Estate of Burne Hogarth v. Edgar Rice Burroughs, Inc.

• Decision Date: 29 August 2003
• Docket Number: Docket No. 02-7312.
• Citation: 342 F.3d 149
• Parties: The ESTATE OF BURNE HOGARTH, Burne Hogarth Dynamic Media Worldwide LLC, Michael Hogarth, as the child of deceased author Burne Hogarth, Richard Hogarth, as the child of the deceased author Burne Hogarth and Ross Hogarth, as the child of the deceased author Burne Hogarth, Plaintiffs-Appellants, v. EDGAR RICE BURROUGHS, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Second Circuit

342 F.3d 149

The ESTATE OF BURNE HOGARTH, Burne Hogarth Dynamic Media Worldwide LLC, Michael Hogarth, as the child of deceased author Burne Hogarth, Richard Hogarth, as the child of the deceased author Burne Hogarth and Ross Hogarth, as the child of the deceased author Burne Hogarth, Plaintiffs-Appellants, v. EDGAR RICE BURROUGHS, INC., Defendant-Appellee.

Docket No. 02-7312.

United States Court of Appeals, Second Circuit.

Argued: January 22, 2003.

Decided: August 29, 2003.

Peter Herbert, Lankler Siffert & Wohl LLP, New York, N.Y. (David B. Smallman, Steinhart & Falconer LLP, New York, N.Y., on the brief), for Plaintiffs-Appellants.

Roger L. Zissu, New York, N.Y. (Evan C. Gourvitz, Fross Zelnick Lehrman & Zissu, P.C., New York, N.Y., on the brief), for Defendant-Appellee.

Before: NEWMAN, KATZMANN, and RAGGI, Circuit Judges.

JON O. NEWMAN, Circuit Judge.

Once again, Tarzan presents this Court with copyright issues.¹ The issues, arising under the 1909 Copyright Act, Pub.L. No. 60-349, 35 Stat. 1075 (1909), codified at 17 U.S.C. § 24 et seq. (1976) ("1909 Act"), concern the work-for-hire doctrine as applied to an independent contractor, the significance of incorrect information in applications for registration filed with the Register of Copyrights, and laches. The appeal also presents contract issues. The Plaintiffs-Appellants — the Estate of Burne Hogarth, Burne Hogarth Dynamic Media Worldwide LLC, and three of Hogarth's children (collectively "Hogarths") — appeal from the March 21, 2002, judgment of the District Court for the Southern District of New York (Denise L. Cote, District Judge) entered after a bench trial. The District Court ruled in favor of the Defendant-Appellee Edgar Rice Burroughs, Inc. ("ERB"), rejecting the Hogarths' claims for a declaratory judgment that Burne Hogarth, a well known illustrator, was the author of two books and as such entitled to copyright in the original and renewal terms. The books are pictorial versions of Tarzan of the Apes and of stories from Jungle Tales of Tarzan (collectively "the Books"). The Hogarths claimed to have succeeded to Burne Hogarth's rights in the Books upon his death. The Court also rejected the Hogarths' claim that they had a contract right to receive a portion of licensing revenues paid to ERB by the Walt Disney Company ("Disney") and a right to have some of Hogarth's original artwork returned. We affirm.

Background

The facts are meticulously detailed in Judge Cote's comprehensive opinion. Estate of Burne Hogarth v. Edgar Rice Burroughs, Inc., No. 00 CIV. 9569(DLC), 2002 WL 398696 (S.D.N.Y. Mar.15, 2002) ("Dist.Ct.Op."). We recount only those facts necessary to understand and resolve the issues on appeal. Applying the "clearly erroneous" standard of review, we accept the District Court's findings of subsidiary facts, except for those findings related to certain aspects of the steps taken in the Office of the Register of Copyrights ("Copyright Office"). As to these, we have been greatly aided by a response from Marybeth Peters, Register of Copyrights ("Register"), to inquiries we submitted to the Copyright Office after oral argument of the appeal. See Letter of Marybeth Peters, Register of Copyrights, to Roseann MacKechnie, Clerk, U.S. Court of Appeals for the Second Circuit (April 8, 2003) ("Peters Letter"). Our account of those steps will supplement and slightly modify the District Court's account, but will not change any of the Court's conclusions of law.

Creation of the Books. Edgar Rice Burroughs published Tarzan of the Apes, the first of his 26 Tarzan novels, in 1912. Jungle Tales of Tarzan was published in 1916-17. Both works are now in the public domain in the United States. Burroughs formed ERB in 1923 to manage his literary rights.

In 1937, Burne Hogarth ("Hogarth") was hired by United Features Syndicate, Inc. to illustrate the syndicated comic strip "Tarzan" and continued this work until 1950. "During that time, he developed a highly distinctive and still widely acclaimed style of illustrating Tarzan and his universe." Dist. Ct. Op. at *2.

