Sunday, February 16, 2014

Class 12: Ownership

Introduction

In the last several classes, we learned about the different categories of works of authorship that are protected by copyright: literary works; pictorial, graphic, and sculptural works; musical works and sound recordings; and dramatic, choreographic, and audiovisual works. We also tried to identify the elements of each of those categories of works, and to determine when copyright can protect one of thse elements.

In this class, we will learn how to determine the initial ownership of the copyright in an original work of authorship. In particular we will discuss works made for hire and joint works.

Ownership

Under the Copyright Act, the copyright in an original work of authorship initially belongs to the author or authors of the work. "Copyright in a work protected under this title vests initially in the author or authors of the work. The authors of a joint work are coowners of copyright in the work." 17 U.S.C. § 201(a).

The Copyright Act does not define the term "author," but courts have generally found that the author of a work is the person who caused the creation of the work. Often, the author of a work is the person who created the work. But not always. For example, the author of a work made for hire is the employer of the person who created the work.

Works Made For Hire

Under the Copyright Act, certain works created by employees in the course of their employment are categorized as works made for hire. The author of a work made for hire is the employer, rather than the employee who created work.
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.
17 U.S.C. § 201(b).

Categorizing a work as a work made for hire may affect the scope of the copyright in the work. Normally, the copyright term of a work is the life of the author plus 70 years, but the copyright term of a work made for hire is 95 years from publication or 120 years from creation, whichever is shorter. 17 U.S.C. § 302.  In addition, a work made for hire is not subject to the termination provisions in Sections 203 and 304, which allow authors to reclaim transferred copyrights under certain circumstances. 17 U.S.C. §§ 203 and 304. The status of the employer may also affect the copyright. For example, if the employer is the United States, the work cannot be protected by copyright at all:
Copyright protection under this title is not available for any work of the United States Government, but the United States Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest, or otherwise.
17 U.S.C. § 105.

Section 101 of the Copyright Act defines a "work made for hire" as:
(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, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.
17 U.S.C. § 101.

Under 17 U.S.C. §§ 101 and 201, a work created by an employee within the scope of employment is a work made for hire owned by the employer, unless the employee and the employer have agreed otherwise in a written instrument.

But determining the ownership of a work created by an independent contractor is more complicated. An independent contractor is a person "who is entrusted to undertake a specific project but who is left free to do the assigned work and to choose the method for accomplishing it." Black's Law Dictionary 639 (9th ed. 2009). The Copyright Act provides that certain works created by independent contractors may be works made for hire, under certain circumstances.
Employees & Independent Contractors

Under Section 101 of the Copyright Act, a "work made for hire" is defined as a "work prepared by an employee within the scope of his or her employment." 17 U.S.C. § 101. While the definition of a "work made for hire" looks straightforward, courts disagreed about the meaning of the terms "employee" and "scope of employment." Some courts interpreted the term "employee" expansively, holding that it includes certain independent contractors. See, e.g., Aldon Accessories, Ltd. v. Spiegel, Inc., 738 F.2d 548 (2d Cir. 1984). Others interpreted it narrowly, limiting it to the master-servant relationship of agency law. See, e.g., Easter Seal Soc'y v. Playboy Enters., 815 F.2d 323 (5th Cir. 1987).

Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989)
MARSHALL, J., delivered the opinion for a unanimous Court. 
In this case, an artist and the organization that hired him to produce a sculpture contest the ownership of the copyright in that work. To resolve this dispute, we must construe the "work made for hire" provisions of the Copyright Act of 1976 (Act or 1976 Act), 17 U.S.C. §§ 101 and 201(b), and in particular, the provision in § 101, which defines as a "work made for hire" a "work prepared by an employee within the scope of his or her employment" (hereinafter § 101(1)). 
Petitioners are the Community for Creative Non-Violence (CCNV), a nonprofit unincorporated association dedicated to eliminating homelessness in America, and Mitch Snyder, a member and trustee of CCNV. In the fall of 1985, CCNV decided to participate in the annual Christmastime Pageant of Peace in Washington, D.C., by sponsoring a display to dramatize the plight of the homeless. As the District Court recounted: 
Snyder and fellow CCNV members conceived the idea for the nature of the display: a sculpture of a modern Nativity scene in which, in lieu of the traditional Holy Family, the two adult figures and the infant would appear as contemporary homeless people huddled on a streetside steam grate. The family was to be black (most of the homeless in Washington being black); the figures were to be life-sized, and the steam grate would be positioned atop a platform "pedestal," or base, within which special effects equipment would be enclosed to emit simulated "steam" through the grid to swirl about the figures. They also settled upon a title for the work -- "Third World America" -- and a legend for the pedestal: "and still there is no room at the inn." 
652 F.Supp. 1453, 1454 (DC 1987). 
Snyder made inquiries to locate an artist to produce the sculpture. He was referred to respondent James Earl Reid, a Baltimore, Maryland, sculptor. In the course of two telephone calls, Reid agreed to sculpt the three human figures. CCNV agreed to make the steam grate and pedestal for the statue. Reid proposed that the work be cast in bronze, at a total cost of approximately $100,000 and taking six to eight months to complete. Snyder rejected that proposal because CCNV did not have sufficient funds, and because the statue had to be completed by December 12 to be included in the pageant. Reid then suggested, and Snyder agreed, that the sculpture would be made of a material known as "Design Cast 62," a synthetic substance that could meet CCNV's monetary and time constraints, could be tinted to resemble bronze, and could withstand the elements. The parties agreed that the project would cost no more than $15,000, not including Reid's services, which he offered to donate. The parties did not sign a written agreement. Neither party mentioned copyright. 
After Reid received an advance of $3,000, he made several sketches of figures in various poses. At Snyder's request, Reid sent CCNV a sketch of a proposed sculpture showing the family in a creche-like setting: the mother seated, cradling a baby in her lap; the father standing behind her, bending over her shoulder to touch the baby's foot. Reid testified that Snyder asked for the sketch to use in raising funds for the sculpture. Snyder testified that it was also for his approval. Reid sought a black family to serve as a model for the sculpture. Upon Snyder's suggestion, Reid visited a family living at CCNV's Washington shelter, but decided that only their newly born child was a suitable model. While Reid was in Washington, Snyder took him to see homeless people living on the streets. Snyder pointed out that they tended to recline on steam grates, rather than sit or stand, in order to warm their bodies. From that time on, Reid's sketches contained only reclining figures. 
Throughout November and the first two weeks of December, 1985, Reid worked exclusively on the statue, assisted at various times by a dozen different people who were paid with funds provided in installments by CCNV. On a number of occasions, CCNV members visited Reid to check on his progress and to coordinate CCNV's construction of the base. CCNV rejected Reid's proposal to use suitcases or shopping bags to hold the family's personal belongings, insisting instead on a shopping cart. Reid and CCNV members did not discuss copyright ownership on any of these visits. 
On December 24, 1985, 12 days after the agreed-upon date, Reid delivered the completed statue to Washington. There it was joined to the steam grate and pedestal prepared by CCNV, and placed on display near the site of the pageant. Snyder paid Reid the final installment of the $15,000. The statue remained on display for a month. In late January, 1986, CCNV members returned it to Reid's studio in Baltimore for minor repairs. Several weeks later, Snyder began making plans to take the statue on a tour of several cities to raise money for the homeless. Reid objected, contending that the Design Cast 62 material was not strong enough to withstand the ambitious itinerary. He urged CCNV to cast the statue in bronze at a cost of $35,000, or to create a master mold at a cost of $5,000. Snyder declined to spend more of CCNV's money on the project. 
In March, 1986, Snyder asked Reid to return the sculpture. Reid refused. He then filed a certificate of copyright registration for "Third World America" in his name, and announced plans to take the sculpture on a more modest tour than the one CCNV had proposed. Snyder, acting in his capacity as CCNV's trustee, immediately filed a competing certificate of copyright registration. 
Snyder and CCNV then commenced this action against Reid and his photographer, Ronald Purtee, seeking return of the sculpture and a determination of copyright ownership. The District Court granted a preliminary injunction, ordering the sculpture's return. After a 2-day bench trial, the District Court declared that "Third World America" was a "work made for hire" under § 101 of the Copyright Act, and that Snyder, as trustee for CCNV, was the exclusive owner of the copyright in the sculpture. 652 F.Supp. at 1457. The court reasoned that Reid had been an "employee" of CCNV within the meaning of § 101(1) because CCNV was the motivating force in the statue's production. Snyder and other CCNV members, the court explained, "conceived the idea of a contemporary Nativity scene to contrast with the national celebration of the season," and "directed enough of [Reid's] effort to assure that, in the end, he had produced what they, not he, wanted." Id. at 1456. 
The Court of Appeals for the District of Columbia Circuit reversed and remanded, holding that Reid owned the copyright because "Third World America" was not a work for hire. 270 U.S.App.D.C. 26, 35, 846 F.2d 1485, 1494 (1988). Adopting what it termed the "literal interpretation" of the Act as articulated by the Fifth Circuit in Easter Seal Society for Crippled Children and Adults of Louisiana, Inc. v. Playboy Enterprises, 815 F.2d 323, 329 (1987), cert. denied, 485 U.S. 981 (1988), the court read § 101 as creating "a simple dichotomy in fact between employees and independent contractors." 270 U.S.App.D.C. at 33, 846 F.2d at 1492. Because, under agency law, Reid was an independent contractor, the court concluded that the work was not "prepared by an employee" under § 101(1). Id. at 35, 846 F.2d at 1494. Nor was the sculpture a "work made for hire" under the second subsection of § 101 (hereinafter § 101(2)): sculpture is not one of the nine categories of works enumerated in that subsection, and the parties had not agreed in writing that the sculpture would be a work for hire. Ibid. The court suggested that the sculpture nevertheless may have been jointly authored by CCNV and Reid, id. at 36, 846 F.2d at 1495, and remanded for a determination whether the sculpture is indeed a joint work under the Act, id. at 39-40, 846 F.2d at 1498-1499. 
We granted certiorari to resolve a conflict among the Courts of Appeals over the proper construction of the "work made for hire" provisions of the Act. 488 U.S. 940 (1988). We now affirm. 
II 
The Copyright Act of 1976 provides that copyright ownership "vests initially in the author or authors of the work." 17 U.S.C. § 201(a). As a general rule, the author is the party who actually creates the work, that is, the person who translates an idea into a fixed, tangible expression entitled to copyright protection. § 102. The Act carves out an important exception, however, for "works made for hire." If the work is for hire, "the employer or other person for whom the work was prepared is considered the author," and owns the copyright, unless there is a written agreement to the contrary. § 201(b). Classifying a work as "made for hire" determines not only the initial ownership of its copyright, but also the copyright's duration, § 302(c), and the owners' renewal rights, § 304(a), termination rights, § 203(a), and right to import certain goods bearing the copyright, § 601(b)(1). See 1 M. Nimmer & D. Nimmer, Nimmer on Copyright § 5.03 [A], pp. 5-10 (1988). The contours of the work for hire doctrine therefore carry profound significance for freelance creators -- including artists, writers, photographers, designers, composers, and computer programmers -- and for the publishing, advertising, music, and other industries which commission their works. 
Section 101 of the 1976 Act provides that a work is "for hire" under two sets of circumstances: 
(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, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. 
Petitioners do not claim that the statue satisfies the terms of § 101(2). Quite clearly, it does not. Sculpture does not fit within any of the nine categories of "specially ordered or commissioned" works enumerated in that subsection, and no written agreement between the parties establishes "Third World America" as a work for hire. 
The dispositive inquiry in this case therefore is whether "Third World America" is "a work prepared by an employee within the scope of his or her employment" under § 101(1). The Act does not define these terms. In the absence of such guidance, four interpretations have emerged. The first holds that a work is prepared by an employee whenever the hiring party retains the right to control the product. See Peregrine v. Lauren Corp., 601 F.Supp. 828, 829 (Colo.1985); Clarkstown v. Reeder, 566 F.Supp. 137, 142 (SDNY 1983). Petitioners take this view. Brief for Petitioners 15; Tr. of Oral. Arg. 12. A second, and closely related, view is that a work is prepared by an employee under § 101(1) when the hiring party has actually wielded control with respect to the creation of a particular work. This approach was formulated by the Court of Appeals for the Second Circuit, Aldon Accessories Ltd. v. Spiegel, Inc., 738 F.2d 548, cert. denied, 469 U.S. 982 (1984), and adopted by the Fourth Circuit, Brunswick Beacon, Inc. v. Schock-Hopchas Publishing Co., 810 F.2d 410 (1987), the Seventh Circuit, Evans Newton, Inc. v. Chicago Systems Software, 793 F.2d 889, cert. denied, 479 U.S. 949 (1986), and, at times, by petitioners, Brief for Petitioners 17. A third view is that the term "employee" within § 101(1) carries its common law agency law meaning. This view was endorsed by the Fifth Circuit in Easter Seal Society for Crippled Children and Adults of Louisiana, Inc. v. Playboy Enterprises, 815 F.2d 323 (1987), and by the Court of Appeals below. Finally, respondent and numerous amici curiae contend that the term "employee" only refers to "formal, salaried" employees. See, e.g., Brief for Respondent 23-24; Brief for Register of Copyrights as Amicus Curiae 7. The Court of Appeals for the Ninth Circuit recently adopted this view. See Dumas v. Gommerman, 865 F.2d 1093 (1989). 
