Fred Fisher Music Co. v. M. Witmark & Sons
318 U.S. 643, 63 S. Ct. 773, 1943 U.S. LEXIS 1307 (1943)
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Rule of Law:
The Copyright Act of 1909 does not prevent an author from assigning their future, contingent interest in the copyright renewal term before that term is secured. Such an assignment, made during the original copyright term, is valid and enforceable.
Facts:
- In 1912, George Graff, Jr. co-authored the song 'When Irish Eyes Are Smiling' while under contract to music publisher M. Witmark & Sons.
- M. Witmark & Sons (Witmark) obtained the original copyright for the song on August 12, 1912.
- On May 19, 1917, Graff executed an agreement assigning to Witmark 'all copyrights and renewals of copyrights' for several songs, including 'When Irish Eyes Are Smiling,' in exchange for $1,600.
- This agreement gave Witmark an irrevocable power of attorney to secure the copyright renewal in Graff's name.
- On August 12, 1939, the first day of the copyright's 28th year, Witmark applied for and registered the renewal in Graff's name and assigned it to itself.
- Eleven days later, Graff independently applied for and registered the renewal in his own name.
- On October 24, 1939, Graff assigned his purported renewal interest to another publisher, Fred Fisher Music Co., Inc. (Fisher), which knew of Witmark's prior registration.
- Fisher subsequently published and sold copies of the song, claiming it owned the renewal rights.
Procedural Posture:
- M. Witmark & Sons sued Fred Fisher Music Co. in the U.S. District Court, seeking an injunction to stop Fisher from publishing the song.
- The District Court granted a preliminary injunction in favor of Witmark, ruling solely on the legal question that the Copyright Act did not bar the assignment of a renewal interest.
- Fred Fisher Music Co. filed an interlocutory appeal to the U.S. Circuit Court of Appeals for the Second Circuit.
- The Circuit Court of Appeals affirmed the District Court's order, also limiting its analysis to the question of statutory construction.
- The U.S. Supreme Court granted certiorari to resolve the question of the assignability of copyright renewal interests.
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Issue:
Does the Copyright Act of 1909 prevent an author from assigning his interest in the renewal copyright term before he has secured it?
Opinions:
Majority - Frankfurter
No. The Copyright Act of 1909 does not nullify an agreement by an author, made during the original copyright term, to assign his renewal interest. Neither the text of the Act nor its legislative history imposes any restraints on the assignability of the renewal term. The court reasoned that the historical antecedents of American copyright law, beginning with the English Statute of Anne and continuing through the U.S. Acts of 1790 and 1831, consistently permitted authors to assign their contingent renewal interests. The legislative history of the 1909 Act shows that Congress's purpose in creating a separate renewal term was to give the author a 'new estate' so that a general assignment of 'copyright' would not inadvertently transfer the renewal, not to make that new estate inalienable. While the policy is to protect authors, barring them from assigning a future asset could paradoxically harm them by making it worthless when they are most in need of funds. The court explicitly distinguished between a general statutory bar on assignment (which it rejected) and a court's potential refusal to enforce a specific assignment on equitable grounds like unconscionability (a question not presented in this case).
Dissenting - Black, Douglas, and Murphy
Yes. The dissenting justices adopted the reasoning of Judge Frank's dissent in the court below, which argued that Congress intended to reserve the renewal privilege for the personal benefit of authors and their families. This view holds that the legislative purpose behind the renewal term was to protect authors from improvident bargains made early in their careers. Allowing authors to assign away this future interest before it vests defeats this protective purpose, as it permits publishers to acquire the renewal for a small sum at the same time as the original copyright, undermining the 'new estate' Congress intended to create for the author's benefit.
Analysis:
This decision solidified the commercial practice of assigning future copyright renewal interests, confirming that the renewal term is a form of property that can be sold in advance. It clarified that while the renewal is a 'new estate' separate from the original copyright, it is not an inalienable right that Congress intended to shield from the market. The ruling crucially distinguished between the statutory validity of an assignment and its potential unenforceability in equity, leaving a path for authors to challenge specific agreements as unconscionable without invalidating all such contracts. This precedent has profoundly shaped copyright transactions, allowing for greater certainty in long-term rights acquisitions by publishers and producers, while also framing future legal battles around the fairness of individual deals.
