Retroactive Transfer Did Not Affect Co-Author's Action

by Janette Spencer-Davis, Legal Editor, CCH Copyright Law Reports   

    The "retroactive" transfer of copyright ownership by one co-author to an alleged infringer did not affect a non-consenting co-author's copyright infringement action, the U.S. Court of Appeals in New York City ruled in a matter of first impression in the courts of appeal. Allowing a retroactive assignment or license to extinguish the accrued infringement claims of a non-consenting co-owner would destroy the non-consenting co-owner's valuable and vested right to enforce a claim. Accordingly, a district court's dismissal of the non-consenting co-author's copyright claims was vacated and the matter was remanded.

    The transferring co-author orally agreed to grant his rights in two jointly-authored songs to his son, who was one of the authors of two allegedly infringing songs. Subsequently, the oral transfer between father and son was reduced to written agreements, which stated that the effective date of the transfer was the date the father first created the compositions. The non-consenting co-author alleged that her copyright in the jointly-authored compositions was infringed by the songs co-authored by the son.

    Moving for summary judgment, the son argued that he had become a "co-owner" of the disputed compositions as of the date of the creation of the compositions and the non-consenting co-author could not sue a "co-owner." The district court agreed that the non-consenting co-author's suit was barred against the son and those to whom he had licensed the disputed compositions.

    While the Copyright Act is silent on the issue of retroactive transfer or license, the appeals court concluded that such transfers violate basic principles of tort and contract law, and undermine the policies embodied by the Act. A fundamental principle of contract law prohibits the parties to a contract from binding nonparties. The right to prosecute an accrued cause of action for infringement is an incident of copyright ownership. A co-owner who purports to convey not only his right to prosecute past infringement but also his co-owner's right to prosecute past infringements violates the basic rule that an owner cannot convey more than he owns. Thus, even if an oral agreement assigning the non-consenting co-author's copyright in the disputed songs was reached before the alleged infringement occurred, the oral agreement could not be ratified retroactively by transfer agreements to defeat the non-consenting co-author's accrued infringement claims (Davis v. Blige, 2ndCir,¶29,457).

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