SWAN, Circuit Judge.
Before passing to a consideration of the interesting questions presented by this appeal it is desirable to state in outline the facts that give rise to them. The amended complaint seeks damages for infringement of a registered copyright of a mural picture painted by Charles Y. Turner and placed by him on the wall of the auditorium room of the DeWitt Clinton High School. Mr. Turner executed this painting pursuant to a written contract, dated January 14, 1904, between the City of New York and the general contractor for the erection of the school building, by the terms of which the city was to select the artist and the contractor was to pay him upon a certificate issued by the Superintendent of School Buildings, with the approval of the Committee on Buildings of the Board of Education, and to include such payment in the cost of the building. It is conceded that the mural was accepted and the artist received payment. The written contract between the city and the building contractor was silent as to who was to have the copyright of the painting to be made. Nor is there evidence of any agreement on this subject made by Mr. Turner with either the city or the building contractor. But the painting bears an inscription "Copyright, C. Y. Turner, 1905," and there is nothing to suggest that those words were not on it when it was first installed
One ground upon which the district court dismissed the complaint was that the surrogate's decree authorizing Turner's executor to transfer to the plaintiff "all existing copyrights of decedent" and all rights of action thereon, did not include the copyright in question because it was not an "existing" copyright, having expired in 1933, and, since the executor's assignment went further than the decree authorized, the plaintiff obtained thereby no valid title to the cause of action sued on. The appellant argues with considerable persuasive force that such an interpretation of the surrogate's decree is too narrow, and that in any event an executor has power to sell and assign personal property of the estate without court authorization
This ground was based on reasoning substantially as follows: When an artist accepts a commission to paint a picture for another for pay, he sells not only the picture but also the right to reproduce copies thereof unless the copyright is reserved to the artist by the terms, express or implicit, of the contract; there was no evidence from which such a reservation could be inferred; therefore the copyright registration in Turner's name, if valid at all, was held in trust for the city, and the latter, through its Board of Education, had given consent to the defendant to publish copies of the painting in its histories; hence there was no infringement. Each of the foregoing findings of fact and conclusions of law is disputed by the appellant.
It seems surprising that so little precise authority has been discovered; only one case exactly in point has been turned up. A fairly close analogy, however, may be found in cases discussing the law of copyright with respect to photographers. The rule has been clearly laid down in this circuit that where a photographer takes photographs of a person who goes or is
The terms of the contract between the city and the contractor show that an artist was to be commissioned to paint a mural for pay. For reasons already discussed this contemplated that the city should get the copyright as well as the painting. There is no evidence as to the precise terms of the agreement made by Turner when he accepted the employment. In the absence of such evidence we must infer that whatever agent of the city negotiated with Turner did his duty and obtained for the city all that its contract for the building required; in other words, that Turner's contract of employment did not reserve the copyright. His subsequent unilateral act in placing on the painting the copyright notice would be ineffective to modify his contract of employment. It was at most an offer to modify it. The acceptance by city officials of the painting bearing the notice would show acceptance of that offer only if the officials observed the notice and had authority to make a contract modifying Turner's original employment. In both respects the proof is insufficient. As to the former, there is no evidence that the Committee on Buildings, whose approval of the painting was required before the Superintendent of School Buildings should issue his certificate for payment, ever had the inscription called to its attention. If it did come to the Committee's attention, it is entirely possible that the Committee protested to Turner and got his consent to waive his claim of reservation of copyright. The subsequent conduct of the parties is entirely consistent with such a possibility. Turner, so far as appears, never made any copies. During Turner's life time some school official or teacher, whose identity is not clearly proven, caused 30,000 postal card reproductions to be made for sale or free distribution to the students at the school; and after Turner's death, the Board of Education gave permission for publication in the appellee's histories. It is urged that the evidence is insufficient to sustain the court's finding that such permission was given. After so long a lapse of years Mr. Webster could not remember definitely to what official he had applied for permission, but the fact that under the published reproduction the appellee printed the inscription "Copyright, Courtesy New York Board of Education," tends to support an inference that Webster had communicated with the Board and had received its consent. It is urged further that the Board had no legal power to give an effective consent. But whether the consent was effective is immaterial for present purposes. The fact of giving it, regardless of the Board's authority, shows that the Board did not understand that Turner reserved the copyright. But if the opposite view were taken and acceptance of the painting with the copyright notice upon it
By its counterclaim the appellee sought a declaration that the renewal copyright registration obtained by the plaintiff in 1932 was void because not effected pursuant to the statute, 17 U.S.C.A. § 24. It is now conceded that only Turner's executor could legally obtain a renewal. Fox Film Corp. v. Knowles, 261 U.S. 326, 43 S.Ct. 365, 67 L.Ed. 680. While the original bill had asserted a claim based upon the renewal, the amended bill did not, and the evidence disclosed that the defendant had ceased publication of its reproduction of the painting in 1936, when notified of the claim of infringement. Hence, the appellant argues that there was no controversy between the parties requiring a declaration of rights as to the renewal copyright. We cannot agree. The counterclaim asserted the invalidity of the renewal and the plaintiff's reply thereto denies the allegations of invalidity. She conceded invalidity at the trial but she had previously asserted rights under the renewal and she might do so again in a subsequent suit, if its invalidity were not adjudged. There was no error in awarding judgment on the counterclaim.