Picture Music, Inc. v. Bourne, Inc.

• Decision Date: 03 April 1972
• Docket Number: No. 330,Docket 71-1222.,330
• Citation: 457 F.2d 1213
• Parties: PICTURE MUSIC, INC., Plaintiff-Appellant, v. BOURNE, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Second Circuit

457 F.2d 1213 (1972)

PICTURE MUSIC, INC., Plaintiff-Appellant, v. BOURNE, INC., Defendant-Appellee.

No. 330, Docket 71-1222.

United States Court of Appeals, Second Circuit.

Argued January 31, 1972.

Decided April 3, 1972.

M. William Krasilovsky, New York City (Andrew J. Feinman, Feinman & Krasilovsky, Milton Rosenbloom, O'Brien, Driscoll, Raftery, Rosenbloom & Grainger, New York City, on the brief), for appellant.

Walter S. Beck, New York City (Phillips, Nizer, Benjamin, Krim & Ballon, New York City, on brief), for appellee.

Before HAYS and OAKES, Circuit Judges, and CLARIE, District Judge.^*

HAYS, Circuit Judge:

This is an appeal from a judgment of the United States District Court for the Southern District of New York, which held that appellant had no copyright interest in the song "Who's Afraid of the Big Bad Wolf," and that appellant had infringed appellee's copyright in the song. The opinion of the district court is reported at 314 F.Supp. 640 (S.D.N. Y. 1970), and the facts are set out more fully there.

In May, 1933, Walt Disney Productions, Inc. released an animated cartoon film entitled "The Three Little Pigs." The film contained a musical score, portions of which agents of Disney and Irving Berlin, Inc., appellee's predecessor in interest, believed could be adapted as a popular song. With Disney's approval Berlin asked Ann Ronell, appellant's predecessor in interest, to assist in the adaptation; she did so, rearranging the musical themes in collaboration with an employee of Berlin, and arranging the existing lyrics and adding new ones of her own. The trial court found that the new song was revised somewhat by another employee of Berlin and approved by Disney. In exchange for an agreement to pay certain royalties, Disney assigned all its rights in the new song to Berlin,¹ 314 F.Supp. at 643. Disney later agreed that either one-third or one-fourth of its royalties should be paid to Miss Ronell for her services.²

In 1960, the twenty-eighth year of the copyright, when the right to apply for a renewal accrued, 17 U.S.C. § 24 (1970), Miss Ronell for the first time asserted a one-half ownership interest in the copyright as a joint author, and obtained registration in her name, while Bourne, Berlin's assignee, registered as "proprietor."³ In the present action, appellant, as Miss Ronell's assignee, seeks an adjudication that since 1960 it owned one-half interest in the copyright of the song, together with an accounting of one-half the profits from that date. Appellee has counterclaimed for infringement, alleging as a basis for its claim a new edition of the song published by appellant in 1961. The trial court rejected appellant's claim of ownership and sustained appellee's claim of infringement.

Bourne offered alternative theories in support of its claim to total ownership of the song: (1) that Miss Ronell's contribution was not substantial enough to constitute authorship, and (2) that her contribution was "done for hire," see 314 F.Supp. at 644, and that the "proprietor" was thus entitled to the renewal copyright under Section 24 of the Copyright Act, 17 U.S.C. § 24 (1970).⁴ In finding for the appellee, 314 F.Supp. at 647, the trial court appears to have relied principally on the first theory, though it also suggests a theory of assignment in its finding that the conduct of the parties shows that Miss Ronell intended to convey all rights to the work in return for royalties and credits, id. at 652-653. Though the trial court discussed the work for hire doctrine, id. at 650-651, it did not explicitly rule on that issue.

We affirm the judgment, but do so on the ground that the findings of the trial court establish the conclusion that Miss Ronell's contribution was work done for hire within the meaning of that term as it is used in the statute.⁵ In view of this result we need not reach the issue of whether Miss Ronell's efforts were sufficient to make her an author, or whether she assigned her rights.

As this Court said in Shapiro, Bernstein & Co. v. Bryan, 123 F.2d 697, 700 (2d Cir. 1941), "when the employer has become the proprietor of the original copyright because it was made by an employee `for hire,' the right of renewal goes with it, unlike an assignment." The rationale of this doctrine, which is embodied in Section 24, has been said to be "that the motivating factor in producing the work was the employer who induced the creation . . . ." Note, Renewal of Copyright—Section 23 of the Copyright Act of 1909 now Section 24, 44 Colum.L.Rev. 712, 716 (1944). See also Brattleboro Publishing Co. v. Winmill Publishing Corp., 369 F.2d 565, 567 (2d Cir. 1966) ("there is a presumption . . . that the copyright shall be in the person at whose instance and expense the work is done."). In the present case appellant itself says in its brief that "arrangements were made through Berlin for a copy of the entire musical score of the film cartoon to be forwarded by Disney with the express intention of having Ronell create a popular song inspired by the cartoon."

The purpose of the statute is not to be frustrated by conceptualistic formulations of the employment relationship. In Brattleboro Publishing Co., supra, this Court held that advertisements designed and printed by a newspaper, obviously at the "instance" of the advertiser, were done for hire.⁶ The Court expressly applied the statutory work for hire doctrine to the case of an independent contractor, 369 F.2d at 568, relying in part on Yardley v. Houghton Mifflin Co., 108 F.2d 28 (2d Cir. 1939), cert. denied, 309 U.S. 686, 60 S.Ct. 891, 84 L. Ed. 1029 (1940), where it was held that one who commissions an artist to paint a mural owns all rights to its reproduction. See also Dielman v. White, 102 F. 892 (C.C.D.Mass.1900), which reached the same result, although the court expressly noted that the "subject of the design was largely the designer's choice." Id. at 892. See Lin-Brook Builders Hardware v. Gertler, 352 F.2d 298 (9th Cir. 1965).

Appellant argues that we have held that "an essential element of the employer-employee relationship, is the right of the employer `to direct and supervise the manner in which the writer performs his work,'" Donaldson Publishing Co., supra, 375 F.2d, at 643, quoting Nimmer, Copyright § 62.31 (1964) now § 62.2 (1971), and that that "right" is not found in the present case. However, the trial court found that employees of Berlin did in fact make some revisions in Miss Ronell's work. Moreover since Disney had control of the original song on which Miss Ronell's work was based, Disney (and Berlin, with Disney's permission), at all times had the right to "direct and supervise" Miss Ronell's work.

The Court in Donaldson, supra, 375 F.2d at 643, listed as among the factors that show that there was no employment for hire, the absence of a fixed salary and the author's "freedom to engage in profitable outside activities without sharing the proceeds with" the alleged employer. Id. The absence of a fixed salary, however, is never conclusive, see Brattleboro Publishing Co., supra; Nimmer, Copyright § 62.2 (1971), nor is the freedom to do other work, especially in an independent contractor situation, Brattleboro Publishing Co., supra. Donaldson was quite different from the present case since it involved an author who was the dominant...