute a present assignment of the future right of the renewal expectancy, and (2) that, even if the instrument constituted a present assignment, inadequacy of consideration for the assignment and uncontemplated changes in the music business preclude a declaration that the publisher is the legal owner either absolutely or subject to the filing by it of an assignment in the names of the plaintiffs.

On April 19, 1923, the authors executed an instrument which purported to sell to the defendant publisher, then known as Irving Berlin, Inc., the musical composition entitled "That Old Gang of Mine". The publisher proceeded to exploit the song and paid royalties to the composers which amounted, between 1923 and 1952, to $35,341.51. On April 23, 1923, the publisher registered the song in the Copyright Office as an unpublished work and on May 17, 1923, registered it as a published one.

The original copyright would have expired on April 23, 1951, twenty-eight years from April 23, 1923, the date of its registration as an unpublished work. Rules and Regulations Copyright Office § 202.17(a), 17 U.S.Code Appendix; Marx v. United States, 9 Cir., 96 F.2d 204.

On April 25, 1950, at the beginning of the final year of the original copyright term, the composers caused to be filed in the Copyright Office an application for the renewal of the copyright as an unpublished work and the application was registered. Later, on the same day, the publisher caused to be filed in the copyright office an application for the renewal of the copyright as an unpublished work but, in view of the earlier filing, it was not registered.

On May 16, 1950, the publisher caused to be filed in the copyright office an application for renewal of the copyright as a published work and the application was registered. On May 17, 1950, the composers caused to be filed in the Copyright Office an application for renewal of the copyright as a published work and, in spite of the earlier filing by the publisher, the application was registered.

All of the composers were still alive at the time of these filings.

The publisher had caused the original instrument of April 19, 1923, to be recorded in the Copyright Office on November 11, 1943, as an assignment of copyright. On May 25, 1950, after the filing and registration of the applications for renewal, the publisher again caused the original instrument of April 19, 1923, to be recorded.

On these facts my conclusion is that the original instrument of April 19, 1923, was effective as a present assignment of the expectancy of the renewal.

The first paragraph of the original instrument of April 19, 1923, read as follows, the composers being collectively designated as "the composer":

"1. The COMPOSER hereby sells, assigns, transfers and delivers to the PUBLISHER, its successors and assigns, the original musical composition written and composed by Billy Rose, Mort Dixon and Ray Henderson and bearing the title of THAT OLD GANG OF MINE including the title, words and music thereof, TO HAVE AND TO HOLD the same absolutely unto the PUBLISHER, its successors and assigns forever, together with all rights therein, or any copyrights now subsisting, for all Countries, that the COMPOSER now has or may be entitled to or that he hereafter could or might secure if these presents had not been made, including the publishing rights, the performing rights, the rights to use the same for mechanical reproduction, the right to make, publish and perform any arrangement or adaptation of the same, and all copyrights and the rights to secure copyrights and extensions and renewals of copyrights in the same, or in any arrangements or adaptations thereof."

The third paragraph, copied in the margin,¹ provided that as consideration the publisher would pay royalties on certain uses of the composition. From the uses on which royalties were to be paid foreign sales and foreign mechanical recordings were, among others, expressly excluded. Such an agreement constitutes valid consideration. See Edward B. Marks Music Corp. v. Charles K. Harris Music Pub. Co., 2 Cir., 255 F.2d 518, 522, certiorari denied 358 U.S. 831, 79 S.Ct. 51, 3 L.Ed.2d 69.

The composers contend that, so far as renewal of copyright is concerned, the original instrument did no more than give to the publisher the right to go into a court of equity and compel the composers to take steps to vest the publisher with title to the copyright as renewed. This claim is based upon the language in the enumeration of rights sold: "all copyrights and the rights to secure copyrights and extensions and renewals of copyrights in the same". The composers construe this language as effecting a sale of the right to secure a renewal of the copyright rather than a sale of the renewal expectancy itself. They go on to argue that the right to secure a renewal can be exercised only by a decree in equity working upon the composers.

The exercise of the right of an assignee of a copyright to secure a renewal thereof does not require cooperation of the composer. There is no distinction between the assignment of the right to secure a renewal and the assignment of the renewal expectancy itself. The expectancy cannot be reduced to possession except by the exercise of the right to renewal and that right may be exercised by the assignee all by himself.

During the composer's lifetime and before the final year of the term of the original copyright, the expectancy of the renewal of the copyright is like the interest of one who is entitled to a remainder after a term of years provided he outlives the term. The composer can effectively assign the expectancy. Fisher Music Co. v. M. Witmark & Sons, 318 U.S. 643, 63 S.Ct. 773, 87 L.Ed. 1055. Yet, if the composer dies prior to the final year of the original term, the assignee's expectancy is defeated and the right to renewal vests in the widow, widower or children of the composer or, in default of them, the composer's executors or next of kin. Section 24 of the Copyright Act, 17 U.S.Code § 24, provides with respect to the type of literary property here involved, as follows:

"The author of such work, 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 in such work for a further term of twenty-eight years when application for such renewal and extension shall have been made to the copyright office and duly registered therein within one year prior to the expiration of the original term of copyright."

Unlike the original copyright, the renewal is created, not by publication with a claim to the copyright, but by registration of an application for renewal in the Copyright Office. Such an application cannot be validly made until the last year of the original term of the copyright so that, until that time, no one can have anything more than the "right to secure" a renewal. It will be recalled that that is exactly what the composers say the original instrument of April 19, 1923, purports to give the publisher. The assignee needs the help of no one to secure the renewal. It is true that the application for the renewal must be made in the name of the author or composer. 28 Op.Attys.Gen. 162; 17 U.S.Code Appendix, § 202.17(b). Nevertheless, the assignment of the expectancy implies a power of attorney in the assignee to make the application in the name of the author or composer. Rossiter v. Vogel, 2 Cir., 134 F.2d 908.

It must be conceded that, under the statute and the Attorney General's opinion and the rules of the Copyright Office, the application registered in the Copyright Office must bear the name of the author rather than the assignee. Yet it necessarily follows from the decision of the United States Supreme Court in Fisher Music Co. v. M. Witmark & Sons, 318 U.S. 643, 63 S.Ct. 773, 87 L.Ed. 1055, supra, that the renewal belongs to the assignee even though the application has not been made in the assignee's name. Unless defective under the special rule as to expectancies, to which reference will be made later, the title of the assignee is complete and perfect at the instant the application in the name of the author is registered. The registry of the application in the Copyright Office does not purport to show...