TD Bank NA v. Vernon Hill, II

PRECEDENTIAL

UNITED STATES COURT OF APPEALS

FOR THE THIRD CIRCUIT

_______________

No. 16-2897

_______________

TD BANK N.A.

v.

VERNON W. HILL, II,

Appellant

_______________

On Appeal from the United States District Court

for the District of New Jersey

(D.C. No. 1-12-cv-07188)

Honorable Robert B. Kugler, U.S. District Judge

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Argued: October 22, 2018

Before: KRAUSE, COWEN, and FUENTES, Circuit Judges

(Opinion Filed: July 1, 2019)

Susan M. Leming, Esq.

Michael J. Miles, Esq.

William M. Tambussi, Esq. [Argued]

Brown & Connery

360 Haddon Avenue

P.O. Box 539

Westmont, NJ 08108

Lori E. Lesser, Esq.

Simpson Thacher & Bartlett

425 Lexington Avenue

New York, NY 10017

Counsel for Plaintiff-Appellee T.D. Bank N.A.

Louis M. Barbone, Esq.

Edwin J. Jacobs, Jr., Esq.

Michael F. Myers, Esq.

Jacobs & Barbone

1125 Pacific Avenue

Atlantic City, NJ 08401

Howard S. Hogan, Esq. [Argued]

Gibson Dunn & Crutcher

1050 Connecticut Avenue, N.W.

9th Floor

Washington, DC 20036

Counsel for Defendant-Appellant Vernon W. Hill, II

2

Phillip R. Malone, Esq.

Ashwin Aravind

Dylan I. Scher

Stanford Law School

Juelsgaard Intellectual Property and Innovation Clinic, Mills

Legal Clinic

559 Nathan Abbott Way

Stanford, CA 94305

Jeffery T. Pearlman, Esq.

University of Southern California

Gould School of Law

699 Exposition Boulevard

Los Angeles, CA 90089

Counsel for Amici Intellectual Property Law

Professors

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OPINION OF THE COURT

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KRAUSE, Circuit Judge.

This case marks the latest chapter in the bitter feud

between Commerce Bank, which has since merged with TD

Bank, and its former CEO, Vernon W. Hill, II. See generally

Hill v. TD Bank, NA, 586 F. App’x 874 (3d Cir. 2014);

Commerce Bancorp, LLC v. Hill, No. 08-cv-5628, 2010 WL

3

2545166 (D.N.J. June 18, 2010). Beset by acrimony, TD

Bank filed this copyright lawsuit against Hill, alleging that a

portion of his 2012 book infringes a neglected manuscript that

Hill co-authored while CEO of Commerce Bank. In

enjoining Hill from publishing or marketing his book, the

District Court concluded that TD Bank owned the copyright

under a letter agreement and that Hill’s book irreparably

violated the Bank’s “right to not use the copyright.” App. 9.

In this denouement, we resolve certain open questions in our

Circuit concerning employees’ rights to their artistic creations

and the proper exercise of equitable discretion.

We conclude that, although the agreement between the

parties did not vest initial ownership of the copyright in the

Bank by purporting to designate the manuscript a work “for

hire,” it did transfer any ownership interest Hill possessed to

TD Bank. As a result, Hill’s co-ownership defense, like his

other defenses, fails. As for the imposition of injunctive

relief, however, we cannot accept the District Court’s

sweeping conclusions, which would justify the issuance of an

injunction in every copyright case. Instead of employing

“categorical rule[s]” that would resolve the propriety of

injunctive relief “in a broad swath of cases,” courts should

issue injunctive relief only if the moving party makes a

sufficient showing that such relief is warranted under the

particular circumstances of that case. eBay Inc. v.

MercExchange, LLC, 547 U.S. 388, 393–94 (2006).

Accordingly, we will vacate the District Court’s permanent

injunction.

4

I. Background1

Described by American Banker as “the closest thing

that the staid banking industry has to a rock star,” App. 1157,

Vernon W. Hill, II headed Commerce Bank from its launch as

a single “store” in 1973 until June 2007, a few months before

TD Bank acquired it for approximately $8.5 billion. Hill built

Commerce Bank in the highly saturated commercial banking

industry by emphasizing customer loyalty through initiatives

such as extended hours, quick account openings, and free

perks at branches. His success also brought him personal

acclaim, including articles in The Wall Street Journal,

American Banker, The Guardian, The Philadelphia Inquirer,

and The Daily Telegraph.

As CEO of Commerce Bank, Hill reported to the

Board of Directors and handled the day-to-day management

of the Bank’s affairs, including reviewing the Bank’s

finances, visiting its stores, and handling real estate and

insurance matters. Under his employment agreement with

Commerce Bank, Hill had “primary responsibility for all

operations of Commerce and its subsidiaries . . . , provided

that such duties are consistent with his present duties,” and

agreed to “devote his full time and best efforts to the business

and affairs of Commerce and its subsidiaries.” App. 803.

1

We recount the facts largely based on the parties’

statements of undisputed facts with occasional references

directly to the testimony and documentary evidence cited

therein. For facts bearing on summary judgment, we view the

record in the light most favorable to Hill, as the losing party.

See Big Apple BMW, Inc. v. BMW of N. Am., Inc., 974 F.2d

1358, 1363 (3d Cir. 1992).

5

Notwithstanding this commitment, however, the Agreement

allowed Hill to pursue “outside activities,” which the

Agreement did not define. App. 803.

In 2006, Hill decided to write a book about his

business philosophy and more than 30-year tenure at the

Bank. Seeing this as a marketing opportunity, Commerce

Bank supported the endeavor by hiring a business book

author, Robert Andelman, to collaborate with Hill in drafting

the manuscript. Hill exchanged some emails about the

project during weekdays but primarily worked on the project

during evenings and weekends. Other Commerce Bank

employees sometimes assisted, for example, by answering

Andelman’s inquiries and providing feedback about the

manuscript. The final manuscript, completed in 2007,

recounts Commerce Bank’s history and business model from

Hill’s perspective. Resembling both an autobiography and a

marketing tool, the 2007 manuscript included both a personal

dedication to Hill’s wife and “the entire Commerce team,”

App. 834, and a $20 gift certificate to open an account at

Commerce Bank.

Commerce Bank spearheaded the publication efforts

by entering into an agreement with Portfolio, a division of

Penguin Books. In this publishing agreement, Commerce

Bank, which is defined as the “Author,” represented and

warranted that it was the exclusive owner of all rights

conveyed in the manuscript:

The Author [i.e., Commerce Bank] hereby

represents and warrants . . . that Vernon Hill is

the sole author of the Work; that the Work is or

will be Vernon Hill’s next book length

work . . . ; that the Author is the sole and

6

exclusive owner of all rights granted to the

Publisher in this Agreement and has not

assigned, pledged or otherwise encumbered the

same; . . . that the Author has full power to

enter into this Agreement and to make the

grants herein contained.

