815 F.2d 323 (5th Cir. 1987), 85-3741, Easter Seal Soc. for Crippled Children and Adults of Louisiana, Inc. v. Playboy Enterprises

Docket Nº:85-3741.
Citation:815 F.2d 323
Party Name:2 U.S.P.Q.2d 1585 EASTER SEAL SOCIETY FOR CRIPPLED CHILDREN AND ADULTS OF LOUISIANA, INC. Plaintiff-Appellant v. PLAYBOY ENTERPRISES, et al., Defendants-Appellees.
Case Date:April 23, 1987
Court:United States Courts of Appeals, Court of Appeals for the Fifth Circuit

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815 F.2d 323 (5th Cir. 1987)

2 U.S.P.Q.2d 1585


LOUISIANA, INC. Plaintiff-Appellant


PLAYBOY ENTERPRISES, et al., Defendants-Appellees.

No. 85-3741.

United States Court of Appeals, Fifth Circuit

April 23, 1987

Rehearing and Rehearing En Banc Denied June 1, 1987.

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Bradley M. Smolkin, James J. Popham, Fawer, Brian, Hardy & Zatzkis, New Orleans, La., for plaintiff-appellant.

Skye McLeod, Charles F. Thensted, Barham & Churchill, New Orleans for Greater New Orleans Educational Television (WYES-TV).

Liane C. King, A.R. Christovich, Jr., Christovich & Kearney, New Orleans, La., for Playboy Enterprises, Inc., et al.

Appeal from the United States District Court for the Eastern District of Louisiana.

Before GEE, POLITZ, and WILLIAMS, Circuit Judges.

GEE, Circuit Judge:

This case presents a new issue for our Court: What effect, if any, did the Copyright Act of 1976 have on the "work for hire" doctrine developed under the 1909 Act? We hold that 1976 Act has greatly restricted the scope of the "work for hire" doctrine, and we affirm the decision of the district court.

  1. Facts and Prior Proceedings

    Entertainer Ronnie Kole, acting on behalf of the Easter Seal Society, contracted with the New Orleans public television station WYES for the videotaping of a staged "Mardi Gras-style" parade and a "Dixieland" musical jam session. WYES charged less than market rates as an indirect charitable contribution to the Society. The videotape was to be edited into a 16 minute segment for the National Easter Seal Telethon. There was no mention of copyrights.

    On the day of production, Kole gave a number of layman's suggestions to WYES unit director John Beyer such as camera locations and particular scenes to look for during the fake "Mardi Gras" parade. Kole was "master of ceremonies" at the subsequent jam session performed by Kole and several well-known jazz musicians for the video crew. Kole told Beyer in advance about musical arrangements--the sequence and length of solos, for example--so that Beyer, who of course was taping in real time, could position his camera operators and tape appropriate shots of each band member. Kole also made suggestions about certain camera angles, but it is unclear to what extent Beyer followed them. Kole had no voice in deciding technical questions such as lighting, color balance, sound recording, and the like. Beyer fully supervised all unit employees, making the final aesthetic and technical decisions about the deployment of six video cameras and sound equipment. The taping proceeded smoothly in an atmosphere of exuberant music and amiable collaboration.

    Beyer and his staff post-produced the final short segment (the "master" tape) from the raw video footage (the "field" tape), and it aired nationally in March 1982. WYES did not keep a copy of the master, but kept the field tape on file, using portions of it subsequently in several WYES-produced shows including a "Dixieland Jazz" series broadcast locally and distributed nationally.

    Some time later, WYES director of broadcasting Julius Cain received a request from John Thompson, a Canadian television producer and acquaintance, for Mardi Gras parade footage. With no inkling of the intended use, Cain sent forty minutes of tape copied from the field tapes. Thompson or his associates used portions of the field tape in an "adult" film entitled "Candy,

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    the Stripper." "Candy" was created, produced, and distributed by various entities including named defendant Playboy, Inc. 1 It was shown nationally on cable television a total of four times during two days in May 1983. One or more viewers in the New Orleans area recognized themselves in the field footage now part of "Candy." 2 Counsel for the Society then demanded by letter that various defendants stop broadcasting "Candy" or an injunction would be sought "against the continued invasion of our clients' privacy as well as the continued breach of copyright." The contested footage was removed from "Candy" and no further copyright violations are alleged.

    The Society sued in August 1983, alleging copyright infringement. After discovery, the parties submitted the issue to the district court on cross-motions for summary judgment. Both sides agreed that the relevant evidence was fully explored in the depositions of Kole and Beyer.

