LUMBARD, Chief Judge:
This appeal raises the important question whether a magazine publisher who acquires only the right to serialize a novel before it is published in book form has such an interest in the work that notice of copyright in the publisher's name will protect the copyright of the author of the novel. It also requires us to review the construction of a contract granting motion picture rights which defendants raise as a defense to this infringement action.
We all agree that the district court erred in concluding that copyright was not obtained by the publisher and that Goodis' work was thus thrown into the public domain without copyright protection. Moreover, since a majority of the panel, Judges Waterman and Kaufman, are of the view that interpretation of the
The plaintiffs are the executors of David Goodis, author of the novel "Dark Passage," a work which has proved both popular and adaptable to presentation in many of the entertainment media. When Goodis completed the novel in 1945, he made arrangements for the book to be printed in April, 1946. Later, on December 20, 1945, Goodis sold the exclusive motion picture rights in the novel to Warner Brothers for $25,000. The contract was Warner Brothers' standard form for acquiring movie rights, but, as we state below, it contained additional specially negotiated clauses to cover radio and television broadcast rights.
Before the book was published, Goodis also received $12,000 from Curtis Publishing Co. for the right to serialize the novel in "The Saturday Evening Post," one of Curtis' publications. The book publisher agreed to postpone distribution of the book until October, 1946, and "Dark Passage" was first published in eight installments of "The Saturday Evening Post" running from July 20 to September 7, 1946. Each issue contained a single copyright notice in the magazine's name as provided by the Copyright Act.
In due course, Warner Brothers produced a motion picture, also titled "Dark Passage," based on the novel. After the film was exhibited in theaters and shown on television, Warner Brothers in 1956 assigned its contract rights to defendant United Artists. United Artists produced a television film series, "The Fugitive," which was broadcast in weekly installments by defendant American Broadcasting Co. The series enjoyed considerable popularity on television, and early in 1965 Goodis instituted this action claiming $500,000 damages for copyright infringement. The defendants answered that the television series was covered by the contract which had been assigned to them by Warner Brothers.
In 1966, the defendants took Goodis' deposition and learned of his serialization agreement with Curtis. At this point, they conceived the theory that the work had fallen into the public domain because Curtis, a "mere licensee," had taken out copyright in its own name only. By stipulation the defendants amended their answer to include this affirmative defense.
The district court granted defendants' motion for summary judgment and dismissed the complaint on the grounds (1) that "Dark Passage" had fallen into the public domain, and (2) that the contract between Goodis and Warner Brothers clearly conveyed the right to produce a film series like "The Fugitive."
I. THE COPYRIGHT
We unanimously conclude that where a magazine has purchased the right of first publication under circumstances which show that the author has no intention to donate his work to the public, copyright notice in the magazine's name is sufficient to obtain a valid copyright on behalf of the beneficial owner, the author or proprietor.
In the district court, defendants argued that the single copyright notice in the magazine's name was not sufficient to preserve Goodis' rights in "Dark Passage"; thus, the novel, not being protected upon first publication, was thrown into the public domain as it appeared, installment by installment, in the "Saturday Evening Post." While it is clear that a periodical under some circumstances may obtain copyright for itself on the contents of an issue by a single copyright notice containing its own name, 17 U.S.C. § 3; Kaplan v. Fox Film Corp., 19 F.Supp. 780 (S.D.N.Y.1937), defendants urged that Curtis could only obtain copyright on behalf of the beneficial
Such a determination rests on the doctrine of "indivisibility of copyright," which rejects partial assignments of copyrights and requires a proprietor or assignee of a copyright to hold nothing less than all the rights in a copyrighted work. It is true that Curtis did not own all the rights in "Dark Passage" at the time it was first published; in fact, at that time Goodis and Warner Brothers had already contracted for the exclusive motion picture rights.
We are convinced, however, that the doctrine of indivisibility of copyright is a judge-made rule which relates primarily to the requisite interest needed to bring an infringement action. See generally, H. Warner, Radio and Television Rights § 53 (1953). The most frequently cited policy for applying the indivisibility rule is to avoid multiple infringement actions, each brought by the holder of a particular right in a literary work without joining as co-plaintiff the author or proprietor of the copyrighted work. New Fiction Pub. Co. v. Star Co., 220 F. 994 (S.D.N.Y.1915). Even after the Copyright Act underwent substantial revision and liberalization in 1909, the courts in this circuit indicated support for the doctrine. See Goldwyn Pictures Corp. v. Howell Sales Co., 282 F. 9 (2d Cir. 1922); New Fiction Pub. Co. v. Star Co., supra; but cf. Photo-Drama Motion Picture Co., Inc. v. Social Uplift Film Corp., 213 F. 374 (S.D.N.Y.1914), aff'd, 220 F. 448 (2d Cir. 1915). The doctrine was seriously questioned in subsequent years, Houghton Mifflin Co. v. Stackpole Sons, Inc., 104 F.2d 306, 311-312 (2d Cir. 1939), but has not been overruled.