App. 1142. For his part, Vernon Hill signed a letter to

Portfolio that referred to an attached copy of the publishing

agreement and provided:

I hereby unconditionally guarantee, promise

and agree with the Publisher, its successors and

assigns that the Author [i.e., Commerce Bank]

will, in all respects, faithfully perform and

fulfill all obligations of the Agreement on its

part to be performed and fulfilled at the time

and in the manner therein provided. I also

unconditionally guarantee that the Work is a

work made for hire within the meaning of the

United States Copyright Law and that the

Author is the owner of copyright in the Work

and has full power and authority to enter into

the Agreement.

App. 1139. Both this letter agreement and the publishing

agreement contain New York choice-of-law provisions.

But the best laid schemes of mice and men often go

awry: The relationship between Hill and Commerce Bank

soured, culminating in Hill’s termination and TD Bank’s

acquisition of Commerce Bank. See Hill, 586 F. App’x at

877. As a result, the 2007 manuscript was never published,

7

and by April 2008, Commerce Bank terminated the

publishing agreement with Portfolio.

As the years progressed, however, Hill sought to make

use of certain portions of the manuscript. By July 2010, Hill

had debuted his next commercial banking venture, Metro

Bank UK. The bank’s launch, the first in Great Britain for

over a century, garnered significant press coverage on both

sides of the Atlantic. Capitalizing on this comeback, Hill co-

authored another book with Andelman—this one describing

Hill’s experiences founding Metro Bank UK, the British

banking system, and Hill’s pet insurance company, Petplan

USA. The book, entitled FANS! Not Customers: How to

Create Growth Companies in a No-Growth World, became

available in November 2012 through online booksellers such

as Amazon and barnesandnoble.com. Hill also publicized the

book’s launch through interviews, including with Jim Cramer,

the host of Mad Money on CNBC, and with a columnist for

the Philadelphia Inquirer.

The plot thickened when this new endeavor came to

the attention of TD Bank. Having shelved the 2007

manuscript for years, the Bank suddenly registered it with the

Copyright Office and sent take-down demands to twenty

retailers alleging that Hill’s book infringed its copyright.

Shortly thereafter, it filed suit in the District of New Jersey

for copyright infringement.

As the litigation progressed, discovery revealed that

TD Bank had little actually at stake: TD Bank admitted that,

at most, 16% of the book infringed the 2007 manuscript, and

that it has never published the 2007 manuscript or any

competing work and has no interest in doing so.

8

Nonetheless, in its summary judgment opinion, the

District Court concluded that, because the letter agreement

“deem[ed] the work to be a work made for hire,” it was in

fact a work for hire, vesting the copyright in the 2007

manuscript with Commerce Bank as Hill’s employer. App.

35 n.10. Rejecting Hill’s infringement defenses, the District

Court determined that Hill had copied expressive content that

was not unprotectable under the merger and scène-à-faire

doctrines. And Hill’s copying, the District Court held, was

not fair use because Hill did not repurpose the copied portion;

the original manuscript was unpublished; and Hill’s

infringement would likely result in “some impairment” to the

market for the 2007 manuscript “should TD Bank ever choose

to publish [it].” App. 48 (emphasis omitted). But the District

Court declined to issue an injunction, explaining that TD

Bank had failed to show a likelihood of continued

infringement and had not addressed at all the adequacy of

legal remedies or the balance of hardships.

Hill faced his peripeteia in this litigation a year later.

Confronted with evidence of Hill’s continued promotion of

the 2012 book and distribution of complimentary copies at a

local chamber of commerce event, the District Court enjoined

Hill from “publish[ing], market[ing], distribut[ing] or

sell[ing]” the 2012 book. App. 4. This conduct, the District

Court found, irreparably harmed TD Bank by depriving it of

the “right to not use the copyright.” App. 9. Hill timely

appealed.

II. Jurisdiction

There is no final judgment in this case because the

District Court has stayed TD Bank’s request for infringer’s

profits under 17 U.S.C. § 504(b) pending the outcome of this

9

appeal. See Marshak v. Treadwell, 240 F.3d 184, 190–92 (3d

Cir. 2001); 28 U.S.C. § 1291. Thus, we have jurisdiction

only over the District Court’s “grant[]” of a permanent

injunction under 28 U.S.C. § 1292(a)(1).2 See Marshak, 240

F.3d at 190. Before reaching the merits of Hill’s appeal, we

must first address TD Bank’s contention that this appeal is

moot and that we lack jurisdiction to consider the District

Court’s summary judgment ruling, even to the extent that it

served as the necessary predicate for the permanent

injunction. We reject both arguments.

A. Mootness

TD Bank first contends that this appeal is moot

because Hill released a revised version of the book about a

month after the District Court issued the injunction and, as

TD Bank posits in a footnote to its appellate brief, “the July 7,

2016 Kindle version [of Hill’s book] . . . does not infringe on

the 2007 manuscript.”3 Appellee’s Br. 3 n.1.

2

The District Court had jurisdiction over this action

under 28 U.S.C. §§ 1331, 1338(a).

3

TD Bank’s and Hill’s motions to supplement the

record on appeal are granted insofar as they pertain to events

that transpired since the District Court’s decision. See Clark

v. K-Mart Corp., 979 F.2d 965, 967 (3d Cir. 1992)

(limitations on supplementing the record do not preclude

appellate court from considering “unrebutted” evidence to

determine whether an appeal is moot); see also McKay v.

Federspiel, 823 F.3d 862, 868 (6th Cir. 2016) (appellate court

may consider after-acquired evidence pertaining to the merits

10

Compliance with an injunction can moot an appeal if

there is no “reasonable expectation” that the injunction will

govern the enjoined party’s future conduct or otherwise injure

him. Bell v. Wolfish, 441 U.S. 520, 543 n.25 (1979); see

Harris v. City of Philadelphia, 47 F.3d 1311, 1326 (3d Cir.

1995); 13B Charles Alan Wright et al., Federal Practice &

Procedure § 3533.2.2 (3d ed. 2018). Yet TD Bank’s footnote

conceding that the July 7, 2016 Kindle version does not

infringe the 2007 manuscript hardly constitutes the broad

“unconditional and irrevocable” covenant not to sue that is

needed to moot a case. See Already, LLC v. Nike, Inc., 568

U.S. 85, 93 (2013) (applying the voluntary-cessation

doctrine). Even if we accept the footnote as legally binding,

it applies only to “the July 7, 2016 Kindle version.”

