868 F.2d 1313 (2nd Cir. 1989), 225, Weissmann v. Freeman

Docket Nº:225, 353, Dockets 88-7435, 88-7465.
Citation:868 F.2d 1313
Party Name:Copr.L.Dec. P 26,390, 10 U.S.P.Q.2d 1014 Heidi S. WEISSMANN, M.D., Plaintiff-Appellant, Cross-Appellee, v. Leonard M. FREEMAN, M.D., Defendant-Appellee, Cross-Appellant.
Case Date:February 23, 1989
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

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868 F.2d 1313 (2nd Cir. 1989)

Copr.L.Dec. P 26,390,

10 U.S.P.Q.2d 1014

Heidi S. WEISSMANN, M.D., Plaintiff-Appellant, Cross-Appellee,


Leonard M. FREEMAN, M.D., Defendant-Appellee, Cross-Appellant.

Nos. 225, 353, Dockets 88-7435, 88-7465.

United States Court of Appeals, Second Circuit

February 23, 1989

Argued Oct. 20, 1988.

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[Copyrighted Material Omitted]

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Roger L. Zissu (Cowan, Liebowitz & Latman, New York City, of counsel), for plaintiff-appellant, cross-appellee.

Guy R. Fairstein (Summit Robins & Feldesman, New York City, of counsel), for defendant-appellee, cross-appellant.

Before LUMBARD, CARDAMONE and PIERCE, Circuit Judges.

CARDAMONE, Circuit Judge:

This appeal presents the paradigm of the problems that arise when a long relationship between accomplished professor and brilliant assistant comes to an end. Together the two had researched and co-authored scholarly scientific works. When the appellant--the younger assistant--individually wrote what she considered a new work, the appellee--the mentor--believing himself a co-author of the new piece, used his assistant's work, styling it as his own, and thereby precipitated the instant litigation.

Heidi S. Weissmann, M.D. appeals the dismissal after a bench trial in the Southern District of New York (Pollack, J.), of her copyright infringement suit against Leonard M. Freeman, M.D. Among the issues presented on appeal is the novel question of whether a medical paper derived from the parties' prior jointly authored works is itself a joint work, or whether it is a copyrightable individual derivative work, the infringement of which gives rise to a cause of action under the Copyright Act, 17 U.S.C. Sec. 101, et seq. (1982 & Supp. III 1985).


The parties are both accomplished scientists in the field of nuclear medicine. Appellant Weissmann is an Associate Professor of Radiology and Nuclear Medicine at the Albert Einstein College of Medicine (Einstein), and is an attending physician specializing in nuclear medicine at the Montefiore Medical Center (Montefiore). She has received numerous awards in the area of radionuclide imaging, and published more than 80 scholarly articles. Appellee Freeman is also a prolific author, and a noted lecturer in the fields of nuclear medicine and diagnostic radiology. He has served as President of the Society of Nuclear Medicine, and currently is a professor of Radiology and of Nuclear Medicine at Einstein, where he has taught since 1964. He is the Director of the Nuclear Medicine Service at Montefiore and Vice-Chairman of the Department of Nuclear Medicine at Einstein.

The parties' professional association began in 1977 when Dr. Weissmann was in her fourth year of residency at Montefiore and Dr. Freeman was Chief of the Division of Nuclear Medicine at that hospital. In early 1977 appellee was researching the application of the derivatives of a certain radiopharmaceutical, iminodiacetic acid (IDA). IDA is a substance labeled with a radioactive isotope that is injected into the bloodstream and, when picked up by the liver, permits diagnosis of certain liver and biliary disorders. In the late 1970's drug manufacturers producing IDA analogs needed scientists to develop a patient data base to obtain approval of their Food and Drug Administration applications in order to market the isotopes in the United States. One selected scientist was Dr. Freeman, who began using the IDA analogs in his research efforts. As a fourth-year resident, appellant worked on these initial studies under Dr. Freeman's tutelage. The parties' first jointly authored article on IDA derivatives was published in January 1979. Over the next several years a series of articles on the use of IDA scanning in diagnosing biliary diseases were published in the names of Freeman, Weissmann, and other scientists.

Beginning in 1980 the parties worked together as researchers and co-authors of a number of papers focusing on various aspects of nuclear medicine, particularly IDA imaging. Prior versions of the work alleged to have been infringed in the instant litigation were first written in 1980 for a nuclear medicine review course sponsored

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by the Harvard Medical School. The district court found that the work in which appellant claims a copyright (Plaintiff's exhibit 1 or P-1) is a "syllabus," that is, a paper reviewing the state of the art of hepatobiliary imaging techniques, prepared to accompany lectures, and used by medical residents to study for specialty boards. From 1980 to 1985 prior versions of P-1 were constantly revised and updated by the parties in an ongoing cooperative effort.