But, regardless of the vitality of the indivisibility theory as it applies to the question of standing to sue, we do not think that it is determinative as to the requisite interest of a party who may act to obtain copyright. In the cases relied upon by the district court, it was found either that a complete assignment had been made, Mail & Express Co. v. Life Pub. Co., 192 F. 899 (2d Cir. 1912); Morse v. Fields, supra, or that the plaintiff claiming infringement was not the author or proprietor of the work, Egner v. E. C. Schirmer Music Co., 139 F.2d 398 (1st Cir.), cert. denied, 322 U.S. 730, 64 S.Ct. 947, 88 L.Ed. 1565 (1943); Kaplan v. Fox Film Corp., supra. We find nothing in the established cases which requires us to extend the logic of those precedents to a case where an author is plaintiff. We are loath to bring about the unnecessarily harsh result of thrusting the author's product into the public domain when, as here, everyone interested in "Dark Passage" could see Curtis' copyright notice and could not have believed there was any intention by Goodis to surrender the fruits of his labor.
Courts have been understandably reluctant to invoke the doctrine of indivisibility where the author or proprietor of the work is the plaintiff and the result would be to deprive the plaintiff of the fruits of his creative effort. In Bisel v. Ladner, 1 F.2d 436 (3rd Cir. 1924), a publisher who had taken out copyright in his own name was deemed to hold legal title to the copyright for the "beneficial owner," the author-plaintiff, although it was clear the publisher had not acquired all rights in the work. See also, Maurel v. Smith, 271 F. 211 (2d Cir. 1921); Harms & Francis, Day & Hunter v. Stern, 229 F. 42 (2d Cir. 1916); Quinn Brown Pub. Co. v. Chilton Co., 15 F.Supp. 213 (S.D.N.Y.1936); Harper & Bros. v. M. A. Donohue & Co., 144 F. 491 (N.D.Ill.1905).
The holdings in New Fiction Pub. Co. v. Star Co., supra, and Goldwyn Pictures Corp. v. Howell Sales Co., supra, do not present any barrier to our conclusions.
We believe a distinction between applying the indivisibility doctrine to cases where the issue is standing to sue for infringement and cases where the issue is protection of the author's interest is supported by the Copyright Act and by common sense. Under the Copyright Act of 1831,
In 1909 the Copyright Act was amended and the method of obtaining copyright simplified. Under the revised Act, an author or proprietor could secure statutory protection by actual publication of the work with notice in conformity with the Act.
In considering the 1909 amendments and the liberalizing spirit in which they were enacted, we note that the proposed general revision of the copyright law, introduced in the 90th Congress and referred to the House and Senate Judiciary Committees,
The report of the House Committee on the Judiciary states that these proposed provisions deal "with a troublesome problem under the present law: the notice requirements applicable to contributions published in periodicals and other collective works." H.R.Rep. No.83, 90th Cong., 1st Sess. 113 (1967). Our decision today is that the result which the proposed legislation would compel is not precluded in any way by the decisions rendered under the present Copyright Act. As discussed earlier, the "problem" with which the proposed legislation deals is one which exists because of judicial dicta rendered in cases not apposite to the factual situation before us in this case. We believe that it is time to settle the disquieting implications of these dicta in cases where the author sues for infringement.
In reaching this result, we also take account of modern business practices. Today many magazines market new writings in serial form. It should be expected that serialization will often be the "first publication" of a work, since much of the value of such an arrangement to the periodical lies in reaching magazine readers before the complete book has been released.
The harsh results before the 1909 amendments should be avoided if possible, particularly as here where the magazine's own notice of copyright is more than adequate to apprise any innocent party that he might be infringing another's copyright. As both amicus curiae briefs point out, the principal purpose of the statutory notice provisions is to inform the public that copyright is claimed.
That such an arrangement between Curtis and Goodis is in the nature of a "partial assignment" is no reason to require a different result. This circuit 30 years ago understood the desirability of recognizing partial assignments. Houghton Mifflin Co. v. Stackpole Sons, Inc., supra. Where the question is the interest needed to obtain copyright, we reiterate that the important considerations are the intention of the parties to obtain copyright and the adequacy of notice to the public; the characterization of the publisher as assignee or licensee is secondary.
