On 19 February, Charles E. Keller wrote:
>
> On Tue, 24 Oct 1995 Maurice Robinson <
mrobinsn@mercury.interpath.com> wrote:
>
> [snip]
>> This is much the same as what happened with the first edition of
>> Tolkien's Lord of the Rings trilogy, which Ace books reprinted since
>> there was no proper notice affixed to the original British printing.
>> The later "official" Ballentine Books edition had to include a
>> request from Tolkien about "showing courtesy" to living authors by
>> buying only the editions approved by them, etc.
>>
>> The 1956/7 text thus appears to be in the public domain, and no attempt
>> to add a new copyright date to old material will suffice for its
>> protection. You could call if fraud, but I suspect a court would merely
>> disallow any infringement claims on the basis of it being an invalid
>> copyright.
>
> I attend to this discussion group to be informed about how (c) law
> works. I am not a lawyer, but the following is what I understood to
> be the law:
>
> Prior to GATT's "negation" of portions of the 1909 copyright Act, any
> (non-U.S.) work widely distributed in the U.S. without a copyright
> notice was deemed public domain. This is what occurred in the case
> of the Lord of the Rings (LotR) by J.R.R. Tolkien. When Ace published
> the work in the U.S. without any copyright claims of their own, they
> were just following the law of the day.
Mr. Keller's post raises a number of issues. I am not a lawyer and so
cannot comment on them in a professional capacity, but as the author
of the standard bibliography and publishing history of Tolkien's works,
I am perhaps more familiar than most with the Ace Books affair. Ace
Books made the argument that "they were just following the law of the
day"; but from the point of view of Tolkien, his authorized publishers,
and today his Estate, Ace were following their own erroneous
interpretation of U.S. copyright law. Donald Wollheim of Ace Books
once said in an interview (_Lighthouse_, no. 13, 1965) that "the
Tolkien saga [_The Lord of the Rings_] had never been copyrighted in
the United States. This was no secret to me -- I had known it from
the moment I'd first bought a copy of the Houghton Mifflin [first
American] edition in a book store. . . . One glance at the page
following the title page startled me. No copyright, no date of
publication." He made much the same argument in a statement included
in the biography of Tolkien by Grotta-Kurska (1976). In fact, the
first printing of the Houghton Mifflin _Fellowship of the Ring_, the
first of the three volumes of _The Lord of the Rings_, included on its
copyright page: "Copyright, 1954, by J.R.R. Tolkien. All rights
reserved including the right to reproduce this book or parts thereof
in any form. First published in the United States 1954. . . . Printed
in Great Britain". This was not so in later printings. The first
Houghton Mifflin printing of the second volume, _The Two Towers_, had
"First published in 1954", a notice of restrictions under copyright,
and "Printed in Great Britain . . ." but no copyright line per se.
The first Houghton Mifflin printing of the third volume, _The Return
of the King_, had only "Printed in Great Britain".
Wollheim (again, from his statement quoted by Grotta-Kurska) also
noticed that Houghton Mifflin had certainly imported, by 1965, more
copies of _The Lord of the Rings_ printed in Great Britain than the
copyright law allowed under the so-called "manufacturing clause,"
under which an American publisher had six months in which to register
ad interim copyright for a foreign book written in English, and five
years in which to print his own edition in the U.S., but could not
import more than 1500 copies printed abroad. It was also clear that
the Houghton Mifflin copies had not been typeset and printed in the
U.S. However, Wollheim was wrong when he claimed that Houghton
Mifflin had not taken out U.S. copyright: Houghton Mifflin duly applied
for and received _ad interim_ copyright for the first two of the three
volumes of _The Lord of the Rings_, and for those volumes initially
imported no more than the number of copies allowed under the
"manufacturing clause". They did not do the same for _The Return of
the King_, published in the U.S. in 1956: by then there was enough
demand in the U.S. that Houghton Mifflin could sell several thousand
copies at once. This was striking while the iron was hot, as it were,
for there was no guarantee that sales would continue at that level,
and in one sense this action was in Tolkien's best interests (if poor
judgment in hindsight).
