369 F.2d 565 (2nd Cir. 1966), 89, Brattleboro Pub. Co. v. Winmill Pub. Corp.

Docket Nº:89, 30407.
Citation:369 F.2d 565, 151 U.S.P.Q. 666
Party Name:BRATTLEBORO PUBLISHING CO., Appellant, v. WINMILL PUBLISHING CORP., Appellee.
Case Date:November 28, 1966
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

Page 565

369 F.2d 565 (2nd Cir. 1966)

151 U.S.P.Q. 666

BRATTLEBORO PUBLISHING CO., Appellant,

v.

WINMILL PUBLISHING CORP., Appellee.

No. 89, 30407.

United States Court of Appeals, Second Circuit.

November 28, 1966

Argued Oct. 25, 1966.

Page 566

Arthur B. Hanson, Washington, D.C. (Emmett E. Tucker, Jr., J. Drapay Muir, Washington, D.C., of counsel; James L. Oakes, Brattleboro, Vt., on the brief), for appellant.

John S. Burgess, Brattleboro, Vt., for appellee.

Arthur B. Hanson, Washington, D.C. (Emmett E. Tucker, Jr., J. Drapay Muir, Washington, D.C., of counsel), for the American Newspaper Publishers Association, amicus curiae.

Gerhard P. Van Arkel, Washington, D.C. (Van Arkel & Kaiser, Washington, D.C., of counsel), for the International Typographical Union, amicus curiae.

Donald B. Southard, Keith J. Kulie, Chicago, Ill. (Burmeister & Kulie, Chicago, Ill., of counsel), for the National Association of Advertising Publishers, amicus curiae.

Before LUMBARD, Chief Judge, MOORE and KAUFMAN, Circuit Judges.

Page 567

KAUFMAN, Circuit Judge:

Appellant publishes a daily newspaper known as the 'Brattleboro Daily Reformer' (hereafter Reformer), which is circulated in the environs of Brattleboro, Vermont. Appellee publishes a weekly pamphlet or direct-mail circular known as the 'Brattleboro Town Crier' (hereafter Town Crier), and distributes it without charge in the same area. The Reformer contends that through use of a photo off-set printing process, the Town Crier reproduced four advertisements in substantially the same form as had appeared in the Reformer. All the advertisements were published in the Town Crier at the request of the advertisers.

Appellant brought the present action pursuant to 28 U.S.C. § 1388, 1 claiming that the Town Crier had infringed its copyrights in the four advertisements in violation of 17 U.S.C. § 101, 2 and had also engaged in unfair competition and unfair trade practices. Reformer asked the district court to permanently enjoin the Town Crier from any future infringements, and to order it to pay damages and to account for all profits that had resulted from the alleged infringements.

The case was tried before Judge Gibson in the District Court for the District of Vermont. After making certain findings of fact, he concluded that the advertisements could not be copyrighted by the Reformer, and therefore no infringement of any of its copyrights had occurred. He also found that the Town Crier had not been guilty of unfair competition or unfair trade practices, and, accordingly, ordered the suit dismissed. 250 F.Supp. 215 (D.Vt.1966).

In light of the conclusions we reach, it is not necessary to determine the copyrightability of any of the advertisements in question, and we therefore proceed directly to the grounds for our disposition. Section 26 of the Copyright Act, 17 U.S.C. § 26, provides that the 'author' of a work 'shall include an employer in the case of works for hire.' Moreover, Professor Nimmer, in his treatise on copyright law, states that there is a presumption in the absence of an express contractual reservation to the contrary, that the copyright shall be in the person at whose instance and expense the work is done. Nimmer on Copyright 238 (1964). This so-called 'works for hire' doctrine was recognized earlier by the Supreme Court in Bleistein v. Donaldson Lithography Co., 188 U.S. 239, 248, 23 S.Ct. 298, 47 L.Ed. 460 (1903), and was later codified in the Copyright Act. In Bleistein, the Court held that the copyright to certain advertisements created by an employee during the course of his employment, belonged to his employer. While the 'works for hire' doctrine has been invoked most frequently in instances involving music publishers, see, e.g., Tobani v. Carl Fischer, Inc., 98 F.2d 57 (2d Cir. 1938), cert. denied, 305 U.S. 650, 59 S.Ct. 243, 83 L.Ed. 420 (1938); Von Tilzer v. Jerry Vogel Music Co., 53 F.Supp. 191 (S.D.N.Y.1943), aff'd sub nom., Gumm v. Jerry Vogel Music Co., 158 F.2d 516 (2d Cir. 1946), it is applicable whenever an employee's work is produced at the instance and expense of his employer. In such circumstances, the employer has been presumed to have the copyright. See, e.g., Sawyer v. Crowell Publishing Co., 46 F.Supp. 471 (S.D.N.Y.1942),

Page 568

aff'd 142 F.2d 497 (2d Cir.), cert. denied, 323 U.S. 735, 65 S.Ct. 74, 89 L.Ed. 589 (1944) (map created by a government employee).

We see no sound reason why these same principles are not applicable when the parties bear the relationship of employer and independent contractor. 'Whether the copyright resides...

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