Page:International Film Exchange v. Corinth Films.pdf/5

been filed with the Copyright Office within one year prior to the expiration of the original term of copyright in order to extend the copyright protection afforded by the statute. See Fred Fisher Music Co. v. M. Witmark & Sons, 318 U.S. 643, 644, 63 S.Ct. 773, 87 L.Ed. 1055 (1943); Tobani v. Carl Fisher, Inc., 98 F.2d 57, 59 (2d Cir.), cert. denied, 305 U.S. 650, 59 S.Ct. 243, 83 L.Ed. 420 (1938); Tobias v. Joy Mimic, Inc., 204 F.Supp. 556, 558 (S.D.N.Y.1962). Thus, the initial term of copyright in the Film expired December 6, 1976, and an application for a valid renewal would have had to have been filed between December 6, 1975 and December 6, 1976.

It is undisputed that neither of the defendants ever filed for a renewal of copyright for the Film during that period. Plaintiff IFEX applied for and received a renewal certificate from the Copyright Office on November 29, 1976. See Exhibit K to Declaration of R. David Jacobs.^[1] However, since this renewal application was made in the name of IFEX, it was not effective to validly extend the copyright term. A mere licensee, as opposed to an assignee, cannot validly renew a copyright in its own name. Bartok v. Boosey & Hawkes, Inc., 523 F.2d 941, 948 n. 11 (2d Cir.1975). As a consequence, the Film irrevocably entered the public domain upon the expiration of the initial term of copyright. See, e.g., Silverman v. Sunrise Pictures Corp., 273 F. 909, 912 (2d Cir.1921), cert. denied, 262 U.S. 758, 43 S.Ct. 705, 67 L.Ed. 1219 (1923); Classic Film Museum Inc. v. Warner Bros., Inc., 453 F.Supp. 852, 854–55 (D.Me.1978), aff’d, 597 F.2d 15 (1st Cir.1979); see also 2 M. Nimmer, supra, 9.05[B], at 9-57.

Nor can there be any question that IFEX was at best a licensee. A transfer of anything less than a totality of a work is a license and not an assignment. See First Financial Marketing Services Group., Inc. v. Field Promotions, Inc., 286 F.Supp. 295, 298 (S.D.N.Y.1968); Key Maps, Inc. v. Pruitt, 470 F.Supp. 33, 38–39 (S.D.Tex.1978); 3 M. Nimmer, supra, § 10.01[A], at 10-4 to 10-5. IFEX was granted the exclusive distribution rights to the Film for a set term of years (twelve) and for a limited geographical area (United States and Canada). See Exhibit E to Defendants’ Notice of Motion. Courts have deemed such qualified transfers to be licenses. See, e.g., Hirshon v. United Artists Corp., 243 F.2d 640, 643 (D.C.Cir.1957) (transfer of rights for a three-year term constitutes a license); First Financial, supra, 286 F.Supp. at 298 (grant of exclusive rights within a limited territory operates as a license).

Although the license from GFC to IFEX states that IFEX acquired the “rights of renewal” to the Film, see Exhibit 6 to Plaintiffs’ Affidavit at ¶ 2, this can only be reasonably interpreted as granting IFEX a right to secure a renewal of copy-

or licensee of the individual author) or by an employer for whom such work is made for hire, the proprietor of such copyright shall be entitled to a renewal and extension of the copyright in such work for the 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: And provided further, That in the case of any other copyrighted work, including a contribution by an individual author to a periodical or to a cyclopedic or other composite work, 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: And provided further, That in default of the registration of such application for renewal and extension, the copyright in any work shall determine at the expiration of twenty-eight years from first publication.

17 U.S.C. § 24 (1976) (1909 Act) (emphasis in original).

1. The renewal certificate lists IFEX as the “Proprietor of copyright in a work made for hire,” and designates PDS as the author of the Film. See Exhibit K to Declaration of R. David Jacobs.