Appellee’s Br. 3 n.1. In fact, at oral argument, TD Bank’s

counsel refused to concede that any other version of the

revised book complied with the injunction, demanding twice

that Hill first “certif[y]” that he will not publish, distribute, or

otherwise market the 2012 book (which sounds much like a

consent decree). Third Cir. Arg. Recording at 57:48–58:06,

58:38–58:50.4 The record also reflects that the Bank sent two

letters asserting that the rewritten book may still contain

copyrighted content; the latter letter threatened to bring

contempt sanctions against Hill. Hill, meanwhile, continues

to profess his intention “to share the earlier book.”

Appellant’s Reply Br. 3.

of a claim “for the sake of thoroughness” if it would “not

change the outcome” of the appeal (citation omitted)).

4

The recording of oral argument can be found at

https://www2.ca3.uscourts.gov/oralargument/audio/16-

2897TDBankNAvVernonWHill.mp3.

11

TD Bank’s other arguments on appeal are inconsistent

with its assertion that this case is moot. For instance, the

Bank urges us not to vacate the permanent injunction if we

conclude that this appeal is moot, see United States v.

Munsingwear, Inc., 340 U.S. 36, 39 (1950), because doing so

would “permit the infringing 2012 Book to become

available.” Appellee’s Br. 3 n.3. That is to say, TD Bank

does believe the injunction meaningfully constrains Hill’s

future conduct. And, in the same brief as its footnote

concession, TD Bank accuses Hill of “continu[ing] to infringe

TD Bank’s copyright in the 2007 Manuscript” even “after the

entry of the PI order.” Appellee’s Br. 24 n.12. TD Bank’s

motion to supplement the record reiterates these allegations,

citing material that supposedly “evidences the District Court’s

prescience in finding that Mr. Hill was likely to continue

infringing TD Bank’s copyright.” Appellee’s Mot. Suppl. R.

at 8 (Apr. 25, 2018).

TD Bank cannot have it both ways: Hill cannot be

both a continuing infringer and fully compliant with the

permanent injunction. As there is at least a reasonable

likelihood that the injunction controls Hill’s future conduct,

this appeal is not moot. See Bell, 441 U.S. at 543 n.25.

B. Scope of the Appeal

TD Bank next contends that this Court lacks

jurisdiction to consider the merits of the non-appealable

summary judgment order—even to the extent that the

permanent injunction order rests on its determination of

ownership and liability—because Hill did not separately

identify the summary judgment order in his notice of appeal.

We are unpersuaded.

12

Our interlocutory jurisdiction under § 1292(a)(1)

encompasses matters “inextricably linked” with the issuance

of a permanent injunction. Marshak, 240 F.3d at 190;

Kershner v. Mazurkiewicz, 670 F.2d 440, 449 (3d Cir. 1982)

(en banc). Applying this standard, we have previously

reviewed summary judgment orders that made the

determination of liability necessary for the issuance of a

permanent injunction. See, e.g., Doeblers’ Pa. Hybrids, Inc.

v. Doebler, 442 F.3d 812, 819 (3d Cir. 2006); Cureton v.

NCAA, 198 F.3d 107, 113 (3d Cir. 1999). Although we

acquire jurisdiction only over orders specified or “fairly

inferred” in the notice of appeal, we construe such notices

liberally. Wiest v. Lynch, 710 F.3d 121, 127 (3d Cir. 2013)

(citation omitted). To that end, we have held that we may

review an unspecified order if (1) it is connected to those

specified in the notice of appeal, (2) the intent to appeal the

unspecified order is “apparent,” and (3) the appellee is not

prejudiced. Id. at 127; Polonski v. Trump Taj Mahal Assocs.,

137 F.3d 139, 144 (3d Cir. 1998).

Hill did not separately identify the summary judgment

order in his notice of appeal. Insofar as this was error, it is

understandable because Hill cannot directly appeal the

summary judgment order under § 1292(a)(1). At a minimum,

the summary judgment order falls within those unspecified

orders that we may consider on appeal. See Wiest, 710 F.3d

at 127. The summary judgment order established two

fundamental prerequisites for issuing a copyright

injunction—namely, TD Bank’s ownership of the copyright

and Hill’s liability for infringement. The District Court also

made repeated references in its permanent injunction opinion

to its summary judgment decision, including incorporating by

reference that order’s rendition of the undisputed facts. Nor

13

can TD Bank seriously claim that the failure to specify the

summary judgment order prejudiced it, as the record is

complete and the Bank had notice of—and fully briefed—the

ownership and liability issues.

Our conclusion is buttressed by the Second Circuit’s

decision in Shakhnes v. Berlin, 689 F.3d 244 (2d Cir. 2012),

which held that the appellate court had jurisdiction to review

the district court’s grant of partial summary judgment, even

though it was not specifically listed in the notice of appeal

from a permanent injunction. Id. at 250 n.3. The summary

judgment decision, the Second Circuit stressed, was “the

principal legal basis” for issuing the permanent injunction and

“[a]ny doubt” should have been dispelled by the injunction

opinion’s reference to the prior order. Id. We concur and

conclude that our jurisdiction extends to the District Court’s

summary judgment decision, inasmuch as that decision

resolved ownership of the copyright and Hill’s liability.

III. Discussion

We review the District Court’s grant of summary

judgment de novo, Brownstein v. Lindsay, 742 F.3d 55, 64

(3d Cir. 2014), and its grant of a permanent injunction for

abuse of discretion, Doeblers’ Pa. Hybrids, 442 F.3d at 819.

A district court abuses its discretion if its decision rests on an

incorrect legal standard, a clearly erroneous factual finding,

or a misapplication of the law to the facts. Id. We may

affirm on any basis supported by the record, even if it departs

from the District Court’s rationale. Erie Telecomms., Inc. v.

City of Erie, 853 F.2d 1084, 1089 & n.10 (3d Cir. 1988).

To prevail at summary judgment, TD Bank needed to

establish that: (1) it possessed exclusive rights in the 2007

14

manuscript, and (2) Hill’s 2012 book copied protected

expression without privilege. Feist Publ’ns, Inc. v. Rural Tel.

Serv. Co., 499 U.S. 340, 361 (1991). The Bank then needed

to show that the District Court should exercise its discretion

to award permanent injunctive relief. eBay, 547 U.S. at 391.

We address each requirement in turn.5

A. Exclusive Rights in the 2007 Manuscript

TD Bank and Hill dispute whether the Bank

exclusively owns the copyright in the 2007 manuscript. Hill

claims that his contributions to the work make him at least a

5

Although we ultimately vacate the injunction under

eBay’s four-factor test, we decline to merely assume that TD

Bank exclusively owns the 2007 manuscript and that Hill’s

liability defenses fail. Without resolving the issue here, we

note that several circuits have held that a plaintiff must

demonstrate ownership of exclusive rights to establish

“standing,” without explaining whether they mean this

requirement is jurisdictional. See Urbont v. Sony Music

Entm’t, 831 F.3d 80, 88 n.6 (2d Cir. 2016); Righthaven LLC

v. Hoehn, 716 F.3d 1166, 1171 (9th Cir. 2013); see also

Barefoot Architect, Inc. v. Bunge, 632 F.3d 822, 827 (3d Cir.

