Scherr v. Universal Match Corporation

• Decision Date: 15 October 1969
• Docket Number: No. 365,Docket 31962.,365
• Citation: 417 F.2d 497
• Parties: Stuart SCHERR and Steven Goodman, Plaintiffs-Appellants, v. UNIVERSAL MATCH CORPORATION and United States of America, Defendants-Appellees.
• Court: U.S. Court of Appeals — Second Circuit

417 F.2d 497 (1969)

Stuart SCHERR and Steven Goodman, Plaintiffs-Appellants, v. UNIVERSAL MATCH CORPORATION and United States of America, Defendants-Appellees.

No. 365, Docket 31962.

United States Court of Appeals Second Circuit.

Argued March 24, 1969.

Decided October 15, 1969.

Herbert Kanon, Bernard Olcott, New York City, for plaintiffs-appellants.

Edwin J. Jacob, Lauterstein & Lauterstein, New York City, for Universal Match Corp.

Brian J. Gallagher, Richard S. Toder, Asst. U. S. Attys., Robert M. Morgenthau, U. S. Atty., for United States.

Before WATERMAN, MOORE and FRIENDLY, Circuit Judges.

WATERMAN, Circuit Judge:

This is an action for copyright infringement brought by two ex-servicemen against Universal Match Corporation occasioned by Universal's commercial manufacture and sale of match books which bear a picture of a statue, entitled "The Ultimate Weapon." The statue had been created by plaintiffs during their service in the military. The complaint seeks an injunction against further infringement and an accounting of the profits, or, in lieu thereof, damages of $10.00 for each infringing match book copy. The United States of America, which had consented to Universal's commercial exploitation of "The Ultimate Weapon" without payment to plaintiffs, intervened as a defendant and interposed an answer denying plaintiffs' copyright and, alternatively, counterclaimed for an assignment of the copyright if it should appear that plaintiffs may have acquired one.

Both defendants moved for summary judgment. The district court held that there were no genuine issues of material fact and we agree with that holding. The opinion is reported at 297 F.Supp. 107 (SDNY 1967) (McGohey, J.). All the facts are undisputed except that appellants charge that the Army orally agreed to share with them any revenue derived from the commercial reproduction of the statue by others. This allegation is entirely lacking in supporting proof and hence the court below correctly disposed of the parties' claims in this litigation on defendants' motion for summary judgment.

Plaintiffs served in the United States Army during the years 1957 through 1959. As they had had some education and experience in the fine arts, both were classified as illustrators and were assigned to the preparation of visual training aids at Fort Dix, New Jersey. During their leisure hours the two men put their artistic talents to further use. Plaintiff Goodman, with some assistance from plaintiff Scherr, was making a small clay table model of an infantryman when their creativity caught the eye of a public relations officer who brought them and their work to the attention of the deputy post commander. He, too, was favorably impressed, and suggested the construction of a larger, life-size statue of an infantryman which would serve as a symbol of Fort Dix. Goodman and Scherr agreed to undertake the project.

Thereafter, for approximately nine months, plaintiffs were relieved of their regular duties as illustrators and they devoted substantially all of their duty hours and some of their leisure time to "The Ultimate Weapon," the name the Army decided the statue should receive. During all stages of design and construction of the statue, the cost of the project was borne almost exclusively by the Army.¹ It supplied the necessary physical facilities, equipment, materials, and additional skilled and unskilled labor force. Total government expenditures were estimated at $12,367.90. Additionally, plaintiffs were at all times accountable to their military superiors to whom they submitted written progress reports.

On March 17, 1959 the statue was completed, and it was dedicated on March 20, 1959. Since its unveiling, it has at all times been, and is today, on public view at Infantry Park, Fort Dix, New Jersey. While the idea for the statue originated from the smaller clay model, the statue differs from the model. Moreover, plaintiffs never attempted to secure a copyright for their original clay model. Their claim of infringement rests solely upon whether they possess an effective copyright in the finished statue.

The statue is some 25 feet high. It consists of a 12 foot figure of a charging infantryman in full battle dress, with rifle thrust forward, with a field pack on his back, and with a bayonet, sheath, a shovel, canteen, hand grenades, and other implements attached to a cartridge belt supported by suspenders. He stands upon a pile of rocks about 3 feet high which, in turn, is set upon a 12 foot base. On the base are two plaques. The larger of them is inscribed: "The Ultimate Weapon, the only indispensable instrument of war, the fighting man." The smaller plaque bears the names of plaintiffs and two of their assistants. Neither plaque bears any copyright notice.