Having concluded that the copyright was validly obtained in behalf of Goodis and that he may maintain an action for infringement, I turn to the contract for motion picture rights on which defendants rely. The views of the majority on this issue are set forth in Judge Waterman's opinion. My own view is that the district court properly decided this question on a motion for summary judgment.
This is not a case where the question is the right to broadcast a movie on television, cf. Bartsch v. Metro-Goldwyn-Mayer, Inc., 270 F.Supp. 896 (S.D.N.Y. 1967), aff'd, 391 F.2d 150 (2d Cir.), cert. denied, 393 U.S. 826, 89 S.Ct. 86, 21 L.Ed.2d 96 (1968). The contract clearly provided for the presentation of the movie "Dark Passage" on television and appellant concedes the propriety of such broadcasts. Appellant claims, however, that "any photoplay produced hereunder" does not encompass "The Fugitive," a film series produced directly for television without any intention to show it in motion picture theaters. I think a fair interpretation of the contract indicates that the grant of motion picture rights was sufficiently broad to include this use.
Under paragraph 17, defendants purchased the "absolute and unlimited right * * * to make such changes, variations, modifications, alterations, adaptations, arrangements, additions in and/or eliminations and omissions from said Writings and/or the characters, plot, dialogue, scenes, incidents, situations, action, language and theme thereof * * *" [emphasis added]. Under paragraph 19(c), Goodis retained "[t]he right to broadcast said Writings by television from the performances given by living actors."
Had Goodis sold specific, limited rights in 1945 and retained for his future use or disposition the general reservoir of broadcast rights, I might be persuaded that a question of fact existed. But Goodis retained only the specific right to "broadcast said Writings by television from performances by living actors," and I find it difficult to imagine a broader transfer of rights than that which these parties drafted. It seems clear to me the district judge properly decided on summary judgment that defendants could produce and televise films in any manner they might choose other than from the performances of live actors.
The majority claims that my construction may affect the interpretation of many similar contracts which do not explicitly mention the right to make "sequels" using the original characters. I do not share this concern.
First, unlike most of the contract, which was Warner Brothers' standard form, the paragraph describing television broadcast rights was specially drafted by the parties. It is unlikely any other contracts drafted circa 1945 will be affected by our determination of these parties' intentions as expressed in these specially negotiated terms.
Second, although the majority shows great concern for the use of "sequels," the question of sequels was not, in my opinion, before the district court. In paragraph 16 of the complaint, Goodis took particular care to show an exact parallel between "Dark Passage" and "The Fugitive." The content of "The Fugitive" was not raised by Goodis as a factual issue in his opposition to the summary judgment motion. For all that appears in the record, the "sequel" argument was raised for the first time on appeal in an effort to overturn the grant of summary judgment.
The majority implies in a footnote that this view reflects a return to "dangerously technical methods of pleading." Apparently they are assuming that a litigant in Goodis' position would have to walk a narrow line between pleading sufficient identity for infringement on the one hand and sufficient difference for a "sequel" claim on the other. Whether
Although I agree that there was no forfeiture of "Dark Passage" into the public domain because of the procedure used to secure copyright, I would affirm the grant of summary judgment by the district court as the contractual rights of the parties were clearly defined.
Reversed and remanded.
WATERMAN, Circuit Judge, with whom IRVING R. KAUFMAN, Circuit Judge, joins (concurring partially with Chief Judge LUMBARD):
My brother Kaufman and I concur in that part of Chief Judge Lumbard's opinion which holds that Goodis did not surrender his copyright in Dark Passage because of the Saturday Evening Post publication. We do not agree with his view that the defendant below is entitled to summary judgment on the issue of whether the contract between Goodis and Warner Brothers conveyed the right to make and broadcast a television series such as The Fugitive. Accordingly, on this branch of the case our holding is that of the majority.
The party to whom summary judgment is awarded must have shown "that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). The question presented here is whether the contract language demonstrates unambiguously that Goodis meant to convey to Warner Brothers the right to create a television series such as The Fugitive or whether a genuine issue of material fact exists as to what the parties intended by the language they used.
The rights which the contract conveyed to Warner Brothers "in said writings" included "the exclusive, complete and entire motion picture rights," and "the right to broadcast and transmit any photoplay produced hereunder by the process of television * * * provided that such broadcasts and transmissions are given from the film of such photoplay and not directly from the performances of living actors." The judge below held that the term "any photoplay produced hereunder" unambiguously included a television series of photoplays such as The Fugitive. Accordingly, he awarded summary judgment to the defendants.
We disagree. It is our holding that the contract language does not so clearly permit production of The Fugitive as to entitle the defendant to the grant of a summary judgment.