The starting point for our interpretation of a statute is always its language. Consumer Product Safety Comm'n v. GTE Sylvania, Inc., 447 U.S. 102, 108 (1980). The Act nowhere defines the terms "employee" or "scope of employment." It is, however, well established that 
[w]here Congress uses terms that have accumulated settled meaning under . . . the common law, a court must infer, unless the statute otherwise dictates, that Congress means to incorporate the established meaning of these terms. 
NLRB v. Amax Coal Co., 453 U.S. 322, 329 (1981); see also Perrin v. United States, 444 U.S. 37, 42 (1979). In the past, when Congress has used the term "employee" without defining it, we have concluded that Congress intended to describe the conventional master-servant relationship as understood by common law agency doctrine. See, e.g., Kelley v. Southern Pacific Co., 419 U.S. 318, 322-323 (1974); Baker v. Texas & Pacific R. Co., 359 U.S. 227, 228 (1959) (per curiam); Robinson v. Baltimore & Ohio R. Co., 237 U.S. 84, 94 (1915). Nothing in the text of the work for hire provisions indicates that Congress used the words "employee" and "employment" to describe anything other than "`the conventional relation of employer and employe.'" Kelley, supra, at 323, quoting Robinson, supra, at 94; compare NLRB v. Hearst Publications, Inc., 322 U.S. 111, 124-132 (1944) (rejecting agency law conception of employee for purposes of the National Labor Relations Act where structure and context of statute indicated broader definition). On the contrary, Congress' intent to incorporate the agency law definition is suggested by § 101(1)'s use of the term, "scope of employment," a widely used term of art in agency law. See Restatement (Second) of Agency § 228 (1958) (hereinafter Restatement). 
In past cases of statutory interpretation, when we have concluded that Congress intended terms such as "employee," "employer," and "scope of employment" to be understood in light of agency law, we have relied on the general common law of agency, rather than on the law of any particular State, to give meaning to these terms. See, e.g., Kelley, 419 U.S. at 323-324, and n. 5; id. at 332 (Stewart, J., concurring in judgment); Ward v. Atlantic Coast Line R. Co., 362 U.S. 396, 400 (1960); Baker, supra, at 228. This practice reflects the fact that "federal statutes are generally intended to have uniform nationwide application." Mississippi Band of Choctaw Indians v. Holyfield, ante at 43. Establishment of a federal rule of agency, rather than reliance on state agency law, is particularly appropriate here, given the Act's express objective of creating national, uniform copyright law by broadly preempting state statutory and common law copyright regulation. See 17 U.S.C. § 301(a). We thus agree with the Court of Appeals that the term "employee" should be understood in light of the general common law of agency. 
In contrast, neither test proposed by petitioners is consistent with the text of the Act. The exclusive focus of the right to control the product test on the relationship between the hiring party and the product clashes with the language of § 101(1), which focuses on the relationship between the hired and hiring parties. The right to control the product test also would distort the meaning of the ensuing subsection, § 101(2). Section 101 plainly creates two distinct ways in which a work can be deemed for hire: one for works prepared by employees, the other for those specially ordered or commissioned works which fall within one of the nine enumerated categories and are the subject of a written agreement. The right to control the product test ignores this dichotomy by transforming into a work for hire under § 101(1) any "specially ordered or commissioned" work that is subject to the supervision and control of the hiring party. Because a party who hires a "specially ordered or commissioned" work by definition has a right to specify the characteristics of the product desired, at the time the commission is accepted, and frequently until it is completed, the right to control the product test would mean that many works that could satisfy § 101(2) would already have been deemed works for hire under § 101(1). Petitioners' interpretation is particularly hard to square with § 101(2)'s enumeration of the nine specific categories of specially ordered or commissioned works eligible to be works for hire, e.g., "a contribution to a collective work," "a part of a motion picture," and "answer material for a test." The unifying feature of these works is that they are usually prepared at the instance, direction, and risk of a publisher or producer. By their very nature, therefore, these types of works would be works by an employee under petitioners' right to control the product test. 
The actual control test, articulated by the Second Circuit in Aldon Accessories, fares only marginally better when measured against the language and structure of § 101. Under this test, independent contractors who are so controlled and supervised in the creation of a particular work are deemed "employees" under § 101(1). Thus, work for hire status under § 101(1) depends on a hiring party's actual control of, rather than right to control, the product. Aldon Accessories, 738 F.2d at 552. Under the actual control test, a work for hire could arise under § 101(2), but not under § 101(1), where a party commissions, but does not actually control, a product which falls into one of the nine enumerated categories. Nonetheless, we agree with the Fifth Circuit Court of Appeals that "[t]here is simply no way to milk the 'actual control' test of Aldon Accessories from the language of the statute." Easter Seal Society, 815 F.2d at 334. Section 101 clearly delineates between works prepared by an employee and commissioned works. Sound though other distinctions might be as a matter of copyright policy, there is no statutory support for an additional dichotomy between commissioned works that are actually controlled and supervised by the hiring party and those that are not. 
We therefore conclude that the language and structure of § 101 of the Act do not support either the right to control the product or the actual control approaches. The structure of § 101 indicates that a work for hire can arise through one of two mutually exclusive means, one for employees and one for independent contractors, and ordinary canons of statutory interpretation indicate that the classification of a particular hired party should be made with reference to agency law. 
This reading of the undefined statutory terms finds considerable support in the Act's legislative history. Cf. Diamond v. Chakrabarty, 447 U.S. 303, 315 (1980). The Act, which almost completely revised existing copyright law, was the product of two decades of negotiation by representatives of creators and copyright-using industries, supervised by the Copyright Office and, to a lesser extent, by Congress. See Mills Music, Inc. v. Snyder, 469 U.S. 153, 159 (1985); Litman, Copyright, Compromise, and Legislative History, 72 Cornell L.Rev. 857, 862 (1987). Despite the lengthy history of negotiation and compromise which ultimately produced the Act, two things remained constant. First, interested parties and Congress at all times viewed works by employees and commissioned works by independent contractors as separate entities. Second, in using the term "employee," the parties and Congress meant to refer to a hired party in a conventional employment relationship. These factors militate in favor of the reading we have found appropriate. 
In 1955, when Congress decided to overhaul copyright law, the existing work for hire provision was § 62 of the 1909 Copyright Act, 17 U.S.C. § 26 (1976 ed.) (1909 Act). It provided that "the word 'author' shall include an employer in the case of works made for hire." Because the 1909 Act did not define "employer" or "works made for hire," the task of shaping these terms fell to the courts. They concluded that the work for hire doctrine codified in § 62 referred only to works made by employees in the regular course of their employment. As for commissioned works, the courts generally presumed that the commissioned party had impliedly agreed to convey the copyright, along with the work itself, to the hiring party. See, e.g., Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., 221 F.2d 569, 570, aff'd, 223 F.2d 252 (CA2 1955); Yardley v. Houghton Mifflin Co., 108 F.2d 28, 31 (CA2 1939), cert. denied, 309 U.S. 686 (1940). 
In 1961, the Copyright Office's first legislative proposal retained the distinction between works by employees and works by independent contractors. See Report of the Register of Copyrights on the General Revision of the U.S. Copyright Law, 87th Cong., 1st Sess., Copyright Law Revision 86-87 (H. Judiciary Comm. Print 1961). After numerous meetings with representatives of the affected parties, the Copyright Office issued a preliminary draft bill in 1963. Adopting the Register's recommendation, it defined "work made for hire" as 
a work prepared by an employee within the scope of the duties of his employment, but not including a work made on special order or commission. 
Preliminary Draft for Revised U.S. Copyright Law and Discussions and Comments on the Draft, 88th Cong., 2d Sess., Copyright Law Revision, Part 3, p. 15, n. 11 (H. Judiciary Comm. Print 1964) (hereinafter Preliminary Draft). 
In response to objections by book publishers that the preliminary draft bill limited the work for hire doctrine to "employees," the 1964 revision bill expanded the scope of the work for hire classification to reach, for the first time, commissioned works. The bill's language, proposed initially by representatives of the publishing industry, retained the definition of work for hire insofar as it referred to "employees," but added a separate clause covering commissioned works, without regard to the subject matter, "if the parties so agree in writing." S. 3008, H.R. 11947, H.R. 12354, 88th Cong., 2d Sess., § 54 (1964), reproduced in 1964 Revision Bill with Discussions and Comments, 89th Cong., 1st Sess., Copyright Law Revision, pt. 5, p. 31 (H.R. Judiciary Comm. Print 1965). Those representing authors objected that the added provision would allow publishers to use their superior bargaining position to force authors to sign work for hire agreements, thereby relinquishing all copyright rights as a condition of getting their books published. See Supplementary Report, at 67. 
