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. 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. [sic], 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