Second Circuit Court of Appeals Reverses Work Made For Hire Decision
The Second Circuit Court of Appeals had a recent occasion to discuss the issue of works made for hire. It was in the context of what constitutes a written instrument and when such an instrument needs to be signed in order to create a work made for hire. The case is The Estate of Stanley Kauffmann v. Rochester Institute of Technology and the decision was rendered on August 1, 2019. 1 It reversed the District Court decision which granted summary judgment to the defendant.
Statutory Basis of Work Made For Hire
Under the United States Copyright Act the creator of a work is deemed to be the owner of the copyright 2 unless it is a “work made for hire,” 3 which is defined in the statute as: “In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.” 4
A work made for hire is either:
“(1) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commissioned for use as a contribution to a collective work . . . if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.” 5
The facts were relatively straightforward as summarized in the Second Circuit Decision.
The parties to the litigation were the Estate of Stanley Kauffmann. Kauffmann, who was a film critic and died in 2013, wrote 44 articles which first appeared in The New Republic magazine (“TNR”) in 1999. The defendant is Rochester Institute of Technology (“RIT”) which published an anthology of Kauffmann’s reviews after Kauffmann’s death. The anthology, titled The Millennial Critic: Stanley Kauffmann on Film: 1999-2009, 6 included these 44 Kauffmann’s film reviews from 1999.
It was edited by the third-party defendant Robert J. Cardullo (who is not a party to the appeal). Cardullo must have been some type of character as the court described him as: “a serial plagiarist of writings by Kauffmann and others, [who] misrepresented to RIT that Kauffmann’s will had granted him sole authority to prepare an anthology of Kauffmann’s film reviews. He went so far as to forge a letter purporting to be from counsel for the estate. In emails to counsel in this litigation, Cardullo
admitted that he was ‘fully guilty of all the charges against [him] and that RIT Press was duped by [him] in this affair.’” 7
The Circuit Court noted that Cardullo, who was served with the summons and complaint in Finland, never appeared in the action. As a result, the District Court entered a default judgment against him making him liable to RIT for attorney’s fees of $178,096.64. RIT will presumably never be able to collect any of it!
The Estate of Stanley Kauffmann is the successor owner of Kauffmann’s copyrights. In 2015, it discovered the anthology and brought this action for copyright infringement, claiming that it was the owner of the material printed in the anthology.
During discovery, an agreement from 2004 was produced from TNR’s files (the “2004 Agreement”). The 2004 Agreement purported to establish that the material created by Kauffmann and published in the anthology were works made for hire with RIT owning the copyrights thereto as the author of the articles.
Summary Judgment Motions before the District Court
Based upon the 2004 Agreement, RIT moved for summary judgment, contending that the Estate was not the copyright owner of the articles because they had been created as works made for hire. The Estate cross-moved for partial summary judgment on the issue of liability.
The District Court granted RIT’s motion and denied the Estate’s cross-motion, ruling that the 2004 Agreement “unambiguous[ly] memorialize[d] in writing a preexisting oral contract, evidently dating back to when Kauffmann started writing for The New Republic in 1958”, and that Kauffmann’s contributions to the magazine, including the 44 articles at issue in the litigation, were therefore created as works made for hire. 8 As a result, according to the District Court, Kauffmann never owned any copyrights in the articles and thus the Estate, as his successor in interest, could not maintain this copyright infringement action.
Circuit Court Reversal
As stated above, the first prong of the test as to what constitutes a work made for hire is whether the work is prepared by an employee within the scope of employment.
Because the parties to the litigation all agreed that Kauffmann was not an employee of TNR and that the articles were commissioned for use in a collective work, it was clear to the Circuit Court that Kauffmann was never an employee of TNR. Therefore the litigation necessarily turned on whether the 2004 Agreement constituted a valid and enforceable written agreement under 17 U.S.C. Section 101(2).
The 44 Articles were written in 1999 and the 2004 Agreement was obviously entered into in 2004 or five years later. The question before the Circuit Court was the effect of this delay in memorializing the purported work for hire oral agreement on the copyright ownership claim.
Split Among Circuit Courts
There is a split in the circuit courts as to whether an agreement which establishes a work made for hire needs to be executed before the creation of the work or whether it can be executed afterwards. The 7 th and 9 th Circuit Courts have held to the effect that such an agreement must be executed before the creation of the work. 9
The Second Circuit has previously ruled to the contrary, that in some circumstances a series of writings executed after the creation of the works at issue might satisfy the writing requirement of Section 101(2), citing to its 1995 Playboy Enterprises, Inc. v. Dumas decision. 10 The Circuit Court in this case found Playboy to be persuasive and therefore the better argument. Such writings, said the Playboy court, must confirm a prior agreement, either explicit or implicit, actually made before the creation of the work, even if the actual writing postdates it.
