969 F.2d 1547 (3rd Cir. 1992), 91-1972, Marco v. Accent Pub. Co., Inc.

Docket Nº:91-1972.
Citation:969 F.2d 1547
Party Name:23 U.S.P.Q.2d 1631 Ed MARCO, d/b/a/ Ed Marco Photography v. ACCENT PUBLISHING CO., INC.; Sonia Gilbert; Leif Klein; Lapidary Journal, Inc.; Ed Marco; Gerry J. Elman; Frederic M. Wilf; Elman & Wilf, P.C., Defendants on Counterclaim, Ed Marco, d/b/a Ed Marco Photographer, Appellant.
Case Date:July 23, 1992
Court:United States Courts of Appeals, Court of Appeals for the Third Circuit

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969 F.2d 1547 (3rd Cir. 1992)

23 U.S.P.Q.2d 1631

Ed MARCO, d/b/a/ Ed Marco Photography


ACCENT PUBLISHING CO., INC.; Sonia Gilbert; Leif Klein;

Lapidary Journal, Inc.; Ed Marco; Gerry J.

Elman; Frederic M. Wilf; Elman & Wilf,

P.C., Defendants on Counterclaim,

Ed Marco, d/b/a Ed Marco Photographer, Appellant.

No. 91-1972.

United States Court of Appeals, Third Circuit

July 23, 1992

Argued June 10, 1992.

Rehearing Denied Aug. 28, 1992.

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Frederic M. Wilf (argued), Gerry J. Elman, Elman & Wilf, Media, Pa., for appellant.

David M. Ginsberg (argued), Sidney Ginsberg P.C., Philadelphia, Pa., for appellees.

Charles D. Ossola (argued), Hunton & Williams, Washington, D.C., amicus curiae for American Society of Magazine Photographers.

Before: MANSMANN, SCIRICA and ROTH, Circuit Judges.


MANSMANN, Circuit Judge.

We focus here on the application of agency law in the context of the "work for hire" provision of the Copyright Act of 1976. 17 U.S.C. § 101(1). We find that the district court misapplied agency principles to the facts in holding that a freelance photographer was the employee of a publisher. Because the district court premised the denial of a preliminary injunction on this erroneous conclusion of law, we will vacate the district court's judgment and remand for further consideration.


The district court has exclusive subject matter jurisdiction of this action arising under the Copyright Act. 28 U.S.C. § 1338(a). We have appellate jurisdiction to review the district court's refusal to grant a preliminary injunction. 28 U.S.C. § 1292(a)(1).

We review the denial of injunctive relief for abuse of discretion, which occurs if the district court's decision rests on a clearly erroneous finding of fact, an error of law, or a misapplication of law to the facts. See Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1242 (3d Cir.1983), cert. dismissed, 464 U.S. 1033, 104 S.Ct. 690, 79 L.Ed.2d 158 (1984). In determining whether an underlying error exists, we exercise plenary review of the district court's application of the law of agency to the facts. See, e.g., Levendos v. Stern Entertainment, Inc., 909 F.2d 747, 748 (3d Cir.1990); United States v. Adams, 759 F.2d 1099, 1106 (3d Cir.), cert. denied, 474 U.S. 971, 106 S.Ct. 336, 88 L.Ed.2d 321 (1985).


Most of the salient facts are not in dispute. In recounting them, we adopt the findings of the district court so long as they are not clearly erroneous. See, e.g., Mellon Bank PSFS, N.A. v. Farino, 960 F.2d 1217, 1220 (3d Cir.1992); Leeper v. United States, 756 F.2d 300, 308 (3d Cir.1985).

In 1990, the appellant, Ed Marco, photographed jewelry for Accent Magazine, a monthly trade journal for the costume jewelry industry. Accent Publishing Co., Inc. had engaged Marco on the basis of his portfolio, without a written contract and without negotiation concerning copyright or licensing. 1 Accent supplied the jewelry and the props, sketched the shots, and retained the right to have Marco reshoot unsatisfactory photographs. Accent did not name Marco on the magazine's masthead.

Marco, who has ten years' experience and who earned a Bachelor of Fine Arts degree in photography at the Philadelphia College of Art, made images for about six consecutive issues of the magazine and then for one or two later issues. He thus worked during every month except one

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over the course of his business with Accent.

Marco shot the pictures in his own studio on his own time, subject to Accent's deadlines. For the most part, he worked on still-lifes, without anyone from Accent present. On a few occasions, however, Accent provided live models; Accent's Art Director, Kevin Myers, would pose the models.