The language of the contract clearly conveys to Warner Brothers the right to make a movie of Dark Passage and to show that movie on television. Moreover, Paragraph 17 of the contract conveys the right to vary the plot and characters of Dark Passage in making that movie. The question before us, however, is whether the contract unambiguously fails to put any limits on the degree to which Warner Brothers could change or modify the original story while using the story's characters.
In an appeal from summary judgment we must resolve all disputed questions of fact in favor of the appellant. Therefore, we accept appellant's factual representations in the complaint and assume that The Fugitive television series took the characters in Dark Passage and, using the novel's plot as a springboard, placed the characters the author created in a whole series of new plot situations developed by the motion picture company. It seems to us that the right to make "additions in * * * said writings" and in the characters and plot of Dark Passage does not necessarily go so far as to show that there is no genuine issue as to whether the characters of Dark Passage may be depicted in photoplay adventures which bear little relationship to the "said writings" of Dark Passage. Viewed in the context of the entire contract, the "additions" and "alterations" clauses of Paragraph 17 could be read in a more restrictive manner
Among the reasons that have caused us to conclude that this case should not be decided without a full inquiry into the intent of the parties is that our disposition of this appeal may affect the interpretation of other contracts which convey some of the divisible rights in a given story but do not explicitly mention among the conveyed rights the right to make subsequent stories employing the same characters, i. e., "sequels" as such stories are called in the publishing industry. Too, a proper decision as to what the parties intended in this case may largely depend upon the general custom and expectations of authors and of members of the publishing, broadcasting, and film vocations. Because this case reaches us after a grant of summary judgment we have before us no evidence as to these customs and expectations. Many authors have used characters they created in one novel in a whole series of subsequent works; surely it would be rash of us to hold on summary judgment that the sale of rights in one of an author's works ends, without specific mention that it ends, the author's exclusive ownership of the valuable characters he created in that one work, when he may well desire to create sequels of his own using these same characters. Accord, Warner Bros. Pictures, Inc. v. Columbia Broadcasting System, 216 F.2d 945 (9 Cir. 1954), cert. denied, 348 U.S. 971, 75 S.Ct. 532, 99 L.Ed. 756 (1955).
We further note, contrary to our brother Lumbard's view, that the issue of the right of defendants to use the characters from Dark Passage in new plot situations was properly raised by appellant before the district court. The court below was not misled into thinking that The Fugitive contained no plot material beyond that of Dark Passage. Judge Mansfield noted in his opinion that the plaintiff asserted that the contract limited Warner Brothers' rights to a photoplay made from the original story, so it is obvious that the judge understood plaintiff's contention that The Fugitive was not identical to Dark Passage although it built upon that story's theme and used the author's characters.
Reversed and remanded for further proceedings below.
IRVING R. KAUFMAN, Circuit Judge (concurring with WATERMAN, Circuit Judge, and concurring partially with LUMBARD, Chief Judge):
I concur fully in the opinion of my brother Waterman and in that portion of my brother Lumbard's opinion which holds that publication in the Saturday Evening Post did not place Dark Passage in the public domain.
"Any person entitled thereto * * * may secure copyright for his work by publication thereof with the notice of copyright required by this title * * *."
Section 201(c) provides:
(c) Contributions to Collective Works. — Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.
Section 403(a) provides:
(a) A separate contribution to a collective work may bear its own notice of copyright, as provided by sections 401 and 402. However, a single notice applicable to the collective work as a whole is sufficient to satisfy the requirements of sections 401 and 402 with respect to the separate contributions it contains (not including advertisements inserted on behalf of persons other than the owner of copyright in the collective work), regardless of the ownership of copyright in the contributions and whether or not they have been previously published.
Section 403(b) provides:
(b) Where the person named in a single notice applicable to a collective work as a whole is not the owner of copyright in a separate contribution that does not bear its own notice, the case is governed by the provisions of section 405(a).
Section 405(a) provides:
(a) Error in Name. — Where the person named in the copyright notice on copies or phonorecords publicly distributed by authority of the copyright owner is not the owner of copyright, the validity and ownership of the copyright are not affected. In such a case, however, any person who innocently begins an undertaking that infringes the copyright has a complete defense to any action for such infringement if he proves that he was misled by the notice and began the undertaking in good faith under a purported transfer or license from the person named therein, unless before the undertaking was begun:
(1) registration for the work had been made in the name of the owner of copyright; or
(2) a document executed by the person named in the notice and showing the ownership of the copyright had been recorded. The person named in the notice is liable to account to the copyright owner for all receipts from purported transfers or licenses made by him under the copyright.