In 1985 Dr. Weissmann authored the article that precipitated the present copyright suit. It was entitled "Hepatobiliary Imaging" (P-1), and reported on a relatively new diagnostic technique employing radioactive analogs of the agent IDA. The work was prepared as a chapter for the Radiological Society of North America's book entitled "Syllabus: A Categorical Course in Nuclear Medicine," printed and published in 1985. The publication listed Dr. Weissmann as the article's sole author.

Appellant's creation admittedly was derived from previous papers jointly written by the parties during the course of their professional relationship that extended from 1977 to 1984. An examination of the relevant documents reveals that portions of P-1 were taken virtually verbatim from prior jointly authored pieces that had been presented at Einstein and at the Mount Sinai School of Medicine (Mount Sinai) in 1983 and 1984 respectively. Although P-1 appears to restate the central propositions asserted in the prior works, Weissmann's exhibits includes the following new elements: (1) a new selection of photo illustrations and associated captions; (2) references to four recent reports in the pertinent literature; (3) new textual additions; and (4) reorganization of previous material. Appellee conceded at trial that this material in P-1 was created solely by appellant.

In the summer of 1987 Dr. Freeman was invited to give a review course on nuclear medicine at Mount Sinai. He prepared P-1 to use in giving the course by deleting Dr. Weissmann's name from P-1 and replacing it with his own, and by adding three words to the title. Fifty copies of the article were made. Before the date set for the course, appellant obtained one of the copies, and through counsel requested that her revised article not be circulated, and that all those who had received copies be informed that she claimed sole authorship of it. The article was removed from the packet of course materials. Dr. Freeman delivered his lecture without the use of his version of P-1.

After this incident, Weissmann filed the instant suit alleging copyright infringement in violation of 17 U.S.C. Sec. 501 (1982 & Supp.1985). In her prayer for relief she sought a declaration that Freeman had committed actionable infringement, an injunction permanently restraining him from infringing, and an award of actual damages and profits. Appellant consented to the dismissal of her claim for attorney's fees because the copyright she obtained covering P-1 was not registered before the suit was commenced, and such is a statutory prerequisite to a claim for attorney's fees.


After a four-day bench trial, Judge Pollack in a written decision concluded that Dr. Freeman's use of P-1 did not violate the copyright law. 684 F.Supp. 1248 (S.D.N.Y.1988). In support of its determination that Freeman had not infringed any legally cognizable rights that appellant may have had in P-1, the district court found that appellee was a joint author, and therefore a co-owner of any copyright Weissmann acquired in the article. 684 F.Supp. at 1260. The trial court also determined that P-1's new matter was too trivial to qualify for protection as a derivative work under the copyright statute. Id. at 1261. Additionally, it ruled that even were Freeman not a joint author of the allegedly infringed work, and even were P-1's new matter copyrightable, Freeman's purported use of P-1 was a fair use within the purview of Sec. 107 of the Copyright Act. Id. at 1261-62.

In the course of the proceedings the district court denied appellant's two substantive motions. The first was pursuant to Rule 15(b) for leave to amend the pleadings to conform to the proof. Appellant sought

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to have the court evaluate and consider claims arising from appellee's allegedly publishing another verbatim copy of P-1 under his name for a December 1986 symposium in the Republic of China (the Taiwan Publication), and the supposed proof that Freeman's conduct constituted misrepresentation of origin under Sec. 43(a) of the Lanham Act and under the common law. The second motion made under Rule 60(b) sought reconsideration by the trial court of its finding that the Taiwan Publication had not been proven to be connected with Dr. Freeman. Appellee's request for attorney's fees and for sanctions was denied. Appellant appeals from the dismissal of her copyright infringement suit, and appellee cross-appeals from the denial of attorney's fees and sanctions against appellant.


On appeal appellant argues that the district court erred in (1) determining that appellee was a joint author of P-1 within the meaning of Secs. 101 and 201 of the Copyright Act, (2) concluding that P-1 did not contain sufficient new matter to qualify for copyright protection as a derivative work under Secs. 101 and 103(b), and (3) deciding that, even if appellee was not a joint author and the article therefore did qualify for protection as a derivative work, appellee's use of P-1 constituted a fair use under Sec. 107, and (4) denying appellant's 15(b) and 60(b) motions.

I Joint Authorship

Before discussing whether P-1 was a joint work, we set forth the standard of review to be applied to the district court's determination...

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