In 1965, the competing interests reached an historic compromise, which was embodied in a joint memorandum submitted to Congress and the Copyright Office, incorporated into the 1965 revision bill, and ultimately enacted in the same form and nearly the same terms 11 years later, as § 101 of the 1976 Act. The compromise retained as subsection (1) the language referring to "a work prepared by an employee within the scope of his employment." However, in exchange for concessions from publishers on provisions relating to the termination of transfer rights, the authors consented to a second subsection which classified four categories of commissioned works as works for hire if the parties expressly so agreed in writing: works for use "as a contribution to a collective work, as a part of a motion picture, as a translation, or as supplementary work." S. 1006, H.R. 4347, H.R. 5680, H.R. 6835, 89th Cong., 1st Sess., § 101 (1965). The interested parties selected these categories because they concluded that these commissioned works, although not prepared by employees, and thus not covered by the first subsection, nevertheless should be treated as works for hire because they were ordinarily prepared "at the instance, direction, and risk of a publisher or producer." Supplementary Report, at 67. The Supplementary Report emphasized that only the "four special cases specifically mentioned" could qualify as works made for hire; "[o]ther works made on special order or commission would not come within the definition." Id. at 67-68. 
In 1966, the House Committee on the Judiciary endorsed this compromise in the first legislative report on the revision bills. See H.R.Rep. No. 2237, 89th Cong., 2d Sess., 114, 116 (1966). Retaining the distinction between works by employees and commissioned works, the House Committee focused instead on 
how to draw a statutory line between those works written on special order or commission that should be considered as works made for hire, and those that should not.
Id. at 115. The House Committee added four other enumerated categories of commissioned works that could be treated as works for hire: compilations, instructional texts, tests, and atlases. Id. at 116. With the single addition of "answer material for a test," the 1976 Act, as enacted, contained the same definition of works made for hire as did the 1966 revision bill, and had the same structure and nearly the same terms as the 1966 bill. [n13] Indeed, much of the language of the 1976 House and Senate Reports was borrowed from the Reports accompanying the earlier drafts. See, e.g., H.R.Rep. No. 94-1476, p. 121 (1976); S.Rep. No. 94-473, p. 105 (1975). 
Thus, the legislative history of the Act is significant for several reasons. First, the enactment of the 1965 compromise with only minor modifications demonstrates that Congress intended to provide two mutually exclusive ways for works to acquire work for hire status: one for employees and the other for independent contractors. Second, the legislative history underscores the clear import of the statutory language: only enumerated categories of commissioned works may be accorded work for hire status. The hiring party's right to control the product simply is not determinative. See Note, The Creative Commissioner: Commissioned Works Under the Copyright Act of 1976, 62 N.Y.U.L.Rev. 373, 388 (1987). Indeed, importing a test based on a hiring party's right to control, or actual control of, a product would unravel the "'carefully worked-out compromise aimed at balancing legitimate interests on both sides.'" H.R.Rep. No. 2237, supra, at 114, quoting Supplemental Report, at 66. 
We do not find convincing petitioners' contrary interpretation of the history of the Act. They contend that Congress, in enacting the Act, meant to incorporate a line of cases decided under the 1909 Act holding that an employment relationship exists sufficient to give the hiring party copyright ownership whenever that party has the right to control or supervise the artist's work. See, e.g., Siegel v. National Periodical Publications, Inc., 508 F.2d 909, 914 (CA2 1974); Picture Music, Inc. v. Bourne, Inc., 457 F.2d 1213, 1216 (CA2), cert. denied, 409 U.S. 997 (1972); Scherr v. Universal Match Corp., 417 F.2d 497, 500 (CA2 1969), cert. denied, 397 U.S. 936 (1970); Brattleboro Publishing Co. v. Winmill Publishing Corp., 369 F.2d 565, 567-568 (CA2 1966). In support of this position, petitioners note: 
Nowhere in the 1976 Act or in the Act's legislative history does Congress state that it intended to jettison the control standard or otherwise to reject the pre-Act judicial approach to identifying a work for hire employment relationship. 
Brief for Petitioners 20, citing Aldon Accessories, 738 F.2d at 552. 
We are unpersuaded. Ordinarily, "Congress' silence is just that -- silence." Alaska Airlines, Inc. v. Brock, 480 U.S. 678, 686 (1987). Petitioners' reliance on legislative silence is particularly misplaced here, because the text and structure of § 101 counsel otherwise. See Bourjaily v. United States, 483 U.S. 171, 178 (1987); Harrison v. PPG Industries, Inc., 446 U.S. 578, 592 (1980). Furthermore, the structure of the work for hire provisions was fully developed in 1965, and the text was agreed upon in essentially final form by 1966. At that time, however, the courts had applied the work for hire doctrine under the 1909 Act exclusively to traditional employees. Indeed, it was not until after the 1965 compromise was forged and adopted by Congress that a federal court for the first time applied the work for hire doctrine to commissioned works. See, e.g., Brattleboro Publishing Co., supra, at 567-568. Congress certainly could not have "jettisoned" a line of cases that had not yet been decided. 
Finally, petitioners' construction of the work for hire provisions would impede Congress' paramount goal in revising the 1976 Act of enhancing predictability and certainty of copyright ownership. See H.R.Rep. No. 94-1476, supra, at 129. In a "copyright marketplace," the parties negotiate with an expectation that one of them will own the copyright in the completed work. Dumas, 865 F.2d at 1104-1105, n. 18. With that expectation, the parties at the outset can settle on relevant contractual terms, such as the price for the work and the ownership of reproduction rights. 
To the extent that petitioners endorse an actual control test, CCNV's construction of the work for hire provisions prevents such planning. Because that test turns on whether the hiring party has closely monitored the production process, the parties would not know until late in the process, if not until the work is completed, whether a work will ultimately fall within § 101(1). Under petitioners' approach, therefore, parties would have to predict in advance whether the hiring party will sufficiently control a given work to make it the author. 
If they guess incorrectly, their reliance on "work for hire" or an assignment may give them a copyright interest that they did not bargain for. Easter Seal Society, 815 F.2d at 333; accord, Dumas, 865 F.2d at 1103. This understanding of the work for hire provisions clearly thwarts Congress' goal of ensuring predictability through advance planning. Moreover, petitioners' interpretation leaves the door open for hiring parties, who have failed to get a full assignment of copyright rights from independent contractors falling outside the subdivision (2) guidelines, to unilaterally obtain work-made-for-hire rights years after the work has been completed as long as they directed or supervised the work, a standard that is hard not to meet when one is a hiring party. Hamilton, Commissioned Works as Works Made for Hire Under the 1976 Copyright Act: Misinterpretation and Injustice, 135 U.Pa.L.Rev. 1281, 1304 (1987). 
In sum, we must reject petitioners' argument. Transforming a commissioned work into a work by an employee on the basis of the hiring party's right to control, or actual control of, the work is inconsistent with the language, structure, and legislative history of the work for hire provisions. To determine whether a work is for hire under the Act, a court first should ascertain, using principles of general common law of agency, whether the work was prepared by an employee or an independent contractor. After making this determination, the court can apply the appropriate subsection of § 101. 
We turn, finally, to an application of § 101 to Reid's production of "Third World America." In determining whether a hired party is an employee under the general common law of agency, we consider the hiring party's right to control the manner and means by which the product is accomplished. Among the other factors relevant to this inquiry are the skill required; the source of the instrumentalities and tools; the location of the work; the duration of the relationship between the parties; whether the hiring party has the right to assign additional projects to the hired party; the extent of the hired party's discretion over when and how long to work; the method of payment; the hired party's role in hiring and paying assistants; whether the work is part of the regular business of the hiring party; whether the hiring party is in business; the provision of employee benefits; and the tax treatment of the hired party. See Restatement § 220(2) (setting forth a nonexhaustive list of factors relevant to determining whether a hired party is an employee). No one of these factors is determinative. See Ward, 362 U.S. at 400; Hilton Int'l Co. v. NLRB, 690 F.2d 318, 321 (CA2 1982). 
Examining the circumstances of this case in light of these factors, we agree with the Court of Appeals that Reid was not an employee of CCNV, but an independent contractor. 270 U.S.App.D.C. at 35, n. 11, 846 F.2d at 1494, n. 11. True, CCNV members directed enough of Reid's work to ensure that he produced a sculpture that met their specifications. 652 F.Supp. at 1456. But the extent of control the hiring party exercises over the details of the product is not dispositive. Indeed, all the other circumstances weigh heavily against finding an employment relationship. Reid is a sculptor, a skilled occupation. Reid supplied his own tools. He worked in his own studio in Baltimore, making daily supervision of his activities from Washington practicably impossible. Reid was retained for less than two months, a relatively short period of time. During and after this time, CCNV had no right to assign additional projects to Reid. Apart from the deadline for completing the sculpture, Reid had absolute freedom to decide when and how long to work. CCNV paid Reid $15,000, a sum dependent on "completion of a specific job, a method by which independent contractors are often compensated." Holt v. Winpisinger, 258 U.S.App.D.C. 343, 351, 811 F.2d 1532, 1540 (1987). Reid had total discretion in hiring and paying assistants. "Creating sculptures was hardly `regular business' for CCNV." 270 U.S.App.D.C. at 35, n. 11, 846 F.2d at 1494, n. 11. Indeed, CCNV is not a business at all. 
Finally, CCNV did not pay payroll or Social Security taxes, provide any employee benefits, or contribute to unemployment insurance or workers' compensation funds.
Because Reid was an independent contractor, whether "Third World America" is a work for hire depends on whether it satisfies the terms of § 101(2). This petitioners concede it cannot do. Thus, CCNV is not the author of "Third World America" by virtue of the work for hire provisions of the Act. However, as the Court of Appeals made clear, CCNV nevertheless may be a joint author of the sculpture if, on remand, the District Court determines that CCNV and Reid prepared the work "with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole." 17 U.S.C. § 101. In that case, CCNV and Reid would be co-owners of the copyright in the work. See § 201(a). 
For the aforestated reasons, we affirm the judgment of the Court of Appeals for the District of Columbia Circuit. 
It is so ordered. 