Here I quote from my _J.R.R. Tolkien: A Descriptive Bibliography_
(St Paul's Bibliographies/Oak Knoll Books, 1993): "Tolkien's authorized
publishers were already aware [before Ace Books published their edition]
that a challenge could be made to his American copyrights on technical
grounds. They thought it unlikely that any reputable publisher would
take advantage, but in early 1965 began to take steps to secure U.S.
copyright beyond question. Tolkien was asked to provide new material
for _The Lord of the Rings_, to create a new edition which could be
[newly] copyrighted. The long-promised index also could be included,
as well as new, brief introductions to the volumes if Tolkien could be
persuaded to write them. In April 1965 rumor of the Ace Books edition
reached Houghton Mifflin, and the matter of revision became urgent. A
new edition was wanted not only to copyright, but to compete
successfully against Ace Books' copies, which were cheaply priced.
Houghton Mifflin began to investigate reprint houses and asked for
Tolkien's new material by 1 July." But Tolkien could not produce the
revisions or new material by that deadline.
After the Ace edition was published, Tolkien naturally grew indignant,
provided the revisions wanted (soon published in the Ballantine Books
paperback edition and later in hardcover in Britain and America), and
conducted a personal campaign against Ace Books in letters to American
fans, remarking on the nature of theft. Ace did not at first pay
royalties to Tolkien or his authorized publishers, but in Tolkien's
opinion the affront went further than that. He did not in any way
acknowledge, as Mr. Keller claims,
> the work to be PD when he wrote the following in his later U.S.
> "Authorized" editions:
>
> ". . . while I am still alive, my property in justice unaffected
> by copyright laws. . ."
>
> and
>
> ". . . Those who approve of courtesy (at least) to living authors
> will purchase it and no other. . ." [BTW, "it" is referring to a
> later copyrighted "authorized" edition.]
Tolkien said, in fuller context, in his foreword to the Ballantine Books
edition: "I feel that it [_The Lord of the Rings_] is, while I am still
alive, my property in justice unaffected by copyright laws [i.e. his
property regardless of what copyright law might say -- no less a right to
'intellectual property' than we profess today]. It seems to me a grave
discourtesy, to say no more, to issue my book without even a polite note
informing me of the project. . . . However that may be, this [Ballantine
Books] paperback edition and no other has been published with my consent
and co-operation. Those who approve of courtesy (at least) to living
authors will purchase it and no other." His American fans agreed, and
had harsh words for Ace Books in print. The "War over Middle-earth"
spread into the mainstream popular press as well. Within a year, Ace
gave in to public pressure, agreed to print no more copies of _The Lord
of the Rings_, and negotiated royalties to be paid to Tolkien. No
lawsuit was filed; Ace and Tolkien's authorized publishers came to an
"amicable agreement".
> Upon seeking competent legal council prior to a public (U.S. *only*)
> Internet release of the *Ace* edition of LotR I was then informed of
> the following case. The lawyer stated that this case (cited below)
> concerned LotR and it granted a valid copyright to this work. Can
> someone (presumably with access to WestLaw) enlighten this group as
> to the *legal* basis and validity of this ruling. (*If* it is in
> fact a case involving the *Ace* 195?-60ish printed edition of LotR?
> and not some other issue entirely.)
>
> The United States Court of Appeals for the 2nd Circuit. Eisen.
> Durwood & Co. v. Tolkien, 794 F. Supp. 85, 23 U.S.P.Q.2d 1150
> (S.D.N.Y. 1992) affirmed without opinion, 990 F.2d 623 (2nd Cir.
> 1993).
The case did not address the Ace Books edition (1965) specifically,
but has a direct bearing on the project Mr. Keller mentions.