2011) (recounting that the district court dismissed the

complaint for lack of standing because the plaintiff did not

own any rights in the work). The Federal Circuit views the

concomitant ownership requirement under the Patent Act as

jurisdictional. See, e.g., Fieldturf, Inc. v. Sw. Recreational

Indus., Inc., 357 F.3d 1266, 1268 (Fed. Cir. 2004). Resolving

the ownership dispute on this appeal will put to rest any

jurisdictional concerns and, along with considering Hill’s

liability defenses, will help advance this litigation on remand.

15

joint author, in which case TD Bank could not sue him for

copyright infringement. See Brownstein v. Lindsay, 742 F.3d

55, 68 (3d Cir. 2014); Cortner v. Israel, 732 F.2d 267, 271

(2d Cir. 1984). TD Bank does not dispute that Hill made an

artistic contribution sufficient to secure authorial rights but

contends that Commerce Bank exclusively owned the work

through the letter agreement that Hill signed or because it

satisfied the traditional agency criteria for determining

whether a work falls within the scope of employment.

Although the meaning of authorship has bedeviled

philosophers and writers for centuries, see, e.g., Immanuel

Kant, Critique of Judgment 174–88 (Werner S. Pluhar trans.,

1987) (1790), we can resolve it here based on the Copyright

Act and controlling precedent. Hill’s co-ownership defense

founders if: (1) the Copyright Act’s statute of limitations bars

the defense, (2) TD Bank exclusively owns the manuscript

under the letter agreement, or (3) Hill created it within the

scope of his employment under agency-law principles. We

consider these issues seriatim.

1. The Copyright Act’s Three-Year Statute of

Limitations Does Not Apply to Hill’s Co-

Ownership Defense

Before addressing the merits of Hill’s co-ownership

defense, we must address TD Bank’s argument that the

Copyright Act’s three-year statute of limitations prevents us

from even considering it. Typically, a statute of limitations

aims to “keep stale litigation out of the courts,” not to bar the

“consideration of a particular defense” in timely litigation.

United States v. W. Pac. R.R. Co., 352 U.S. 59, 72 (1956).

Hence, the Copyright Act’s three-year statute of limitations

does not preclude a defendant in an infringement action from

16

raising an ownership defense.6 Pritchett v. Pound, 473 F.3d

217, 220 (5th Cir. 2006); Burne Hogarth v. Edgar Rice

Burroughs, Inc., 342 F.3d 149, 163–64 (2d Cir. 2003); 3

Melville B. Nimmer & David Nimmer, Nimmer on Copyright

§ 12.05 (2018) (hereinafter Nimmer on Copyright) (observing

that the Copyright Act’s statute of limitations “has no

purchase when a plaintiff attempts to invoke [it] . . . to defeat

a defendant’s position of being the pertinent author,” because

it operates only as a defense against claims or counterclaims).

This rule holds true even if the defendant also brings an

untimely ownership counterclaim. Burne Hogarth, 342 F.3d

at 164. Thus, irrespective of whether Hill’s co-ownership

counterclaim is time-barred (a question we lack jurisdiction to

reach), the Copyright Act’s statute of limitations does not

prevent Hill from raising co-ownership as a defense to TD

Bank’s infringement lawsuit.

2. The Letter Agreement Granted TD Bank

Exclusive Ownership of the 2007

Manuscript

The District Court correctly determined that TD Bank

exclusively owns the rights to the 2007 manuscript under the

letter agreement, but it did so based on a mistaken belief that

the letter agreement vested original ownership in the Bank by

“deem[ing]” the work to be a work “for hire.” App. 35 n.10.

6

Notably, the Lanham Act does preclude a defendant

from challenging, among other issues, the ownership of a

registered trademark after five years if the registered owner

complies with certain formalities; the Act calls these marks

“incontestable.” 15 U.S.C. §§ 1065, 1115(b). The Copyright

Act contains no analogous provision.

17

To explain why we nonetheless affirm, we must tease out the

distinction between the work-for-hire and assignment

doctrines, explaining how those doctrines relate to the terms

of the agreement here.

Work-for-Hire Doctrine. The 1976 Copyright Act’s

definition of a “work made for hire” reflects a “carefully

worked out compromise” between the artistic guilds, whose

members disfavored the work-for-hire doctrine because of

their lesser bargaining power, and the major publishers,

studios, and record labels, which supported a broader work-

for-hire doctrine to facilitate the acquisition of rights. Cmty.

for Creative Non-Violence (“CCNV”) v. Reid, 490 U.S. 730,

745–48 & nn.11–14 (1989) (citation omitted). The Act

defines a work for hire as either (1) a work created by an

employee within the scope of his employment, or (2) a

“specially ordered or commissioned” work if it falls within

nine enumerated categories of works and the parties agree in

writing to designate it as a work for hire. 17 U.S.C. § 101.

The definition thus establishes “two mutually exclusive

means” by which a work can attain for-hire status: the first

for employees, and the second for independent contractors.

CCNV, 490 U.S. at 742–43.

The 2007 manuscript does not meet the second

definition because Hill did not serve as an independent

contractor and the manuscript does not fall within any of the

nine enumerated categories of works. Accordingly, the

manuscript could only receive work-for-hire treatment if it

satisfied the first definition—that is, if Hill, while an

employee of TD Bank, created it within the scope of his

employment. To determine whether a work falls within the

scope of employment, courts should apply general principles

of agency law. Id. at 738, 740–41.

18

In its summary judgment decision, the District Court

recited these principles correctly but nonetheless accepted TD

Bank’s argument that the letter agreement itself vested

exclusive ownership with the Bank, stating that “[l]anguage

in a written instrument . . . that deems the work to be a work

made for hire within the meaning of the Copyright Act may

. . . vest ownership exclusively with an employer.” App. 35

n.10.

That was error. It appears the District Court confused

an original vesting of ownership under the work-for-hire

doctrine with a transfer of ownership rights via an

assignment. By its terms, the Copyright Act recognizes only

nine specified categories of works by independent contractors

that can be deemed “for hire” through a signed writing. 17

U.S.C. § 101(2). For an employee’s work to receive for-hire

treatment, by contrast, the work must actually come within

the “scope of his or her employment.” Id. § 101(1). Certain

writings, such as negotiated employment agreements, may

sometimes help clarify the scope of employment, when

considered under general agency-law principles. See U.S.