James Earl Reid, Third World America (1985)

Questions:
  1. In CCNV, the Court considered four different tests for determining whether a work is "a work prepared by an employee within the scope of his or her employment" under 17 U.S.C. § 101: (1) "a work is prepared by an employee whenever the hiring party retains the right to control the product"; (2) "a work is prepared by an employee under § 101(1) when the hiring party has actually wielded control with respect to the creation of a particular work"; (3) "the term 'employee' within § 101(1) carries its common law agency law meaning"; and (4) "the term 'employee' only refers to 'formal, salaried' employees." CCNV v. Reid, 490 U.S. 730 (1989). The Court ultimately adopted the agency test. Why did it adopt that test, rather than one of the others?
  2. Do you agree with the outcome of CCNV?
  3. Do you think that the Court made it easier or more difficult to determine who owns a copyrighted work?

Works Made for Hire Under CCNV

In CCNV v. Reid, the Court held:
To determine whether a work is for hire under the Act, a court first should ascertain, using principles of general common law of agency, whether the work was prepared by an employee or an independent contractor. After making this determination, the court can apply the appropriate subsection of § 101.
 490 U.S. 730 (1989).

The Court further instructed, "In determining whether a hired party is an employee under the general common law of agency, we consider" the following factors:

  1. The hiring party's right to control the manner and means by which the product is accomplished
  2. The skill required
  3. The source of the instrumentalities and tools
  4. The location of the work
  5. The duration of the relationship between the parties
  6. Whether the hiring party has the right to assign additional projects to the hired party
  7. The extent of the hired party's discretion over when and how long to work
  8. The method of payment
  9. The hired party's role in hiring and paying assistants
  10. Whether the work is part of the regular business of the hiring party
  11. Whether the hiring party is in business
  12. The provision of employee benefits
  13. The tax treatment of the hired party.