    The district court granted partial summary judgment for the defendants, ruling that only the field tapes were involved in the alleged infringement. The court determined that Beyer was not an "employee" of the Society within the meaning of the "work for hire" doctrine of the Copyright Act of 1976, and that WYES held the copyright in the field tapes under the same doctrine. The Society appeals.

  2. "Work for Hire" under the 1909 Act

    The Copyright Act of 1909 made an employer the "author" and initial copyright holder of "works made for hire." See 17 U.S.C. Sec. 26 (1976). "Works made for hire" was undefined in the statute. Accordingly, a substantial body of cases developed as courts worked out the definition backwards in the usual manner of the common law. The obvious question implicit in the statute was whether independent contractors could be statutory "employees." That question remained unanswered for a surprisingly long time.

    In the Second Circuit--the de facto Copyright Court of the United States--there was an early line of cases dealing with commissioned works by photographers. 3 The court developed a presumption that the parties intended the buyer to hold the copyrights in the photographs. In 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), the court applied this presumption to a commissioned mural painted on a building. It stated the prior rule at a new level of generality:

    If [an artist] is solicited by a patron to execute a commission for pay, the presumption should be indulged that the patron desires to control the publication of copies and that the artist consents that he may, unless by the terms of the contract, express or implicit, the artist has reserved the copyright to himself.

    108 F.2d at 31. These early cases presumed that the copyrights were assigned to the patron under the commission contract; there was nothing in them about "work for hire." 4 Yardley itself was inconsistent with the "works made for hire" clause of Sec. 26. Under the 1909 Act, authors

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    had rights different from assignees, including the right to renewal. If the Yardley court had deemed the mural a work "made for hire," the statutory employer (the patron) rather than the statutory employee (the artist) would have held the renewal rights as the statutory "author." Instead, the court explicitly assumed that the artist's executor rather than the patron had the right to renew the copyright in the mural. Yardley, 108 F.2d at 32. As late as 1955, the "presumed assignment" rule of Yardley was distinct from a more radical "presumption" that the commissioning party was the surrogate author under the "works made for hire" language of Sec. 26. See Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., 221 F.2d 569, 570 (2d Cir.1955).

    In Brattleboro Publishing Co. v. Winmill Publishing Corp., 369 F.2d 565 (2d Cir.1966), the Second Circuit explicitly merged the Yardley rule into the "work for hire" doctrine for the first time. 5 Plaintiff newspaper sued defendant newspaper for using advertising copy that the plaintiff had prepared for merchants who later advertised in defendant's paper. The court recited a number of employer/employee cases and summarized them as creating the rule that the employer is the "author" "whenever an employee's work is produced at the instance and expense of his employer." Brattleboro, 369 F.2d at 567. Then came the critical twist: "We see no sound reason why these same principles are not applicable when the parties bear the relationship of employer and independent contractor." Id. at 568 (citing Yardley ). The court held that there was no infringement because the merchants who paid for the ads were the "authors" under the "work for hire" doctrine. However, the court also discussed the unfairness to the newspaper's advertising customers of the contrary result, and Chief Judge Lumbard concurred solely on the ground that "probable intent" of the parties to a newspaper advertising contract was enough to sustain the judgment. Id. at 569. Thus, the relationship of the Yardley rule to the holding in Brattleboro was sufficiently ambiguous that the expansive language of the case could have been limited to its special facts.

    But Brattleboro was not so limited. In Picture Music, Inc. v. Bourne, Inc, 457 F.2d 1213 (2d Cir.), cert. denied, 409 U.S. 997, 93 S.Ct. 320, 34 L.Ed.2d 262 (1972), the Second Circuit confronted a copyright claim by the assignee of a paradigmatic independent contractor. 6 The court affirmed the broad language of Brattleboro and the use of Yardley as a "work for hire" case. 7 Although there was little doubt after Picture Music that the "presumption" of

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    Yardley had been adopted without limitation in "work for hire" doctrine so that whoever commissioned a work was presumed the statutory "author," the Second Circuit soon dispelled all doubt by announcing a pure "instance and expense" test for "works made for hire" in a case involving an independent contractor:

    [The "work for hire"] doctrine is applicable ... when the employee's work is produced at the instance and expense of the employer, or, in other words, when the "motivating factor in producing the work was the employer who induced the creation...."

    Siegel v. National Periodical Publications, Inc., 508 F.2d 909, 914 (2d Cir.1974) (quoting Picture Music...

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