The opinion
JAMES ALGER FEE, Circuit Judge
(dissenting).
This cause should be remanded to the District Court with direction to dismiss.
There is no diversity of citizenship and no suit for accounting can be entertained in the national courts between citizens of California, without more. Although it is obvious that this is not a suit for infringement, it is urged that there is jurisdiction because it is a civil action arising under an “Act of Congress relating to copyrights.”
The acts of Congress which relate to this particular situation provide that a “person may obtain registration of his claim to copyright by complying with the provisions of this title,” 17 U.S.C.A. § 11 . Plaintiff has not alleged any compliance with the provisions of the title. She is not, nor is her ward, the author or composer of the works in question. At the outside then, plaintiff claims that Stephen William Ballentine has a right to register as part owner of a renewal of a copyright. The statute in this regard provides: “ * * * the widow, * * * or children of the author, if the author be not living, * * * shall be entitled to a renewal * * * when application for such renewal and extension shall have been made to the copyright office and duly registered therein.” 17 U.S.C.A. § 24 . (Emphasis added.)
There is no allegation in the complaint that Stephen William Ballentine or any *635 one in his behalf has applied for registration of renewal or any interest therein to the copyright office. Therefore, no justiciable claim or action arising under an act of Congress relating to copyright is involved or set up.
In the second place, this failure to apply for registration indicates that Stephen William Ballentine or his guardian failed to exhaust his remedies in the administrative field, and therefore, even if there be jurisdiction, no action lies until he has applied for registration of renewal of copyright or an interest in renewal.
The jurisdiction and discretion here is committed to the copyright office, and the court should not interfere until that office has made a determination. The mere fact that plaintiff may fear that the copyright office would not grant an interest in the renewal is no reason to allow her to seek a primary remedy in the courts.
The commitment to the copyright office is positive and exclusive. The same statute provides:
“ * * * the register of copyrights * * * shall, under the direction and supervision of the Librarian of Congress, perform all the duties relating to the registration of copyrights.” 17 U.S.C.A. § 201 .
As noted above, a person may obtain registration by complying with the provisions “ * * * and upon such compliance the Register of Copyrights shall issue to him the certificates”. 17 U.S. C.A. § 11. Under the very section under which this claim is now urged in the court, it is provided, when application for such renewal shall have been made to the copyright office “and duly registered therein”, a child of the author under appropriate conditions “shall be entitled to a renewal”. 17 U.S.C.A. § 24 .
In Bouve v. Twentieth Century Fox, 74 App.D.C. 271 , 122 F.2d 51, 53 , it is said:
“It seems obvious, also, that the Act establishes a wide range of selection within which discretion must be exercised by the Register in determining what he has no power to accept.”
The case just cited expressly holds that such discretion is not uncontrolled, but that the Register is an officer whose acts are subject to judicial review and correction. 122 F.2d at page 54 .
In view of this situation, even if this Court were to reverse the decree and direct that the trial court enter a declaration that plaintiff is entitled to an interest in the copyright, the Register of Copyrights would not necessarily be bound by the determination made in a proceeding where his act was not subject as yet to judicial review. Probably, if Stephen William Ballentine filed an application in accordance with the statute, the Register of Copyrights might refuse to register such a claimed interest irrespective of our direction to hold any accounting. We have heretofore questioned the right of administrative bodies to refuse to follow our opinions. But the cure for that is not to make determination until the administrative process is finished. In such a case, review can be had under the Administrative Procedure Act, 5 U.S.C.A. § 1001 et seq., after final action has been taken. What the guardian is asking is that she win the case before it is commenced.
Mr. Justice Jackson said in Public Service Commission of Utah v. Wycoff Co., 344 U.S. 237 , 73 S.Ct. 236 , 97 L.Ed. 291 , that judicial pronouncements under such circumstances are improper:
“* * * the courts * * * must be alert to avoid imposition upon their jurisdiction through obtaining * * * premature interventions, especially in the field of public law.” 344 U.S. at page 244 , 73 S.Ct. at page 240 .
“* *• * the declaratory judgment procedure will not be used to preempt and prejudge issues that are committed for initial decision to an administrative body * * *. Responsibility for effective functioning of the administrative process can not be thus transferred from *636 the bodies in which Congress has placed it to the courts.” 344 U.S. at page 246 , 73 S.Ct. at page 241 .
A clear statement of the situation in which the court would find itself, is found in Minneapolis Grain Exchange v. Farmers Union Grain Terminal Association, D.C., 75 F.Supp. 577 , 582:
“* * * the decision of this Court will not be final because of certain exclusive powers possessed by the administrative agency, it seems only wise and just, as well as realistic, that this Court should refer the matter to the administrative agency by declining to grant a declaratory judgment.”
The grants of patents and of copyrights stem from the same clause of the Federal Constitution:
“To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”. Art. I, Sec. 8.
It is obvious that, under the patent section, one can bring an action for infringement. But the writer has never found or heard of any case wherein one claiming to be the joint inventor was allowed to bring suit against the person who had obtained the patent without proceeding in the patent office. Finally, a suit for accounting will not lie, generally speaking, between joint owners of a patent even though their rights have been established by the grant. This is a matter of substantive law. In Talbot v. Quaker-State Oil Refining Co., 3 Cir., 104 F.2d 967 , a joint owner of a patent granted license without obtaining consent of his joint owner. It was there held that accounting would not be allowed and that the holding of the state court that one co-owner had licensed the use of the patent to another without consent of the other owner was res adjudi-cata and therefore no' suit lay for infringement of the license. It has been held that the granting of a patent to two persons vests each with an undivided half interest, creating the relation of co-tenants between them, so that each becomes entitled to use the invention without accounting to the other. Drake v.. Hall, 7 Cir., 220 F. 905, 906 ; Blackledge v. Weir & Craig Mfg. Co., 7 Cir., 108 F. 71, 76 . The same principles had beem previously applied specifically to copyrights in the case of Carter v. Bailey, 64 Me. 458, 463 . This last case was tried’, in the state court.
It would seem that these matters are-conclusive upon us and that there was. no ground whatsoever of jurisdiction until the statutes had been complied with, and the copyright office had either granted or refused registration of the interest of Stephen William Ballentine in the-renewals.
Furthermore, it seems that, if the best-face is put upon the matter, still the-complaint does not state a claim upon which relief can be granted or, as we-used to say, there is no cause of actiom set up. In any event, I think it was an abuse of discretion for the trial court to attempt to give declaratory relief im a field so beset with questions going to-the primary right as this. 28 U.S.C.A. §§ 2201 , 2202.
The opinion of the majority passes, these matters over without consideration.. If the direction to the trial court be-carried out and an accounting had, this-whole series of questions can be raised. Proper administration indicates that,, since the administrative process plays-such a great part in modern governmental structure, the courts should not encroach upon the severely limited field', in which such bodies operate. Salmon Bay Sand & Gravel Co. v. Marshall, 9' Cir., 93 F.2d 1 ; O'Leary v. Dielschnei-der, 9 Cir., 204 F.2d 810 . But it is a. useless gesture to direct the trial court-to hold an accounting. After trial is had,, these questions can all again be raised by either party. There is no security ins judgment, even when it has attained apparent finality. Rights should not be-declared under Federal Declaratory Judgments Act unless the determination-, will be of practical help in ending the-controversy.