Id. (citing Restatement (Second) of Agency § 220(2)).

The Court stated that this list of factors is nonexhaustive, and that no particular factor will determine the outcome of the inquiry. As a result, courts tend to weigh the thirteen CCNV factors in light of the totality of the relationship between the parties.

For example, in Aymes v. Bonelli, the court held:
Some factors, therefore, will often have little or no significance in determining whether a party is an independent contractor or an employee. In contrast, there are some factors that will be significant in virtually every situation. These include: (1) the hiring party's right to control the manner and means of creation; (2) the skill required; (3) the provision of employee benefits; (4) the tax treatment of the hired party; and (5) whether the hiring party has the right to assign additional projects to the hired party. These factors will almost always be relevant and should be given more weight in the analysis, because they will usually be highly probative of the true nature of the employment relationship.
980 F.2d 857, 861 (2d Cir.1992).

Question:
  1. Do you agree with the Aymes court's assessment of the relative importance of the CCNV factors?
  2. Can the parties agree in advance that a hired person is an employee, rather than an independent contractor?
  3. Do you think that the agency test adopted in CCNV made it more or less difficult to determine whether a hired person is a employee or an independent contractor?
  4. Can you think of alternative tests to the agency test adopted in CCNV?
  5. Smith commissions a painting by Doe. Smith and Doe both sign a written agreement stating that the painting is a work made for hire. Doe creates the painting. Who owns the copyright in the painting?

  6. Smith hires Doe to edit a film. When the film is finished, Smith and Doe both sign a written agreement stating that Doe's contribution to the film was a work made for hire. Who owns the copyright in the film?
Works Prepared Within the Scope of Employment

Under the Copyright Act, a work created by an employee is a work made for hire only if it was prepared within the scope of employment. 17 U.S.C. § 101. Sometimes, the creator of a work is clearly an employee, but it is unclear whether the work was created within the scope of employment. Courts have generally looked to agency law to resolve this question.

The Restatement of Agency provides:
(1) Conduct of a servant is within the scope of employment if, but only if:
(a) it is of the kind he is employed to perform;
(b) it occurs substantially within the authorized time and space limits;
(c) it is actuated, at least in part, by a purpose to serve the master, and
(d) if force is intentionally used by the servant against another, the use of force is not unexpectable by the master.
(2) Conduct of a servant is not within the scope of employment if it s different in kind from that authorized, far beyond the authorized time or space limits, or too little actuated by a purpose to serve the master.
Restatement (Second) of Agency § 228.

Accordingly, courts have generally applied a three-part test to determine whether a work created by an employee was prepared within the scope of employment, considering:
  1. Whether the work was of the type the employee was hired to perform;
  2. Whether the creation of the work occurred "substantially within the authorized time and space limits" of the employee's job; and
  3. Whether the employee was "actuated, at least in part, by a purpose to serve" the employer's purpose.
Avtec Sys. v. Pfeiffer, 67 F.3d 293 (4th Cir. 1995).

Questions:
  1. How should courts apply these factors? Do all three have to be satisfied?
  2. Is an academic article written by a professor a work prepared within the scope of employment? What about an opinion editorial?
  3. Judge Posner has argued that academic writing is not work made for hire under a special "teacher's exception." Hayes v. Sony Corp. of Am., 847 F.2d 412 (7th Cir. 1988). Do you agree with Judge Posner that such an exception should exist? Should it cover all writings produced by professors? 
  4. Is a film created by a law professor a work prepared within the scope of employment? What about a film created by a film production professor?
  5. Carter Bryant was an employee of Mattel, where he designed fashion and hairstyles for Barbie dolls. In his spare time, he developed the concept of the Bratz dolls, "The Girls With a Passion for Fashion!" In August 2001, he pitched his idea to MGA, one of Mattel's competitors, based on some sketches and a mock-up doll. MGA liked the idea, so Bryant quit Mattel and joined MGA. The Bratz dolls were wildly successful. Mattel sued MGA, arguing that it owned the Bratz concept because it was a work made for hire. Mattel won in the district court, but the circuit court reversed, holding that the Bratz dolls were not a work made for hire.  Mattel, Inc. v. MGA Enter., Inc., 616 F.3d 904 (9th Cir. 2010). Do you agree?


Independent Contractors

Under CCNV, a work created by an independent contractor is generally not a work made for hire. However, the Copyright Act provides that a "work made for hire" is:
a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. 

In other words, a work created by an independent contractor is a work made for hire only if it is "specially ordered or commissioned for use" as:
  1. a contribution to a collective work
  2. a part of a motion picture or other audiovisual work
  3. a translation
  4. a supplementary work
  5. a compilation
  6. an instructional text
  7. a test
  8. answer material for a test
  9. an atlas
Id. In addition, the parties must "expressly agree in a written instrument signed by them that the work shall be considered a work made for hire." Id.

Questions:
  1. Why did Congress specify these nine categories of works?
  2. Does it matter when the parties form or sign the written agreement? Can they agree after the work is created? Before the work is created?
  3. If you were hiring people to create works for you, how would you ensure that you owned the copyright in those works? 
Joint Works

A work of authorship created by more than one person may be a joint work. As noted above, the Copyright Act provides, "Copyright in a work protected under this title vests initially in the author or authors of the work. The authors of a joint work are coowners of copyright in the work." 17 U.S.C. § 201(a). And it defines a "joint work" as "a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole." 17 U.S.C. § 101. However, the Act does not define the terms "inseparable" or "interdependent."

The House Report explains that a work created by more than one author is a joint work if the authors intended to combine their respective works of into an integrated unit:  
Under the definition of section 101, a work is “joint” if the authors collaborated with each other, or if each of the authors prepared his or her contribution with the knowledge and intention that it would be merged with the contributions of other authors as “inseparable or interdependent parts of a unitary whole.” The touchstone here is the intention, at the time the writing is done, that the parts be absorbed or combined into an integrated unit, although the parts themselves may be either “inseparable” (as the case of a novel or painting) or “interdependent” (as in the case of a motion picture, opera, or the words and music of a song).

Accordingly, collaboration alone is insufficient to create a joint work. A work that includes original elements contributed by more than one author is a joint work only if the authors intended to create a joint work at the time the work was created.

So, if Smith writes song lyrics in 2000, Doe writes the melody to a song in 2005, and they integrate the lyrics and the melody into a song in 2010, the song is a joint work, because Smith and Doe intended to create joint works when they created the original elements they contributed to the song, even though Smith and Doe created the original elements they contributed to the song entirely independently. By contrast, if Smith writes a poem in 2000 and Doe sets the poem to music in 2005, the song is not a joint work, because Smith did not intend to create a joint work when writing the poem. Likewise, if Smith writes the lyrics to a song and Doe writes the music, they have created a joint work. But if Smith independently writes new lyrics, the resulting work is a derivative work, not a joint work. Weissman v. Freeman, 868 F.2d 1313 (2d Cir. 1989).

Contributors to a joint work are joint owners of the work only if they provide an original element of the work. In other words, each joint owner must create an original work of authorship that is combined into the integrated unit. As a result, a contributor to a joint work who provides an idea, a fact, or a de minimis element is not a joint owner of the work.

Questions:
  1. Is the editor of a novel a joint author of the book? What if the editor substantially rewrites the novel before publication?
  2. Who can be a joint owner of a motion picture? The director? The producer? The editor? The cinematographer? The set designer?
  3. How can contributors to a joint work protect their contribution if they are not joint owners?
  4. In 1991, Spike Lee wrote, directed, and co-produced the film Malcolm X, which starred Denzel Washington as Malcolm X. Washington asked Jefri Aalmuhammed to help him prepare for the role. Aalmuhammed joined helped revise the screenplay, helped direct Washington and other actors, provided a voice-over, created two new scenes, and helped edit certain scenes. Aalmuhammed did not have a written contract with Lee or Washington, but received $25,000 from Lee and $100,000 from Washington. Aalmuhammed claimed joint ownership of the copyright in Malcolm X and filed a declaratory judgment action. The Ninth Circuit ultimately held that Aalmuhammed was not a joint author of Malcolm X because he "did not at any time have superintendence of the work. Aalmuhammed v. Lee202 F.3d 1227 (9th Cir. 2000). Do you agree? Is this the right test?