The exact scope of Myers' control at the live sessions remains in dispute. Marco challenges as clearly erroneous the district court's finding that Myers "directed, supervised, and provided artistic contribution to the photographic work." Testimony supports this finding. Myers generally concerned himself with the way models and jewelry looked in the photographs. See, e.g., Myers test., R. at 545, 575. Myers also would instruct Marco, in very general terms, to use more light. See id. Myers candidly admitted, however, that he did not become involved in the technical aspects of the photographs. For example, Myers described matters such as color balance and light meter readings to be beyond his ken and to be within the purview of a professional photographer. Myers test., R. at 561.

Marco did not receive an hourly wage or periodic salary. The district court's finding, that "Marco was paid at the rate of approximately $150 per photograph used in advertisements, and $450 per month for all photographs used in connection with articles," must be read as shorthand for the facts that Marco received about $450 per issue, that issues appeared monthly, and that Marco invoiced about one job each month. Insofar as the finding implies that Marco received a salary of $450 per month, the finding is clearly erroneous.

Accent thus paid Marco by the job. Accent also reimbursed Marco's film and processing expenses. Accent did not withhold taxes or pay employee benefits.

Marco claims to have authored the photographs and therefore to own the copyrights to the images. He moved for a preliminary injunction to prevent their unlicensed republication. After a hearing, the district court considered Marco's likelihood of success on the merits, and, reasoning that the photographs were works for hire, determined that Marco could not prevail on the merits of a copyright claim. Given its determination that Marco had little chance of success on the merits, the district court found Marco's evidence of irreparable injury to be insufficient, and the district court denied the preliminary injunction.


The photographs in dispute would be classified as "made for hire" if they were "prepared by an employee within the scope of his or her employment...." 17 U.S.C.A. § 101(1) (definition). The district court thus premised its judgment on the conclusion that Marco was Accent's employee, as determined by reference to principles of the general common law of agency. 2 Community for Creative Non-Violence v. Reid, 490 U.S. 730, 750-51, 109 S.Ct. 2166, 2178, 104 L.Ed.2d 811 (1989) ("CCNV "); see also Restatement (Second) of Agency § 220 (1957) (definition of master-servant relation) (cited in CCNV ).


In Community for Creative Non-Violence v. Reid ("CCNV"), a charity hired Reid to sculpt a homeless family huddled on a steam grate. The charity dictated the work's title and a tight deadline for completion. The parties agreed to a total cost of $15,000, which covered assistants and materials. The charity supplied the grate and a steam effect, visited Reid to check on progress, and insisted on the use of particular props. After completion, a dispute

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arose. The charity claimed that the sculpture was a work for hire. 490 U.S. at 733-36, 109 S.Ct. at 2169-71.

The Supreme Court held that the sculpture was not a work for hire because Reid was not the charity's employee. 490 U.S. at 751-52, 109 S.Ct. at 2178-79. The Court instructed that the term employee in the work for hire provision carries its common law agency meaning. Reid, said the Court, was not the charity's employee under common law agency principles.

Under this test, which incorporates the Restatement definition of employee, the CCNV opinion instructs courts to determine whether an employment relationship exists by considering the hiring party's right to control the manner and means by which the product is accomplished, 3 along with the following factors, among others: actual control over the details of the work, 4 the hired party's occupation, 5 local custom, 6 the skill required, 7 source of tools, 8 work location, 9 length of employment, 10 the right to assign more work, 11 the hired party's discretion over work hours, 12 payment method, 13 the regular business of the hiring party, 14 the parties' understanding, 15 the hiring party's role in hiring assistants, 16 tax treatment, 17 employee benefits, 18 and whether the hiring party is in business. 19


Application of the CCNV and the Restatement factors demonstrates that the district court erred in concluding that Marco was Accent's employee. Under the common law of agency, Marco was an independent contractor.

In its application of agency law to the facts, the district court recognized only two factors that indicated independent contractor status: Marco used his own equipment and paid his own taxes. The district court did not discuss four more factors that indicate independent contractor status: Marco supplied his own studio, did not receive employee benefits, works in a distinct occupation, and was paid by the job. We need not further develop these six factors, which all indicate that Marco was an independent contractor.

In addition, the district court did not properly recognize that Marco had discretion over his work hours; he could work on any day, at any hour, and for any stretch of time he chose. The district court did consider Accent's imposition of deadlines in this context, but deadlines do not alter an independent contractor's discretion over work hours. We note that in CCNV, the charity had imposed a strict deadline for completion, 490 U.S. at 733, 109 S.Ct. at 2169, yet the Court did not weigh that deadline against a determination of independent

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contractor status. Id. at 752-53, 109 S.Ct. at 2179-80 (only the charity's control over the sculpture's specifications indicated an employment relationship).

Nor did the district court recognize that Accent's absence of a right to assign more work indicates Marco's independent contractor status. Although the district court considered Accent's right to require Marco to reshoot unsatisfactory images, this right was merely a...

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