The agreement is only relevant if it contained a mechanical license. If it did, then Jay-Gee acquired the rights accorded a licensee.
In addition, Jay-Gee obtained a mechanical license from Nanshel, which read in part:
[Y]ou shall have all the rights which are granted to, and all the obligations which are imposed upon, users of said copyrighted work [“Gliding Bird”] under the compulsory license provision of the Copyright Act…. This license covers and is limited to one particular recording, or phonograph records only, of the musical composition set forth above as performed by the artist on the record number set forth above….
The district court found that this license was unassignable as a matter of law, presumably because it was a compulsory license.[1]
Defendants contend that the license could not in fact have been a compulsory license because it authorized first use of the composition while compulsory licenses apply “only to the second and subsequent recordings of a musical work, after the copyright owner has authorized a first recording to be made.” Recording Industry Association of America v. Copyright Royalty Tribunal, 662 F.2d 1, 4 (D.C.Cir.1981). They argue that both this license and the one contained in the Harris/Jay-Gee Recording Agreement were negotiated licenses, properly controlled by contract law and freely assignable. Because we decide the issue on other grounds, we need not determine whether or not the license was compulsory. Whether or not the contracts were negotiated or compulsory, and did or did not involve personal services, the ultimate question is whether copyright licenses can be transferred by a mere licensee.
The transferability of a copyright license appears to be a question of first impression in this circuit. There is, however, authority to support the proposition that such licenses are not transferable as a matter of law. Under the 1909 Act,
Absent any contractual limitations, an assignee [of the whole contract] had the right to re-assign the work. A licensee, however, had no right to re-sell or sublicense the rights acquired unless he has been expressly authorized to do so.
M. Nimmer, Nimmer on Copyright § 10.01[c][4] (1988) (footnotes omitted).
It has been held that a copyright licensee is a “bare licensee … without any right to assign its privilege.” Ilyin v. Avon Publications, Inc., 144 F.Supp. 368, 372 (S.D.N.Y.1956) (citations omitted); Mills Music, Inc. v. Cromwell Music, Inc., 126 F.Supp. 54 (S.D.N.Y.1954).
Where precedent in copyright cases is lacking, it is appropriate to look for guidance to patent law “because of the historic kinship between patent law and copyright law.” Sony Corp. of America v. Universal City Studios, – U.S. —, 104 S.Ct. 774, 787, 78 L.Ed.2d 574 (1984) (footnote omitted). A patent license has been characterized as “a naked license to make and sell the patented improvement as a part of its business, which right, if it existed, was a mere personal one, and not transferable, and was extinguished with the dissolution of the corporation.” Hapgood v. Hewitt, 119 U.S. 226, 233, 7 S.Ct. 193, 197, 30 L.Ed. 369 (1886); See also Unarco Industries, Inc. v, Kelley, Co., 465 F.2d 1303
- ↑ The compulsory licensing provision, §§ 1(e) and 101(e) of the 1909 Act (now codified with modifications as 17 U.S.C. § 115 (Supp. V 1981)), provided in part:
as a condition of extending the copyrighted control to such mechanical reproductions, that whenever the owner of a musical copyright has used or permitted or knowingly acquiesced in the use of the copyrighted work upon the parts of instruments serving to reproduce mechanically the musical work, any other person may make similar use of the copyrighted work upon the payment to the copyright proprietor of a royalty of 2 cents on each such part manufactured, to be paid by the manufacturer thereof….
17 U.S.C. § 1(e) (1976).
In fact, compulsory licenses are not applicable to duplication of an existing recording. Duchess Music Corp. v. Stern, 458 F.2d 1305, 1310 (9th Cir.) cert. denied 409 U.S. 847, 93 S.Ct. 52, 34 L.Ed.2d 88 (1972).