Joint Ownership

The owners of a joint work are co-owners of the work, and are treated as tenants-in-common, meaning that each co-owner has an undivided ownership interest in the entire work. Accordingly, if Smith writes the lyrics to a song and Doe writes the music, the song is a joint work, and Smith and Doe are co-owners of that work, each of whom has undivided ownership in the entire song.

As tenants-in-common, the co-owners of a joint work can use or license the work, so long as they share the proceeds equally with the other co-owners. However, a co-owner of a joint work cannot transfer a right in the entire work without the written consent of all the co-owners. For example, a co-owner cannot grant an exclusive license to the work, without obtaining consent. In addition, a co-owner of a work cannot use the work in a way that will diminish or destroy its value.

Questions:
Can a co-owner of a song grant a non-exclusive license to use the song in a commercial without the consent of the other co-owners?
How does one determine whether a use of joint work diminishes or destroys its value?

Childress v. Taylor, 945 F.2d 500 (2d Cir. 1991)
JON O. NEWMAN, Circuit Judge: 
This appeal requires consideration of the standards for determining when a contributor to a copyrighted work is entitled to be regarded as a joint author. The work in question is a play about the legendary Black comedienne Jackie "Moms" Mabley. The plaintiff-appellee Alice Childress claims to be the sole author of the play. Her claim is disputed by defendant-appellant Clarice Taylor, who asserts that she is a joint author of the play. Taylor, Paul B. Berkowsky, Ben Caldwell, and the "Moms" Company appeal from the February 21, 1991, judgment of the District Court for the Southern District of New York (Charles S. Haight, Jr., Judge) determining, on motion for summary judgment, that Childress is the sole author. We affirm. 
Facts 
Defendant Clarice Taylor has been an actress for over forty years, performing on stage, radio, television, and in film. After portraying "Moms" Mabley in a skit in an off-off-Broadway production ten years ago, Taylor became interested in developing a play based on Mabley's life. Taylor began to assemble material about "Moms" Mabley, interviewing her friends and family, collecting her jokes, and reviewing library resources. 
In 1985, Taylor contacted the plaintiff, playwright Alice Childress, about writing a play based on "Moms" Mabley. Childress had written many plays, for one of which she won an "Obie" award. Taylor had known Childress since the 1940s when they were both associated with the American Negro Theatre in Harlem and had previously acted in a number of Childress's plays.
When Taylor first mentioned the "Moms" Mabley project to Childress in 1985, Childress stated she was not interested in writing the script because she was too occupied with other works. However, when Taylor approached Childress again in 1986, Childress agreed, though she was reluctant due to the time constraints involved. Taylor had interested the Green Plays Theatre in producing the as yet unwritten play, but the theatre had only one slot left on its summer 1986 schedule, and in order to use that slot, the play had to be written in six weeks. 
Taylor turned over all of her research material to Childress, and later did further research at Childress's request. It is undisputed that Childress wrote the play, entitled "Moms: A Praise Play for a Black Comedienne." However, Taylor, in addition to providing the research material, which according to her involved a process of sifting through facts and selecting pivotal and key elements to include in a play on "Moms" Mabley's life, also discussed with Childress the inclusion of certain general scenes and characters in the play. Additionally, Childress and Taylor spoke on a regular basis about the progress of the play. 
Taylor identifies the following as her major contributions to the play: (1) she learned through interviews that "Moms" Mabley called all of her piano players "Luther," so Taylor suggested that the play include such a character; (2) Taylor and Childress together interviewed Carey Jordan, "Moms" Mabley's housekeeper, and upon leaving the interview they came to the conclusion that she would be a good character for the play, but Taylor could not recall whether she or Childress suggested it; (3) Taylor informed Childress that "Moms" Mabley made a weekly trip to Harlem to do ethnic food shopping; (4) Taylor suggested a street scene in Harlem with speakers because she recalled having seen or listened to such a scene many times; (5) the idea of using a minstrel scene came out of Taylor's research; (6) the idea of a card game scene also came out of Taylor's research, although Taylor could not recall who specifically suggested the scene; (7) some of the jokes used in the play came from Taylor's research; and (8) the characteristics of "Moms" Mabley's personality portrayed in the play emerged from Taylor's research. Essentially, Taylor contributed facts and details about "Moms" Mabley's life and discussed some of them with Childress. However, Childress was responsible for the actual structure of the play and the dialogue. 
Childress completed the script within the six-week time frame. Childress filed for and received a copyright for the play in her name. Taylor produced the play at the Green Plays Theatre in Lexington, New York, during the 1986 summer season and played the title role. After the play's run at the Green Plays Theatre, Taylor planned a second production of the play at the Hudson Guild Theatre in New York City. 
At the time Childress agreed to the project, she did not have any firm arrangements with Taylor, although Taylor had paid her $2,500 before the play was produced. On May 9, 1986, Taylor's agent, Scott Yoselow, wrote to Childress's agent, Flora Roberts, stating: Per our telephone conversation, this letter will bring us up-to-date on the current status of our negotiation for the above mentioned project: 
1. CLARICE TAYLOR will pay ALICE CHILDRESS for her playwriting services on the MOMS MABLEY PROJECT the sum of $5,000.00, which will also serve as an advance against any future royalties.  
2. The finished play shall be equally owned and be the property of both CLARICE TAYLOR and ALICE CHILDRESS.  
It is my understanding that Alice has commenced writing the project. I am awaiting a response from you regarding any additional points we have yet to discuss. Flora Roberts responded to Yoselow in a letter dated June 16, 1986: As per our recent telephone conversation, I have told Alice Childress that we are using your letter to me of May 9, 1986 as a partial memo preparatory to our future good faith negotiations for a contract. There are two points which I include herewith to complete your two points in the May 9th letter, i.e.: 1) The $5,000 advance against any future royalties being paid by Clarice Taylor to Alice Childress shall be paid as follows. Since $1,000 has already been paid, $1,500 upon your receipt of this letter and the final $2,500 to be paid upon submission of the First Draft, but in no event later than July 7, 1986. 2) It is to be understood that pending the proper warranty clauses to be included in the contract, Miss Childress is claiming originality for her words only in said script. 
After the Green Plays Theatre production, Taylor and Childress attempted to formalize their relationship. Draft contracts were exchanged between Taylor's attorney, Jay Kramer, and Childress's agent, Roberts. During this period, early 1987, the play was produced at the Hudson Guild Theatre with the consent of both Taylor and Childress. Childress filed for and received a copyright for the new material added to the play produced at the Hudson Guild Theatre. 
In March 1987, Childress rejected the draft agreement proposed by Taylor, and the parties' relationship deteriorated. Taylor decided to mount another production of the play without Childress. Taylor hired Ben Caldwell to write another play featuring "Moms" Mabley; Taylor gave Caldwell a copy of the Childress script and advised him of elements that should be changed. 
The "Moms" Mabley play that Caldwell wrote was produced at the Astor Place Theatre in August 1987. No reference to Childress was made with respect to this production. However, a casting notice in the trade paper "Back Stage" reported the production of Caldwell's play and noted that it had been "presented earlier this season under an Equity LOA at the Hudson Guild Theatre." 
Flora Roberts contacted Jay Kramer to determine whether this notice was correct. Kramer responded: 
Ben Caldwell has written the play which I will furnish to you when a final draft is available. We have tried in every way to distinguish the new version of the play from what was presented at the Hudson Guild, both by way of content and billing. Undoubtedly, because of the prevalence of public domain material in both versions of the play, there may be unavoidable similarities. Please also remember that Alice was paid by Clarice for rights to her material which we have never resolved. Kramer never sent a copy of Caldwell's play. Childress's attorney, Alvin Deutsch, sent Kramer a letter advising him of Childress's rights in the play as produced at the Hudson Guild and of her concerns about the advertising connecting Caldwell's play to hers. For example, one advertisement for Caldwell's play at the Astor Place Theatre quoted reviews referring to Childress's play. Other advertisements made reference to the fact that the play had been performed earlier that season at the Hudson Guild Theatre. 
Childress sued Taylor and other defendants alleging violations of the Copyright Act, 17 U.S.C. s 101 et seq. (1988), the Lanham Act, 15 U.S.C. ss 1051, 1125(a) (1988), and New York's anti-dilution statute, N.Y. Gen.Bus.Law s 368-d (McKinney 1984). Taylor contended that she was a joint author with Childress, and therefore shared the rights to the play. Childress moved for summary judgment, which the District Court granted. The Court concluded that Taylor was not a joint author of Childress's play and that Caldwell's play was substantially similar to and infringed Childress's play. In rejecting Taylor's claim of joint authorship, Judge Haight ruled (a) that a work qualifies as a "joint work" under the definition section of the Copyright Act, 17 U.S.C. s 101, only when both authors intended, at the time the work was created, "that their contributions be merged into inseparable or interdependent parts of a unitary whole," id., and (b) that there was insufficient evidence to permit a reasonable trier to find that Childress had the requisite intent. The Court further ruled that copyright law requires the contributions of both authors to be independently copyrightable, and that Taylor's contributions, which consisted of ideas and research, were not copyrightable. 
Discussion 
In common with many issues arising in the domain of copyrights, the determination of whether to recognize joint authorship in a particular case requires a sensitive accommodation of competing demands advanced by at least two persons, both of whom have normally contributed in some way to the creation of a work of value. Care must be taken to ensure that true collaborators in the creative process are accorded the perquisites of co-authorship and to guard against the risk that a sole author is denied exclusive authorship status simply because another person rendered some form of assistance. Copyright law best serves the interests of creativity when it carefully draws the bounds of "joint authorship" so as to protect the legitimate claims of both sole authors and co-authors. 
Co-authorship was well known to the common law. An early formulation, thought by Learned Hand to be the first definition of "joint authorship," see Edward B. Marks Music Corp. v. Jerry Vogel Music Co., 140 F.2d 266, 267 (2d Cir.1944) ("Marks"), is set out in Levy v. Rutley, L.R., 6 C.P. 523, 529 (Keating, J.) (1871): "a joint laboring in furtherance of a common design." Judge Hand endorsed that formulation in the District Court, concluding that the book for the comic opera "Sweethearts" was a work of joint authorship. Maurel v. Smith, 220 F. 195 (S.D.N.Y.1915), aff'd, 271 F. 211 (2d Cir.1921). Three decades later, he adopted the formulation for this Circuit in Marks, determining that the words and music of a song ("December and May") formed a work of joint authorship even though the lyricist wrote the words before he knew the identity of the composer who would later write the music.
Like many brief formulations, the language from Levy v. Rutley is useful in pointing an inquiry in the proper direction but does not provide much guidance in deciding the close cases. Many people can be said to "jointly labor" toward "a common design" who could not plausibly be considered co-authors. And beyond the fairly straightforward context of words and music combined into a song, whatever formulation is selected will not necessarily fit neatly around such varied fact situations as those concerning architectural plans, see Meltzer v. Zoller, 520 F.Supp. 847 (D.N.J.1981), or computer programs, see Ashton-Tate Corp. v. Ross, 728 F.Supp. 597 (N.D.Cal.1989), aff'd, 916 F.2d 516 (2d Cir.1990). Though the early case law is illuminating, our task is to apply the standards of the Copyright Act of 1976 and endeavor to achieve the results that Congress likely intended. 
The Copyright Act defines a "joint work" as a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole. 17 U.S.C. s 101. As Professor Nimmer has pointed out, this definition is really the definition of a work of joint authorship. See 1 Nimmer on Copyright s 6.01 (1991). The definition concerns the creation of the work by the joint authors, not the circumstances, in addition to joint authorship, under which a work may be jointly owned, for example, by assignment of an undivided interest. The distinction affects the rights that are acquired. Joint authors hold undivided interests in a work, like all joint owners of a work, but joint authors, unlike other joint owners, also enjoy all the rights of authorship, including the renewal rights applicable to works in which a statutory copyright subsisted prior to January 1, 1978. See 17 U.S.C. s 304. 
Some aspects of the statutory definition of joint authorship are fairly straightforward. Parts of a unitary whole are "inseparable" when they have little or no independent meaning standing alone. That would often be true of a work of written text, such as the play that is the subject of the pending litigation. By contrast, parts of a unitary whole are "interdependent" when they have some meaning standing alone but achieve their primary significance because of their combined effect, as in the case of the words and music of a song. Indeed, a novel and a song are among the examples offered by the legislative committee reports on the 1976 Copyright Act to illustrate the difference between "inseparable" and "interdependent" parts. See H.R.Rep. No. 1476, 94th Cong., 2d Sess. 120 (1976) ("House Report "), reprinted in 1976 U.S.C.C.A.N. 5659, 5736; S.Rep. No. 473, 94th Cong., 2d Sess. 103-04 (1975) ("Senate Report "). 