Auto Parts Network, Inc. v. Parts Geek, LLC, 692 F.3d 1009,

1018 (9th Cir. 2012); but cf. Garcetti v. Ceballos, 547 U.S.

410, 424–25 (2006) (observing that “[f]ormal job descriptions

often bear little resemblance” to an employee’s actual duties,

and the mere inclusion of a task in a job description “is

neither necessary nor sufficient to demonstrate that

conducting the task is within the scope of the employee’s

professional duties”). But a bare statement that a particular

work is “for hire,” says nothing about the scope of an

individual’s employment and cannot suffice on its own. Had

Congress intended to permit parties to “deem” works by

employees as “for hire,” it would have so specified in

19

subsection 101(1), just as it did for independent contractors in

subsection 101(2). Id. But it did not. And where, as here,

“Congress has shown that it knows how to [adopt a measure]

in express terms,” it is “particularly inappropriate” to extend

that policy to another subsection lacking such language.

Kimbrough v. United States, 552 U.S. 85, 103 (2007);

Barnhart v. Sigmon Coal Co., 534 U.S. 438, 452 (2002).

Whether a writing operates to render a work “for hire”

or to assign the author’s interest may seem like a distinction

without a difference. But that distinction, though technical,

does carry some practical consequences. If a work qualifies

as a work for hire, the Act treats the employer or principal as

the author, and the copyright presumptively vests in the

principal unless the parties execute an agreement to the

contrary. 17 U.S.C. § 201(b). If a work does not satisfy the

statutory definition, the author can still assign it but retains

certain non-waivable rights to cancel the transfer after 35–40

years, id. § 203(a)(3), and—depending on the type of work—

waivable moral rights in the work’s proper attribution and

integrity, id. § 106A(a). The creator of a work for hire has

neither, see id. §§ 101, 106A(a), 203(a), so allowing parties to

deem a work as “for hire” without fulfilling the statutory

requirements would undercut the Copyright Act’s protection

of those termination and moral rights and would negate the

difference between a work for hire and an assigned work.7

That difference underscores why an employee’s work created

7

A work’s status also determines the duration of the

copyright: A work-for-hire copyright has a fixed term of 95–

120 years, while an ordinary copyright generally persists for

the life of the author plus 70 years. 17 U.S.C. §§ 302(b), (c).

20

outside the scope of employment cannot simply be

“deem[ed]” for hire.

Our view accords with those of leading copyright

scholars and other Courts of Appeals. The Nimmer treatise,

for instance, observes that “an agreement . . . whereby works

prepared by the employee that are not prepared within the

scope of employment are nevertheless deemed to be ‘works

made for hire’ will not in itself convert such works into the

‘for hire’ category.” 1 Nimmer on Copyright

§ 5.03[B][1][b][ii]; accord Goldstein on Copyright § 4.3 (3d

ed. 2018) (noting that, unless the work satisfies the

“objective” criteria of the work-for-hire doctrine, “A’s

express agreement that the work prepared by A will constitute

a work made for hire by B will not suffice to make the work

one for hire, nor to make B the author”); F. Jay Dougherty,

Not A Spike Lee Joint? Issues in the Authorship of Motion

Pictures Under U.S. Copyright Law, 49 UCLA L. Rev. 225,

317–18 (2001) (“Parties cannot simply agree that works not

within the scope of employment are works made for hire with

the employer deemed the author.”). Our sister circuits

likewise agree that, although parties to an employment

relationship can agree to alter the statutory presumption that a

work-for-hire copyright vests with the employer, they cannot

by contract “vary the work’s status as a work made for hire.”

Baltimore Orioles, Inc. v. Major League Baseball Players

Ass’n, 805 F.2d 663, 670 (7th Cir. 1986) (citing M. Nimmer,

Nimmer on Copyright § 5.03[D] (1985)); see Saenger Org.,

Inc. v. Nationwide Ins. Licensing Assocs., Inc., 119 F.3d 55,

62 (1st Cir. 1997); Marvel Characters, Inc. v. Simon, 310

F.3d 280, 291 (2d Cir. 2002).

For these reasons, the District Court was mistaken in

concluding that the letter agreement vested ownership in the

21

Bank by deeming the manuscript a work for hire. But

although it affixed the wrong label, the Court’s determination

of ownership was correct because the agreement operated as

an assignment—the issue to which we now turn.

Assignment. The validity and import of an assignment

generally is governed by state contract law. See Roger Miller

Music, Inc. v. Sony/ATV Publ’g, LLC, 477 F.3d 383, 392 (6th

Cir. 2007); Walthal v. Rusk, 172 F.3d 481, 485 (7th Cir.

1999). The Copyright Act merely adds that an assignment

must be memorialized by an “instrument of conveyance, or a

note or memorandum of the transfer, . . . in writing and

signed by the owner of the rights conveyed or such owner’s

duly authorized agent.” 17 U.S.C. § 204(a); see Barefoot

Architect, Inc. v. Bunge, 632 F.3d 822, 827 (3d Cir. 2011).

Here, the parties agree that New York law applies

under the letter agreement’s choice-of-law clause. Under that

state’s law, courts construe assignments using the “same rules

which obtain in the interpretation of other contracts,” Crook

v. Rindskopf, 12 N.E. 174, 177 (N.Y. 1887), which include

giving effect to the parties’ intent as principally expressed

through the words of the agreement itself, Greenfield v.

Philles Records, Inc., 780 N.E.2d 166, 170 (N.Y. 2002).

Resort to extrinsic evidence is permitted only if ambiguity

exists within the four corners of the agreement. Brad H. v.

City of New York, 951 N.E.2d 743, 746 (N.Y. 2011). If it

does not, a court should construe the agreement to “carry out

the plain purpose and object” of the contract and to give

effect to the parties’ “over-all intention.” Kass v. Kass, 696

N.E.2d 174, 181 (N.Y. 1998) (citation omitted). The

agreement need not comply with any formalities or invoke

particular language to constitute an assignment; any writing

will suffice as long as “the assignor has, in some fashion,

22

manifested an intention to make a present transfer of his

rights to the assignee.” Deutsche Bank Nat’l Tr. Co. v.

Romano, 147 A.D.3d 1021, 1023 (N.Y. App. Div. 2007)

(citation and emphasis omitted); Whalen v. Gerzof, 206

A.D.2d 688, 690 (N.Y. App. Div. 1994).