However, the plaintiffs affixed a notice of copyright to the statue prior to the unveiling.² Fearing they would encounter difficulties if the Army became aware of their copyright claim, they purposely placed the notice where it would not be readily detectable. They put it on the pack resting on the soldier's back where it is twenty two or twenty three feet above the ground and is entirely invisible to anyone standing on the ground. Subsequently, some three months after the unveiling, plaintiffs registered their claim of copyright in "The Ultimate Weapon."

Defendants' motion for summary judgment raised three defenses to plaintiffs' copyright claim. First, they asserted that "The Ultimate Weapon" was a "publication of the United States Government" within the meaning of 17 U.S.C. ? 8, and therefore not copyrightable. It was also urged that the notice of copyright was inadequate, see 17 U.S.C. ?? 10, 19; 37 C.F.R. ? 202(a) (2), and it was further claimed that any and all copyright interest belongs to the U. S. Government because the statue was constructed during the course of plaintiffs' employment by the U. S. Army. 17 U.S.C. ? 26. The district court held the statue was not a "publication of the United States Government" but granted defendants' motion based upon the assertions that the copyright notice was inaccessible to view and hence inadequate, and that if there were a valid copyright it inures to the benefit of plaintiffs' employer, the United States Army.

We agree that if any copyright interest exists, it is the exclusive property of the United States Government, and on this basis we affirm the judgment below. Accordingly, we do not have to decide whether the district court was correct in ruling that the statue was not a "Government publication" and that the notice of copyright was inadequate.³

"Authors and proprietors", according to ? 9 of the Copyright Law, 17 U.S.C. ? 9, are entitled to the copyright of a work of art. By ? 26, 17 U.S.C. ? 26, an "author" is further defined to include "an employer in the case of works made for hire." This is not to say, however, as the literal language of the statute might imply, that an employer and an employee are precluded as a matter of law from agreeing that the copyright in the resulting work shall vest in the employee. See, generally, Nimmer, Copyright ? 62.1 (1968). Rather, ? 26 merely creates a rebuttable presumption of copyright in the employer, a presumption which can be overcome by evidence of a contrary agreement between the parties. Id., Brattleboro Publishing Co. v. Winmill Publishing Corp., 369 F.2d 565, 567-568 (2 Cir. 1966) (Kaufman, J.); Yardley v. Houghton Mifflin Co., 108 F.2d 28 (2 Cir. 1939), cert. denied, 309 U.S. 686, 60 S.Ct. 891, 84 L.Ed. 1029 (1940) (presumption rests upon presumed intention of parties); Kinelow Publishing Co. v. Photography in Business, Inc., 270 F. Supp. 851 (SDNY 1967). But see in Brattleboro, supra at 569 (concurring opinion, Lumbard, Ch. J.) (no rebuttable presumption to be overcome ?€” intention of parties controlling).

In the case at bar, the bare allegations by plaintiffs of an agreement contrary to the statutory presumption, without more, do not negate the presumption and do not create a triable issue of fact as to the intention of the parties. See supra at p. 498.

Even if it be assumed that the relationship here was an employment relationship, it is only when "an employee creates something in connection with his duties under his employment, that the thing created is the property of the employer and any copyright obtained thereon by the employee is deemed held in trust for the employer," Sawyer v. Crowell Pub. Co., 46 F.Supp. 471, 473 (SDNY 1942), aff'd 142 F.2d 497 (2 Cir.), cert. denied, 323 U.S. 735, 65 S.Ct. 74, 89 L.Ed. 589 (1944). Also see Brown v. Moll? Co., 20 F.Supp. 135, 136 (SDNY 1937), citing Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 23 S.Ct. 298, 47 L.Ed. 460 (1903). We must consider whether this doctrine applies to this case.

The essential factor in determining whether an employee created his work of art within the scope of his employment as part of his employment duties is whether the employer possessed the right to direct and to supervise the manner in which the work was being performed. Nimmer, Copyright ? 62.2 (1968); Donaldson Publishing Co. v. Bregman, Vocco & Conn, Inc., 375 F.2d 639 (2 Cir. 1967). Other pertinent, but non-essential, considerations, are those indicating at whose insistence, expense, time and facilities the work was created. See Sawyer v. Crowell Pub. Co., supra, 46 F.Supp. at 473, but see Public Affairs Associates, Inc. v. Rickover, 109 U.S. App.D.C. 128, 284 F.2d 262 (1960), vacated per curiam on other grounds, 369 U.S. 111, 82 S.Ct. 580, 7 L.Ed.2d 604 (1962), on remand, 268 F.Supp. 444 (D.D.C.1967) (held use of government duplicating machine, government paper and government secretary not determinative). Additionally, the nature and amount of compensation or the absence of any payment received by the employee for his work may be considered; but when compared with the above factors it is of minor relevance. See Nimmer, supra at ? 62.2.

Under the...