In the 1960s, Hogarth and Robert M. Hodes, then Vice President of ERB, had discussions out of which emerged the idea of a new series of Tarzan books. In July 1970, Hodes wrote to Hogarth, suggesting production of "a quality, high priced edition of an adult version of TARZAN OF THE APES in graphic form." Id. at *3 (internal quotation marks omitted). In another letter, Hodes proposed terms for the project that would provide the basis for the eventual agreement between ERB and Hogarth. The letter stated:

1. We would commission you to produce the work at a cost that would be paid one-half now and one-half out of the first proceeds of the book .... That one-half deferred payment is the extent of your speculation, or risk.

2. We would undertake to find a U.S. publisher.... All expenses would be borne by us, and this, together with the sum paid to you, would be our risk.

Id. at *4.² Hogarth responded: "Your proposal sounds like a capital idea." Id.

Later in 1970, ERB identified Watson-Guptill Publications, Inc. ("Watson-Guptill") as a likely publisher. This firm had previously published Hogarth's art instruction books. In proposing a contract between ERB and Watson-Guptill, Hodes wrote the firm's editor, with a copy to Hogarth:

1. Your contract is directly with [ERB]. We undertake to provide the services of Burne Hogarth to furnish you with artwork and text for your proposed illustrated book of Tarzan of the Apes....

2. You are responsible for designing and producing the book, and, in general, supervising Mr. Hogarth's work.... We reserve the right to require all parties to produce a book that reasonably and substantially tells the story of Tarzan of the Apes as Edgar Rice Burroughs told that story in his classic novel.... As for the artwork itself, we cannot and do not presume to influence or control the work of Mr. Hogarth.

Id.

The ERB-Hogarth Contract. In an agreement dated November 16, 1970 ("1970 Agreement"), signed by Hogarth in 1971, ERB and Hogarth established the terms for the creation of the first and subsequent books. It included the following provisions:

[¶ 1] You [Hogarth] will create a book along the lines we [ERB] have discussed with Watson-Guptill based upon approximately one-half of Tarzan of the Apes .... The creative details will be worked out between you and our publisher.

[¶ 2] We will have the right to approve the content of the books, but our sole interest in this regard will be to preserve the Burroughs "flavor." We may give you our artistic suggestions from time to time, but you will be the final judge of the artwork as distinguished from the story or text.

[¶ 3] For all of your services and for all rights being granted, we will pay you, your estate [and] heirs ... for the term of the copyright, including renewals:

(a) $2,500 on January 1, 1971;

(b) $2,500 on the completion of all your work; and

(c) 50% of all net monies realized by us from the exploitation of the book.

......

[¶ 5] ... You will create the subsequent books and we agree not to employ anybody else to create them....

.....

[¶ 7] We agree that the physical possession and ownership of the original artwork shall be shared on the following basis: We shall own the originals for the first book, you shall own them for the second book, we for the third book, you for the fourth book and so on. We have indicated to you that we desire the physical possession and ownership of the foregoing artwork in order to place it in an Edgar Rice Burroughs Museum....

[¶ 8] The book will be copyrighted in the name of [ERB] and we shall be the exclusive proprietors thereof, subject always to our obligation to pay you your participation. You hereby grant us whatever rights we need to obtain the copyright in our name and to extend and renew that copyright wherever and whenever we can.

1970 Agreement; see also Dist. Ct. Op. at *5-*6.

In February 1972, ERB made an agreement with Watson-Guptill, granting it worldwide English language hardcover publication rights in the first book and the option to publish subsequent books. ERB warranted that it was the "sole author and proprietor" of the first book. Id. at *7.

The Books. The first book, published in 1972 ("the 1972 book"), is 157 pages in length, of which 122 pages contain panels of color illustrations and text, with one to four panels per page. The text is a combination of narration and quotations of what the characters shown on a panel are saying. The title page shows the title as "Tarzan of the Apes" and credits the creators in these words:

BY BURNE HOGARTH

Original text by Edgar Rice Burroughs adapted by Robert M. Hodes

The second book, published in 1976 ("the 1976 book"), is 157 pages in length, of which 122 pages contains panels of black and white illustrations and text, of a style similar to that of the 1972 book. The title page shows the title as "Jungle Tales of Tarzan" and credits the creators in these words:

BY BURNE HOGARTH

Original text by Edgar Rice Burroughs adapted by Burne Hogarth and Robert M. Hodes

Neither the 1972 nor the 1976 book enjoyed substantial sales.

The Copyright Registrations. The application for the original term registration for the pictorial version of Tarzan of the Apes was filed in 1973 by Watson-Guptill.³ It identifies as the claimant "Edgar Rice Burroughs, Inc." and as the authors "Edgar Rice Burroughs ... (deceased)" and "(illustrated) by Burne Hogarth." In 1999, counsel for ERB submitted an application for a supplementary registration, which identifies the sole author as "Edgar Rice Burroughs, Inc.," and states the explanation for the "correction" as "Work was one made for hire."

Three applications for renewal term registrations were submitted for Tarzan of the Apes. On December 6, 2000, Danton Burroughs, on behalf of ERB, submitted an application for a renewal registration listing the author of renewable matter as "Edgar...