The letter agreement evinces that intention in both of

its principal covenants. In the first, Hill acknowledged the

publishing agreement, a copy of which was attached to the

letter, and “guarantee[d], promise[d] and agree[d] with the

Publisher . . . that the Author [i.e., Commerce Bank] will, in

all respects, faithfully perform and fulfill all obligations of the

Agreement.” App. 1139. That publishing agreement

provided that “the Author [i.e., Commerce Bank] is the sole

and exclusive owner of all rights granted to the Publisher in

this Agreement and has not assigned, pledged or otherwise

encumbered the same; . . . that the Author has full power to

enter into this Agreement and to make the grants herein

contained.” App. 1142. In the second covenant, Hill

“unconditionally guarantee[d] that the Work is a work made

for hire within the meaning of the United States Copyright

Law and that the Author is the owner of copyright in the

Work and has full power and authority to enter into the

Agreement.” App. 1139.

Hill makes much of the letter’s use of the word

“guarantee,” for a guarantee typically describes an agreement

to pay a principal obligor’s debt upon that party’s default; the

guarantor does not become a party to the underlying

agreement and assumes only secondary liability. Midland

Steel Warehouse Corp. v. Godinger Silver Art Ltd., 276

A.D.2d 341, 343 (N.Y. App. Div. 2000). But the mere use of

the word “guarantee” in a contract “does not necessarily

establish the nature of the obligation,” because the term, when

23

read in context, may not establish a guarantor-guarantee

relationship. Brewster Transit Mix Corp. v. McLean, 169

A.D.2d 1036, 1037 (N.Y. App. Div. 1991). In Brewster, for

example, the New York Appellate Division concluded that a

defendant assumed primary liability under an agreement

providing that the party, both individually and as an officer of

a corporation, “guarantee[d] to pay within the established

terms for all purchases charged to my account.” Id. at 1036.

Although the agreement used the word “guarantee,” the court

concluded that it in fact reflected the defendant’s assumption

of primary liability as a co-obligor. Id. at 1037; see also New

York Plumber’s Specialties Co. v. 91 E. End Corp., 366

N.E.2d 866, 867 (N.Y. 1977) (concluding that an agreement

under which the “undersigned . . . guarantee[d] the full and

prompt payment to you, of all indebtedness due to you” was

not a guarantee despite the use of that term).

Read as a whole, the terms of the letter agreement do

not manifest an intent to assume secondary liability.

Although Hill’s commitment “guarantee[ing], promis[ing]

and agree[ing]” that Commerce Bank would fulfill its

obligations could by itself suggest a guarantee, Hill separately

“guarantee[d]” that the manuscript “is a work made for hire,”

that Commerce Bank “is the owner of copyright,” and that the

Bank “has full power to enter into” the publishing agreement.

App. 1139. Nothing in these latter provisions resembles a

true guarantee, as Hill assumed these obligations without

reference to any other agreement or any other party’s

obligations.

Instead, Hill’s commitments together convey an

unmistakable intent to effect a present transfer of any interest

he possessed in the manuscript. Hill’s assurance that the

manuscript “is a work made for hire,” App. 1139, though

24

insufficient to actually render it for hire, denotes an intent to

relinquish his interest in the copyright. See 1 Nimmer on

Copyright § 5.03[B][1][b][ii]. The use of the definite article

“the” in “[Commerce Bank] is the owner of copyright” also

implies that Commerce Bank is the sole owner of the

copyright. App. 1139; see, e.g., Edgenet, Inc. v. Home Depot

U.S.A., Inc., 658 F.3d 662, 666 (7th Cir. 2011). And this

implication gains force in the second half of that sentence,

which provides that Commerce Bank has “full power” to

execute the publishing agreement, because a co-owner lacks

the authority to grant a truly exclusive license without the

consent of all co-owners. Brownstein, 742 F.3d at 68; see

Davis v. Blige, 505 F.3d 90, 101 (2d Cir. 2007). Finally, any

lingering doubt is dispelled by the letter’s reference to the

publishing agreement, which states that Commerce Bank “is

the sole and exclusive owner of all rights granted to the

Publisher in this Agreement.”8 App. 1142 (emphasis added).

We recognize that courts do not lightly infer that a

party has assigned his interest in a copyright, particularly

given the Copyright Act’s writing requirement, and in

doubtful cases, a document should not be construed to divest

an author completely of his ownership interest. See Baisden

v. I’m Ready Prods., Inc., 693 F.3d 491, 500 (5th Cir. 2012)

(endorsed check for royalties did not constitute an

assignment); Radio Television Espanola S.A. v. New World

Entm’t, Ltd., 183 F.3d 922, 927 (9th Cir. 1999) (fax

referencing a deal without any indication of its terms and

8

To the extent that Hill suggests that an assignment

would fail unless he entered into an agreement directly with

the assignee (Commerce Bank), he is mistaken. See

Restatement (Second) of Contracts § 327 cmt. a (1981).

25

another discussing contract negotiations did not satisfy the

writing requirement); Playboy Enters., Inc. v. Dumas, 53 F.3d

549, 564 (2d Cir. 1995) (accepting, as not clearly erroneous,

the district court’s finding that a stamp on an endorsed check

“assign[ing] . . . all right, title and interest” without

mentioning “copyright” constituted an assignment of only the

physical copy of a painting). We do not decide whether any

of Hill’s commitments standing alone, including the failed

attempt to deem the work for hire, would suffice to effect an

assignment. When considered as a whole, however, the letter

agreement satisfies the requirements of an assignment under

both the Copyright Act and New York law, and we will

affirm the District Court’s ownership determination on this

basis.9

9

Our dissenting colleague slices TD Bank’s argument

thinly, arguing that we should not affirm because it “waived”

the assignment issue. While we take this opportunity to

clarify that a work cannot fall within the scope of

employment without satisfying agency-law criteria, the

District Court’s contract-law analysis, though adopting

incorrect nomenclature, was sound. In fact, Hill (correctly)

observes in his opening brief that the District Court conflated

the two doctrines and therefore devotes more than four pages

to the assignment question (even labeling it as such). In

considering whether Hill assigned any interest he had, we do

not stray from the passages in the agreements that TD Bank

identified in its interrogatory response as giving it exclusive

ownership and that the parties dispute on appeal. Where two

arguments relate so closely, neither is waived or forfeited.

See, e.g., Lebron v. Nat’l R.R. Passenger Corp., 513 U.S.

374, 380 (1995) (considering an alternative argument where

26

the petition, “though couched in terms of a different but

closely related theory, fairly embraced [it]”).

In any event, we may affirm on any ground supported

by the record as long as the appellee did not waive—as

opposed to forfeit—the issue. Compare Bistrian v. Levi, 912

F.3d 79, 88–89 (3d Cir. 2018) (affirming in part based on a

“threshold question of law” that the appellees neither raised

below nor on appeal), with Holk v. Snapple Beverage Corp.,

575 F.3d 329, 336 (3d Cir. 2009) (appellee waived a separate

argument by “explicitly disclaim[ing]” it). Much like the

other statements our dissenting colleague references, the

Bank’s response to a request for admission admitted the lack

of an assignment only “to the extent that” the Bank argued

that initial ownership had already vested with the Bank under

the same agreement. App. 1307 (emphasis added). A request

for admission does not serve as a proper substitute for a

contentions interrogatory, see United Coal Cos. v. Powell

Const. Co., 839 F.2d 958, 967–68 (3d Cir. 1988), and Hill

neither sought clarification of TD Bank’s response nor moved

to have the matter deemed fully admitted, see Fed. R. Civ. P.