The facts in the Playboy case are relevant to an understanding of the Kauffmann Circuit Court decision. In Playboy, Patrick Nagel created paintings which were contributed to Playboy magazine. Playboy paid Nagel for each of the paintings by issuing a check made out to him after it received each particular painting from Nagel. Playboy had two versions of legends stamped on the backs of the checks. Both versions included the words “BY ENDORSEMENT, PAYEE: acknowledges payment in full for services rendered on a work-made-for-hire basis in connection with the work named on the face of this check.” 11
Nagel was, by agreement between the parties (as was Kauffmann), not an employee of Playboy and therefore the question in that case was whether the legends satisfied the writing requirement of Section 101(2). The Second Circuit opinion in Playboy rejected an absolute rule that the requisite writing had to always be executed before the work was created since, according to the court, that would have thwarted Congress’s goal of ensuring “predictability through advanced planning.” 12
The Second Circuit opinion in Playboy went on to indicate that a subsequent writing would be acceptable where there was “unanimous intent among all concerned that the work for hire doctrine would apply, notwithstanding that some of the paperwork remained not fully executed until after creation of the subject work.” 13 In Playboy, Nagel endorsed all the checks bearing one or the other version of the legend. The Playboy court held that the first endorsement of the first check might not be evidence of a consent to a work for hire relationship, but that Nagel’s subsequent and continuing endorsements created such a relationship.
The Kauffmann Circuit Court, in specifically accepting the Playboy decision, found that the five year separation between creation of the articles in 1999 and execution of the 2004 Agreement
was an insurmountable barrier to a finding of works made for hire. Specifically, the court said that the finding adopted by the District Court would risk endorsing a fiction of “two separate authors” which was specifically rejected in Playboy, referring to one period during the initial five year interval before the 2004 Agreement was executed and another one for the time period thereafter. The court also mentioned that a work made for hire decision under these circumstances would render uncertain several aspects of the copyright in each article, such as its duration, renewal rights, and termination rights. 14
In reliance upon the Playboy decision and its own interpretation of the facts, the Circuit Court concluded that the five year period between the delivery of the articles and the 2004 Agreement was simply too long a period of time. Accordingly, it did not satisfy the statutory requirement of a work made for hire. Therefore, the District Court decision was reversed.
The Circuit Court did not opine as to how short (or long) a period would be required to constitute sufficient grounds for an acceptable work for hire written agreement created after the fact nor did it give any indication as to what factors would go into such a determination (except of course, that five years was too long). That decision was left to another day, another court, and another case.
End Notes: 1 2 nd Circuit Docket Number 18-2404-cv
2 17 U.S.C. Sec. 201(a)
3 17 U.S.C. Sec. 201(b)
4 17 U.S.C. Sec. 201(b)
5 17 U.S.C. Sec. 101(2)
6 Circuit Court Opinion at page 3-4
7 Circuit Court Opinion at page 5
8 Circuit Court Opinion at page 5, citing to the District Court Opinion at Estate of Kauffmann v. Rochester Institute of Technology, No. 17-CV-6061, 2018 WL 3731445, at *3 (W.D.N.Y. Aug. 6, 2018).
9 Schiller & Schmidt, Inc. v. Nordisco Corp., 969 F.2d 410, 412-13 (7 th Cir. 1992); Gladwell Government Services, Inc. v. County of Marin, 265 F. App’x 624, 626 (9 th Cir. 2008). See also Goldstein on Copyright Sec. 22.214.171.124 (3d ed. 2019) and Patry on Copyright Sec. 5:49 (2019), which both comment favorably on these decisions.
10 Playboy Enterprises, Inc. v. Dumas, 53 F.3d 549, 558-59 (2d Cir. 1995). See also Nimmer on Copyright Sec. 5.03[B][b] (2019) which comments favorably on the Playboy decision.
11 Circuit Court Opinion at page 8, citing to Playboy supra, 53 F.3d at 552-53.
12 Circuit Court Opinion at page 8, quoting Community for Creative Non-Violence v. Reid, 490 U.S. 730, 750 (1989).
13 Circuit Court Opinion at page 8
14 Circuit Court Opinion at page 8-9
Copyright Joel L. Hecker 2019.
I'm busy working on my blog posts. Watch this space!