The plaintiff, d/b/a Ariel Books, a book packaging firm specializing
in new editions of previously published material, sought to declare
that the U.S. copyright of _The Lord of the Rings_ was invalid and
that the work was in the public domain. The argument applied only to
the first two volumes, _The Fellowship of the Ring_ and _The Two
Towers_, not to _The Return of the King_ which involved "differing
circumstances" (see above). The dispute focused on the undisputed fact
that for a number of years, during which the extension of the _ad
interim_ copyright for the two volumes, under section 9 of the 1909
Copyright Act, constituted the sole U.S. protection of the work, large
numbers of British-produced copies were distributed without a copyright
notice in the United States. The plaintiff urged that this worked to
forfeit copyright protection. On 6 April 1992, Judge Vincent L.
Broderick of the United States District Court, Southern District of
New York, disagreed; in 1993, his decision was upheld on appeal.
Judge Broderick, writing in admirably clear English, made a number of
pertinent statements:
1) Section 22 of the Copyright Act of 1909, under which Houghton
Mifflin received _ad interim_ copyright protection for five years, made
no reference to any requirement of inclusion of a copyright notice on
the works involved.
2) "Great Britain had already adhered to the Universal Copyright
Convention which came into force for the United States in 1955. Under
section 9 of the Copyright Act of 1909 as of that time, this entitled
the work, which had a subsisting _ad interim_ copyright, to copyright
protection in the United States without complying with various
formalities including that of printing a copyright notice." The 1909
Act specified that upon the coming into force of the UCC in a foreign
state or nation, every book of a citizen or subject thereof in which
_ad interim_ copyright was subsisting on the effective date of said
coming into force should have copyright for 28 years from the date of
first publication abroad, without the necessity of complying with
further formalities specified in section 23 of the Act -- among which
was "printing of the copyright notice".
3) The plaintiff abandoned any claim that importation of copies printed
abroad in disregard of the (now lapsed) "manufacturing clause" (section
16 of the 1909 Act as amended) resulted in loss of copyright. "In any
event," Judge Broderick noted, "section 16 of the 1909 Act nowhere
states that forfeiture of copyright would result from its violation."
There is much more that I need not get into, except to say that Judge
Broderick bolsters his decision with numerous citations and analogies.
> What is the current (c) status of the Ace printed edition? Are
> digitized works based on the Ace edition in the PD?
It would seem to me -- on the basis at least of common sense and
courtesy (I cannot profess to know all the twists of law) -- that if
Tolkien did not forfeit U.S. copyright for any reason, then the Ace
Books edition was not legally issued, and could not now be legally
issued, on paper or in digital form, any more than it would be legal
to republish without authorization the revised edition of _The Lord
of the Rings_, the American copyright for which has never been in
question.
> Does the fact that the digitized Ace copy was to be *freely* available
> (as opposed to a commercial venture) affect the PD status?
It is my understanding that it makes no difference whether a publication
is freely available or a commercial venture: it is still a publication,
and if unauthorized amounts to theft. After all, if a work, even an
earlier edition of a work, is freely available over the Internet, some
who otherwise would have purchased copies in print might not do so,
resulting in lost royalties and profits. Copyright must apply even in
the digital medium, to protect authors and publishers. Restricting
distribution of a digitized Ace edition only to the U.S. would seem
equally irrelevant as far as the law is concerned -- if indeed such a
thing is possible (at least it brings the definition of "distribution"
into question) in a network accessible from anywhere in the world.
I would urge Mr. Keller, or whoever else intends, or intended, to
distribute the Ace Books edition to the Internet, not to do so without
first contacting the attorney for the Tolkien Estate: Mrs. Cathleen
Blackburn, Morrell, Peel & Gamlen, 1 St Giles', Oxford OX1 3JR, U.K.;
tel. 01865-242468, fax 01865-792053; no e-mail address.
Wayne G. Hammond
Wayne.G.Hammond@williams.edu