36(a)(6); 8B Charles Alan Wright et al., Federal Practice &

Procedure § 2260 (3d ed. 2019). The Bank has consistently

argued that it exclusively owns the 2007 manuscript under the

letter agreement, and we see no reason to treat its mislabeling

of that substantially correct contract-law argument as the

“intentional relinquishment . . . of a known right.” Robinson

v. First State Cmty. Action Agency, 920 F.3d 182, 187 (3d

Cir. 2019).

27

3. Whether the Manuscript Fell Within the

Scope of Hill’s Employment

Although the letter agreement constitutes a valid

assignment, the question remains whether the 2007

manuscript fell within the scope of Hill’s employment. If it

did, the work would receive for-hire treatment and Hill would

lack any right to terminate the assignment. See 17 U.S.C. §

203.

This Court has not had occasion to expound on when a

work falls within the scope of employment. CCNV, however,

held that the terms “employee” and “scope of employment”

should be construed in light of general principles of agency

law, citing section 228 of the Restatement (Second) of

Agency. 490 U.S. at 740. Taking their cue from CCNV,

other Courts of Appeals have concluded that a work falls

within the scope of employment only if “[1] it is of the kind

he is employed to perform; [2] it occurs substantially within

the authorized time and space limits; and [3] it is actuated, at

least in part, by a purpose to serve the [employer].’” Avtec

Sys., Inc. v. Peiffer, 21 F.3d 568, 571 (4th Cir. 1994) (quoting

Restatement (Second) of Agency § 228 (1958)) (internal

alterations omitted); see U.S. Auto Parts Network, 692 F.3d at

1015; Shaul v. Cherry Valley-Springfield Cent. Sch. Dist., 363

F.3d 177, 186 (2d Cir. 2004).

We agree with our sister circuits that CCNV counsels

in favor of adopting the Second Restatement’s test. The

second factor, however, deserves further explication:

Although the test is phrased in the conjunctive, meaning that

all three factors must be satisfied for a work to receive for-

hire treatment, courts must consider time and spatial bounds

with care. This factor is most probative for employees who

28

work shifts or otherwise have regular hours and definite

workplaces. See, e.g., City of Newark v. Beasley, 883 F.

Supp. 3, 6, 8–9 (D.N.J. 1995) (law enforcement training

course developed by a police officer while “off duty” fell

outside the time and spatial boundaries of his employment).

In our increasingly mobile work culture, however, many

executives and professionals—for better or worse—lack

obvious temporal or spatial boundaries for their work. See

Restatement (Third) of Agency § 7.07 cmt. b (2006)

(explaining that the Third Restatement abandoned this factor

because it “does not naturally encompass the working

circumstances of many managerial and professional

employees”). For such employees, the second factor will

illuminate little, and a fact-finder cannot indulge in the fiction

of a 9-to-5 workday. On the other hand, even when an

employee’s position has ascertainable temporal and spatial

boundaries, her unilateral decision to continue working at

home or beyond normal hours has little bearing if a

copyrighted work is clearly “of the kind” that the employee

was hired to create. Avtec Sys., 21 F.3d at 571; U.S. Auto

Parts Network, 692 F.3d at 1018; 1 Nimmer on Copyright

§ 5.03[B][1][b][i].

Unfortunately, we are without the benefit of an opinion

below applying the scope-of-employment test because the

District Court considered only the effect of the letter

agreement. App. 35 n.10. In a similar circumstance, after

clarifying the agency-law principles that the district court

should apply, the Fourth Circuit remanded the case,

concluding that it was “not in a position to resolve that

heavily fact-laden issue in the first instance.” Avtec Sys., 21

F.3d at 573. We will follow the same course here, as the

issue is close and may require the trier of fact to resolve

29

underlying factual disputes. Cf. MacLean Assocs., Inc. v.

Wm. M. Mercer-Meidinger-Hansen, Inc., 952 F.2d 769, 778

(3d Cir. 1991). Of course, Hill may choose to forgo this

inquiry, but it is not academic because it would determine

whether Hill or his successors may eventually terminate the

assignment. See 17 U.S.C. § 203. We thus will leave it to the

parties on remand to decide if they wish to open yet another

chapter in this litigation.

B. Liability for Infringement

Having concluded that TD Bank owned the exclusive

rights in the manuscript, we briefly address Hill’s defenses to

infringement. Hill devotes a few sentences to the merger and

scenes à faire doctrines, as well as the fair-use defense. The

District Court correctly granted summary judgment to TD

Bank on these defenses.

The merger doctrine prohibits the copyrighting of

expression “when ‘there are no or few other ways of

expressing a particular idea.’” Educ. Testing Servs. v.

Katzman, 793 F.2d 533, 539 (3d Cir. 1986) (quoting Apple

Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240,

1253 (3d Cir. 1983)). A variation on the merger doctrine, the

scenes à faire doctrine leaves unprotected “incidents,

characters or settings which are as a practical matter

indispensable in the treatment of a given topic.” Whelan

Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1236

(3d Cir. 1986) (citation and internal alteration omitted). Hill

could express his life story and business philosophy in

numerous ways, so the District Court properly concluded that

the copied portions of the prior work were copyrightable.

30

As for fair use, the 2012 book was not

transformative—i.e., it did not imbue the prior work with

“new expression, meaning, or message”—so the permissible

scope of fair use is more circumscribed. See Campbell v.

Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994). Given

this, as well as Hill’s commercial sales of the 2012 work, the

unpublished nature of the 2007 manuscript, and the potential

harm to the market for the original manuscript if TD Bank

ever elected to publish it, the District Court correctly granted

summary judgment to TD Bank on Hill’s fair-use defense.

See Harper & Row Publishers, Inc. v. Nation Enters., 471

U.S. 539, 562, 563, 566–68 (1985).

C. Propriety of the Injunction

Finally, we turn to the propriety of the District Court’s

permanent injunction banning the “publish[ing], market[ing],

distribut[ing] or sell[ing]” of Hill’s 2012 book. App. 4. As a

matter entrusted to a court’s equitable discretion, an

injunction “does not follow from success on the merits as a

matter of course.” Winter v. Nat. Res. Def. Council, Inc., 555

U.S. 7, 32 (2008). Instead, even after prevailing on the

merits, the party seeking a permanent injunction must make a

sufficient showing that (1) it will suffer irreparable injury, (2)

no remedy available at law could adequately remedy that

injury, (3) the balance of hardships tips in its favor, and (4) an

injunction would not disserve the public interest. eBay, 547

U.S. at 391. While we consider these factors holistically, the

inability to show irreparable harm—or, relatedly, that a legal

remedy would be inadequate—defeats a request for injunctive

relief. See Reilly v. City of Harrisburg, 858 F.3d 173, 179 (3d

Cir. 2017).

