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November 14, 1985

INTERNATIONAL FILM EXCHANGE, LTD., et al., Plaintiffs, against CORINTH FILMS, INC., et al., Defendants

The opinion of the court was delivered by: SPRIZZO



Plaintiffs International Film Exchange, Ltd. ("IFEX") and others *fn1" brought an action seeking damages for copyright infringement with respect to the foreign film classic, "Ladri Di Biciclette" ("The Bicycle Thief;" hereinafter the "Film"). Defendants Corinth Films, Inc. ("Corinth") and others *fn2" counterclaimed for infringement, alleging that they, and not plaintiffs, are entitled to the exclusive United States distribution rights to the Film. Both sides have moved for summary judgment, pursuant to Fed. R. Civ. P. 56, to dismiss the respective claims and have raised numerous and complex issues with respect to their alleged copyrights in the Film. Although this action is brought under the Revised Copyright Act of 1976, 17 U.S.C. §§ 101-810 (1982), the operative facts of this action took place while the Copyright Act of 1909, 17 U.S.C. §§ 1-810 (1976 ed.) (superseded 1976), was still effective, *fn3" and the parties' claims to rights in an original, Italian-language Film must be determined in accordance with that statute.


 In 1948, the Film was published in Italy under the name and ownership of Produzioni de Sica ("PDS"), an Italian limited liability company apparently controlled by the Film's director, Vittorio de Sica. In August of 1967, defendant Feiner entered into a contract with PDS for the rights to theatrical, non-theatrical and television exploitation in the United States of an English-language dubbed version of the Film. The contract was to run for a period of ten years. See Exhibits Accompanying Plaintiffs' Rule 56(b) Motion to Dismiss Counterclaim ("Plaintiffs' Exhibits"), at A. In 1970, that contract was amended to include the right to distribute an Italian-language version of the Film, with or without subtitles. See Plaintiffs' Exhibits, at B. The 1970 contract also extended Feiner's distribution rights through 1992. See id. Feiner, in turn, granted exclusive licenses to defendants Corinth (for non-theatrical distribution) and Jacobs (for theatrical distribution). See Answer to Amended Complaint and Amended Counterclaim, at PP 23-24. Subsequently, Corinth assumed Jacobs' license and now claims the exclusive distribution rights to the Film in the United States.

 In 1974, PDS went bankrupt. Italfilm acquired all "rights of economic utilization" to the Film pursuant to a deed of assignment executed by PDS's liquidator on September 26, 1974. See Plaintiffs' Exhibits, at H. *fn4" However, by the terms of that deed, excepted from the transfer were "rights previously acquired by third parties, provided they are duly approved by the competent Italian authorities with respect to the monetary regulations in force." See id., at H, P 2. *fn5" Shortly thereafter, Italfilm assigned all rights to the Film to GFC. In October of 1974, plaintiffs GFC and IFEX entered into a series of agreements, the effect of which was to grant IFEX an exclusive license to create and distribute a subtitled version of the Film for a period of twelve years, beginning in 1977. See Exhibit E to Defendants' Notice of Motion. In 1977, IFEX, in turn, granted an exclusive ten-year license to the Film to MacMillian Films, Inc. ("MacMillian"). In 1982, soon after MacMillian was acquired by Films Incorporated, MacMillian was renamed Brandon.


 Defendants claim that plaintiffs have no valid rights to the Film. They argue that pursuant to the bankruptcy decree, Italfilm took the rights to the Film subject to the pre-existing rights of Feiner. Plaintiffs dispute this, arguing that since defendants failed to obtain the Italian Government authorization required by Currency Law No. 476, see note 5, supra, the grant to Feiner is void and of no effect. See Second Amended Complaint, at P 19. *fn6"

 However, since it appears clear that the Film is now in the public domain, and that neither party may properly claim any proprietary rights in the Film, it is not necessary to resolve these issues. It is undisputed that the date of publication of the Film was December 6, 1948. See Plaintiffs 3(g) Statement, at 16. *fn7" Under the 1909 Act, statutory copyright protection attached and endured for twenty-eight years from the date of first publication with notice. See 17 U.S.C. § 24 (1976) (1909 Act) (superseded). *fn8" Thereafter, an application for renewal of copyright would have had to have 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, 87 L. Ed. 1055, 63 S. Ct. 773 (1943); Tobani v. Carl Fischer, Inc., 98 F.2d 57, 59 (2d Cir.), cert. denied, 305 U.S. 650, 83 L. Ed. 420, 59 S. Ct. 243 (1938); Tobias v. Joy Music, 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. *fn9" 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, 67 L. Ed. 1219, 43 S. Ct. 705 (1923); Classic Film Museum Inc. v. Warner Bros., Inc., 453 F. Supp. 852, 854-855 (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., 100 U.S. App. D.C. 217, 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 P 2, this can only be reasonably interpreted as granting IFEX a right to secure a renewal of copyright in the name of the author. *fn10" See, e.g., Rossiter v. Vogel, 134 F.2d 908, 911 (2d Cir. 1943); Rose v. Bourne, supra note 10, 176 F. Supp. at 610. Indeed, section 24 of the 1909 Act explicitly states that, except in certain limited circumstances, not applicable here, a copyright may only be validly renewed in the name of the author. See 17 U.S.C. § 24 (1976) (1909 Act), supra note 8; Tobias, supra, 204 F. Supp. at 559. *fn11"

 The only other issue arguably raised by the motions is whether any party has any valid derivative-work copyright interest in either a dubbed or subtitled version of the Film. Under the 1976 Act, derivative works are independently copyrightable. See 17 U.S.C. § 103 (1982) (1976 Act). A derivative work can be a translation of a pre-existing work. See 17 U.S.C. 101 (1982) (1976 Act); see also Brecht v. Bentley, 185 F. Supp. 890 (S.D.N.Y. 1960). Therefore, valid copyrights may still exist with respect to any English-language, dubbed, or subtitled versions of the Film, even if, as the Court has found, the underlying Film itself is in the public domain. See Harry Fox Agency, Inc. v. Mills Music, Inc., 543 F. Supp. 844, 849 (S.D.N.Y. 1982), rev'd on other grounds, 720 F.2d 733 (2d. Cir. 1983); rev'd sub. nom. Mills Music, Inc. v. Snyder, 469 U.S. 153, 105 S. Ct. 638, 83 L. Ed. 2d 556 (1985). Russ Berrie & Co., Inc. v. Jerry Elsner Co.,Inc., 482 F. Supp. 980, 985 (S.D.N.Y. 1980) *fn12" However, it is unclear from the papers submitted ...

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