## Facts

- “When Irish Eyes Are Smiling” was written in 1912 by Ernest R. Ball, Chauncey Olcott, and George Graff, Jr., and first copyrighted that year with M. Witmark & Sons as publisher.
- The Copyright Act of 1909 provided a 28-year initial term and a potential 28-year renewal term if timely applied for.
- In 1916, Graff signed an agreement assigning to Witmark both his interest in the existing copyright and his future renewal interest.
- Near the end of the initial term (1939), renewal filings and competing transfers occurred: Witmark arranged for a renewal registration in Graff’s name and obtained an assignment back to Witmark; Graff also filed a renewal claim and assigned it to Fred Fisher Music Co.
- Fred Fisher Music Co. exploited the song under its assignment; Witmark sued for infringement and sought to enforce the 1916 renewal assignment.
- The district court granted an interlocutory injunction for Witmark; the Second Circuit affirmed, and the Supreme Court granted certiorari to resolve whether renewal rights could be assigned before vesting.

## Issues

1. Whether, under the Copyright Act of 1909, an author’s statutory right to a renewal term may be assigned by contract made during the original copyright term, before renewal vests.

## Decision

- The Supreme Court affirmed the Second Circuit and upheld the injunction for Witmark.
- The Court held that the 1909 Act does not bar an author from assigning renewal rights in advance, and such an agreement is effective according to its terms.
- Graff’s later transfer of renewal rights to Fred Fisher Music Co. could not defeat the earlier 1916 agreement with Witmark.

## Legal Principles

- Under the 1909 Act, an author’s renewal expectancy is assignable by agreement executed before expiration of the original term.
- Absent an express statutory restriction, broad statutory authorization to assign copyright interests permits contracting over contingent future interests, including renewal rights dependent on the author’s survival.
- Courts will not create a non-assignability rule for renewal rights based solely on policy arguments about protecting authors when the statute does not clearly impose that limitation.

## Conclusion

The Court held that, under the Copyright Act of 1909, an author may validly assign renewal rights during the initial term, and an author’s later conflicting assignment of the renewal term is ineffective against the earlier contract once renewal vests.


Fred Fisher Music Co. v. M. Witmark & Sons, 318 U.S. 643 (1943)