The legislative history also clarifies other aspects of the statutory definition, but leaves some matters in doubt. Endeavoring to flesh out the definition, the committee reports state: [A] work is "joint" if the authors collaborated with each other, or if each of the authors prepared his or her contribution with the knowledge and intention that it would be merged with the contributions of other authors as "inseparable or interdependent parts of a unitary whole." The touchstone here is the intention, at the time the writing is done, that the parts be absorbed or combined into an integrated unit.... House Report at 120; Senate Report at 103 (emphasis added). This passage appears to state two alternative criteria--one focusing on the act of collaboration and the other on the parties' intent. However, it is hard to imagine activity that would constitute meaningful "collaboration" unaccompanied by the requisite intent on the part of both participants that their contributions be merged into a unitary whole, and the case law has read the statutory language literally so that the intent requirement applies to all works of joint authorship. See, e.g., Weissmann v. Freeman, 868 F.2d 1313, 1317-19 (2d Cir.1989); Eckert v. Hurley Chicago Co., Inc., 638 F.Supp. 699, 702-03 (N.D.Ill.1986). 
A more substantial issue arising under the statutory definition of "joint work" is whether the contribution of each joint author must be copyrightable or only the combined result of their joint efforts must be copyrightable. The Nimmer treatise argues against a requirement of copyrightability of each author's contribution, see 1 Nimmer on Copyright s 6.07; Professor Goldstein takes the contrary view, see 1 Paul Goldstein, Copyright: Principles, Law and Practice s 4.2.1.2 (1989), with the apparent agreement of the Latman treatise, see William F. Patry, Latman's The Copyright Law 116 (6th ed. 1986) (hereinafter "Latman"). The case law supports a requirement of copyrightability of each contribution. See M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1493 (11th Cir.1990); S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1087 (9th Cir.1989); Ashton-Tate Corp. v. Ross, 728 F.Supp. at 601; Whelan Associates, Inc. v. Jaslow Dental Laboratory, Inc., 609 F.Supp. 1307, 1318-19 (E.D.Pa.1985), aff'd without consideration of this point, 797 F.2d 1222 (3d Cir.1986), cert. denied, 479 U.S. 1031, 107 S.Ct. 877, 93 L.Ed.2d 831 (1987); Kenbrooke Fabrics Inc. v. Material Things, 223 U.S.P.Q. 1039, 1044-45, 1984 WL 532 (S.D.N.Y.1984); Meltzer v. Zoller, 520 F.Supp. 847, 857 (D.N.J.1981); Aitken, Hazen, Hoffman, Miller, P.C. v. Empire Construction Co., 542 F.Supp. 252, 259 (D.Neb.1982). The Register of Copyrights strongly supports this view, arguing that it is required by the statutory standard of "authorship" and perhaps by the Constitution. See Moral Rights in Our Copyright Laws: Hearings on S. 1198 and S. 1253 Before the Subcomm. on Patents, Copyrights and Trademarks of the Senate Comm. on the Judiciary, 101st Cong., 1st Sess. 210-11 (1989) (statement of Ralph Oman). 
The issue, apparently open in this Circuit, is troublesome. If the focus is solely on the objective of copyright law to encourage the production of creative works, it is difficult to see why the contributions of all joint authors need be copyrightable. An individual creates a copyrightable work by combining a non-copyrightable idea with a copyrightable form of expression; the resulting work is no less a valuable result of the creative process simply because the idea and the expression came from two different individuals. Indeed, it is not unimaginable that there exists a skilled writer who might never have produced a significant work until some other person supplied the idea. The textual argument from the statute is not convincing. The Act surely does not say that each contribution to a joint work must be copyrightable, and the specification that there be "authors" does not necessarily require a copyrightable contribution. "Author" is not defined in the Act and appears to be used only in its ordinary sense of an originator. The "author" of an uncopyrightable idea is nonetheless its author even though, for entirely valid reasons, the law properly denies him a copyright on the result of his creativity. And the Register's tentative constitutional argument seems questionable. It has not been supposed that the statutory grant of "authorship" status to the employer of a work made for hire exceeds the Constitution, though the employer has shown skill only in selecting employees, not in creating protectable expression. 
Nevertheless, we are persuaded to side with the position taken by the case law and endorsed by the agency administering the Copyright Act. The insistence on copyrightable contributions by all putative joint authors might serve to prevent some spurious claims by those who might otherwise try to share the fruits of the efforts of a sole author of a copyrightable work, even though a claim of having contributed copyrightable material could be asserted by those so inclined. More important, the prevailing view strikes an appropriate balance in the domains of both copyright and contract law. In the absence of contract, the copyright remains with the one or more persons who created copyrightable material. Contract law enables a person to hire another to create a copyrightable work, and the copyright law will recognize the employer as "author." 17 U.S.C. s 201(b). Similarly, the person with non- copyrightable material who proposes to join forces with a skilled writer to produce a copyrightable work is free to make a contract to disclose his or her material in return for assignment of part ownership of the resulting copyright. Id. s 201(d). And, as with all contract matters, the parties may minimize subsequent disputes by formalizing their agreement in a written contract. Cf. 17 U.S.C. s 101 ("work made for hire" definition of "specially ordered" or "commissioned" work includes requirement of written agreement). It seems more consistent with the spirit of copyright law to oblige all joint authors to make copyrightable contributions, leaving those with non-copyrightable contributions to protect their rights through contract. 
There remains for consideration the crucial aspect of joint authorship--the nature of the intent that must be entertained by each putative joint author at the time the contribution of each was created. The wording of the statutory definition appears to make relevant only the state of mind regarding the unitary nature of the finished work--an intention "that their contributions be merged into inseparable or interdependent parts of a unitary whole." However, an inquiry so limited would extend joint author status to many persons who are not likely to have been within the contemplation of Congress. For example, a writer frequently works with an editor who makes numerous useful revisions to the first draft, some of which will consist of additions of copyrightable expression. Both intend their contributions to be merged into inseparable parts of a unitary whole, yet very few editors and even fewer writers would expect the editor to be accorded the status of joint author, enjoying an undivided half interest in the copyright in the published work. Similarly, research assistants may on occasion contribute to an author some protectable expression or merely a sufficiently original selection of factual material as would be entitled to a copyright, yet not be entitled to be regarded as a joint author of the work in which the contributed material appears. What distinguishes the writer-editor relationship and the writer- researcher relationship from the true joint author relationship is the lack of intent of both participants in the venture to regard themselves as joint authors. 
Focusing on whether the putative joint authors regarded themselves as joint authors is especially important in circumstances, such as the instant case, where one person (Childress) is indisputably the dominant author of the work and the only issue is whether that person is the sole author or she and another (Taylor) are joint authors. See Fisher v. Klein, 16 U.S.P.Q.2d 1795, 1798 (S.D.N.Y.1990); Picture Music, Inc. v. Bourne, Inc., 314 F.Supp. 640, 647 (S.D.N.Y.1970), aff'd on other grounds, 457 F.2d 1213 (2d Cir.), cert. denied, 409 U.S. 997, 93 S.Ct. 320, 34 L.Ed.2d 262 (1972). This concern requires less exacting consideration in the context of traditional forms of collaboration, such as between the creators of the words and music of a song. 
In this case, appellant contends that Judge Haight's observation that "Childress never shared Taylor's notion that they were co-authors of the play" misapplies the statutory standard by focusing on whether Childress "intended the legal consequences which flowed from her prior acts." Brief for Appellant at 22. We do not think Judge Haight went so far. He did not inquire whether Childress intended that she and Taylor would hold equal undivided interests in the play. But he properly insisted that they entertain in their minds the concept of joint authorship, whether or not they understood precisely the legal consequences of that relationship. Though joint authorship does not require an understanding by the co-authors of the legal consequences of their relationship, obviously some distinguishing characteristic of the relationship must be understood in order for it to be the subject of their intent. In many instances, a useful test will be whether, in the absence of contractual agreements concerning listed authorship, each participant intended that all would be identified as co-authors. Though "billing" or "credit" is not decisive in all cases and joint authorship can exist without any explicit discussion of this topic by the parties, consideration of the topic helpfully serves to focus the fact-finder's attention on how the parties implicitly regarded their undertaking. 
An inquiry into how the putative joint authors regarded themselves in relation to the work has previously been part of our approach in ascertaining the existence of joint authorship. In Gilliam v. American Broadcasting Companies, Inc., 538 F.2d 14 (2d Cir.1976), we examined the parties' written agreements and noted that their provisions indicated "that the parties did not consider themselves joint authors of a single work." Id. at 22 (emphasis added). This same thought is evident in Judge Leval's observation that "[i]t is only where the dominant author intends to be sharing authorship that joint authorship will result." Fisher v. Klein, 16 U.S.P.Q.2d at 1798 (emphasis added). And it echoes the approach taken by then-District Judge Learned Hand when he determined that the facts showed that two authors "agreed to a joint authorship in the piece, and that they accepted whatever the law implied as to the rights and obligations which arose from such an undertaking." Maurel v. Smith, 220 F. at 198 (emphasis added). See also Weissmann v. Freeman, 868 F.2d at 1318 (each of those claiming to be joint authors "must intend to contribute to a joint work."). Judge Haight was entirely correct to inquire whether Childress ever shared Taylor's "notion that they were co-authors of the Play." 
Examination of whether the putative co-authors ever shared an intent to be co-authors serves the valuable purpose of appropriately confining the bounds of joint authorship arising by operation of copyright law, while leaving those not in a true joint authorship relationship with an author free to bargain for an arrangement that will be recognized as a matter of both copyright and contract law. Joint authorship entitles the co-authors to equal undivided interests in the work, see 17 U.S.C. s 201(a); Community for Creative Non-Violence v. Reid, 846 F.2d 1485, 1498 (D.C.Cir.1988), aff'd without consideration of this point, 490 U.S. 730, 109 S.Ct. 2166, 104 L.Ed.2d 811 (1989). That equal sharing of rights should be reserved for relationships in which all participants fully intend to be joint authors. The sharing of benefits in other relationships involving assistance in the creation of a copyrightable work can be more precisely calibrated by the participants in their contract negotiations regarding division of royalties or assignment of shares of ownership of the copyright, see 17 U.S.C. s 201(d). 
In this case, the issue is not only whether Judge Haight applied the correct standard for determining joint authorship but also whether he was entitled to conclude that the record warranted a summary judgment in favor of Childress. We are satisfied that Judge Haight was correct as to both issues. We need not determine whether we agree with his conclusion that Taylor's contributions were not independently copyrightable since, even if they were protectable as expression or as an original selection of facts, we agree that there is no evidence from which a trier could infer that Childress had the state of mind required for joint authorship. As Judge Haight observed, whatever thought of co-authorship might have existed in Taylor's mind "was emphatically not shared by the purported co-author." There is no evidence that Childress ever contemplated, much less would have accepted, crediting the play as "written by Alice Childress and Clarice Taylor." 
Childress was asked to write a play about "Moms" Mabley and did so. To facilitate her writing task, she accepted the assistance that Taylor provided, which consisted largely of furnishing the results of research concerning the life of "Moms" Mabley. As the actress expected to portray the leading role, Taylor also made some incidental suggestions, contributing ideas about the presentation of the play's subject and possibly some minor bits of expression. But there is no evidence that these aspects of Taylor's role ever evolved into more than the helpful advice that might come from the cast, the directors, or the producers of any play. A playwright does not so easily acquire a co-author. 
Judge Haight was fully entitled to bolster his decision by reliance on the contract negotiations that followed completion of the script. Though his primary basis for summary judgment was the absence of any evidence supporting an inference that Childress shared "Taylor's notion that they were co-authors," he properly pointed to the emphatic rejection by Childress of the attempts by Taylor's agent to negotiate a co-ownership agreement and Taylor's acquiescence in that rejection. Intent "at the time the writing is done" remains the "touchstone," House Report at 120; Senate Report at 103, but subsequent conduct is normally probative of a prior state of mind. See, e.g., United States v. Ramirez, 894 F.2d 565, 569 (2d Cir.1990); United States v. Tramunti, 513 F.2d 1087 (2d Cir.), cert. denied, 423 U.S. 832, 96 S.Ct. 54, 46 L.Ed.2d 50 (1975). 
Taylor's claim of co-authorship was properly rejected, and with the rejection of that claim, summary judgment for Childress was properly entered on her copyright and unfair competition claims, and on defendants' counterclaim. The judgment of the District Court is affirmed.

"Moms" Mabley

Questions:

  1. The court found that Taylor did not contribute copyrightable material to the work. Do you agree?
  2. The court found that Childress and Taylor did not intend to create a joint work? Do you agree? Is that the proper inquiry?

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