31

Before eBay, this Circuit, like many others, applied a

presumption of irreparable harm as long as a copyright

plaintiff established a prima facie case or reasonable

likelihood of success. See Video Pipeline, Inc. v. Buena Vista

Home Entm’t, Inc., 342 F.3d 191, 206 (3d Cir. 2003); Marco

v. Accent Pub. Co., 969 F.2d 1547, 1553 (3d Cir. 1992);

Educ. Testing Servs., 793 F.2d at 543; Apple Comput., 714

F.2d at 1254. That presumption would go a long way toward

supporting the District Court’s remedy here. But we have

cause to reconsider it in light of the Supreme Court’s

intervening guidance.

In eBay, the Supreme Court rejected the Federal

Circuit’s longstanding rule requiring, absent “exceptional” or

“unusual” circumstances, the imposition of a permanent

injunction after a finding of patent infringement. 547 U.S. at

393–94 (citation omitted). eBay held that the Federal

Circuit’s rule conflated rights with remedies by relying on the

Patent Act’s statutory “right to exclude” to create such a

presumption. Id. at 392. Rather, absent express

Congressional guidance to the contrary, district courts retain

discretion in resolving requests for injunctive relief, and

“such discretion must be exercised consistent with traditional

principles of equity, in patent disputes no less than in other

cases.” Id. at 394. In so holding, eBay drew parallels to

copyright law, where it had “consistently rejected” arguments

that a permanent injunction should necessarily result from a

finding of infringement. Id. at 392–93. It pointed, for

example, to Dun v. Lumbermen’s Credit Association, 209

U.S. 20 (1908), where the Court had affirmed a denial of an

injunction for infringement of a reference book, agreeing with

the lower courts that the infringing content was “so

insignificant compared with the injury from stopping [the

32

defendant’s] use of their enormous volume.” Id. at 23. And

it cited New York Times Co. v. Tasini, 533 U.S. 483 (2001),

where, after concluding that newspapers exceeded their

licenses by republishing freelance journalists’ articles in

electronic databases, the Court cautioned that “it hardly

follows” that an injunction should issue to remedy the

infringement. Id. at 505; see Campbell, 510 U.S. at 578 n.10

(observing that copyright’s goals “are not always best served

by automatically granting injunctive relief”); Sony Corp. of

Am. v. Universal City Studios, Inc., 464 U.S. 417, 499 (1984)

(Blackmun, J., dissenting) (doubting that “a broad injunction”

should issue even if contributory liability attached).

Although eBay concerned the Patent Act, we have

found its logic more widely applicable. Ferring Pharms., Inc.

v. Watson Pharms, Inc., 765 F.3d 205, 215 (3d Cir. 2014).

Thus, in Ferring, we abandoned our presumption of

irreparable harm in Lanham Act cases as inconsistent with

eBay’s admonition that courts may not fashion categorical

rules or sweeping principles that would undermine the

traditional four-factor test. Id. at 213 & n.7, 216. Instead, we

held that an injunction may issue only if the plaintiff proves

all four factors without the aid of any shortcuts. Id. at 216.

We have not reconsidered the presumption in

copyright cases in particular since eBay, but several of our

sister circuits have, and they have rejected it. See, e.g.,

CoxCom, Inc. v. Chaffee, 536 F.3d 101, 111–12 (1st Cir.

2008); Salinger v. Colting, 607 F.3d 68, 77–78 (2d Cir.

2010); Christopher Phelps & Assocs., LLC v. Galloway, 492

F.3d 532, 543 (4th Cir. 2007); Flava Works, Inc. v. Gunter,

689 F.3d 754, 755 (7th Cir. 2012); Flexible Lifeline Sys., Inc.

v. Precision Lift, Inc., 654 F.3d 989, 995–96 (9th Cir. 2011);

Peter Letterese and Assocs., Inc. v. World Inst. of Scientology

33

Enters., 533 F.3d 1287, 1323 (11th Cir. 2008). Notably,

Ferring relied on one of these decisions, Salinger v. Colting,

607 F.3d 68 (2d Cir. 2010), which jettisoned the presumption

of irreparable harm in copyright cases because eBay “strongly

indicates” that the principles it reaffirmed should be “the

presumptive standard for injunctions in any context” and

eBay relied on the Court’s copyright jurisprudence. 607 F.3d

at 78.

Based on Ferring and this persuasive authority, we

hold today that eBay abrogates our presumption of irreparable

harm in copyright cases. The Copyright Act does not direct

courts to depart from traditional principles of equity in

adjudicating requests for injunctive relief, see 17 U.S.C.

§ 502(a), and eBay’s reliance on the Court’s copyright

decisions makes its applicability even clearer here than in

Ferring. Accordingly, a court considering the propriety of a

copyright injunction should no longer place a “thumb on the

scales” in favor of injunctive relief and inquire merely

whether “there is good reason why an injunction should not

issue.” Monsanto Co. v. Geertson Seed Farms, 561 U.S. 139,

157–58 (2010). Nor can the four-factor test be faithfully

applied through a “perfunctory recognition that ‘an injunction

does not automatically issue,’” id. at 157–58 (citation

omitted), or the factors’ rote invocation, see Winter, 555 U.S.

at 26–27. Irreparable harm in copyright cases “must be

prove[n], not presumed.” Flexible Lifeline Sys., 654 F.3d at

1000 (quoting 4 Nimmer on Copyright § 14.06[A][5]).

With these principles in mind, we consider whether the

District Court abused its discretion in issuing this injunction.

34

1. Irreparable Injury

To obtain a permanent injunction, a moving party must

show that it will suffer irreparable harm that is causally

attributable to the challenged infringement. See Perfect 10,

Inc. v. Google, Inc., 653 F.3d 976, 982 (9th Cir. 2011); Apple

Inc. v. Samsung Elecs. Co., 735 F.3d 1352, 1363 (Fed. Cir.

2013) (Patent Act). Even though TD Bank does not sell,

license, or even use the infringed work and has no intention

of ever doing so, it persuaded the District Court that Hill’s

supposed continuing infringement irreparably harmed the

Bank by depriving it of the “right to not use the copyright.”

App. 9. We disagree. Neither the prospect of continued

infringement nor the “right to not use” a copyright establish

irreparable harm.

At the outset, we can easily dismiss TD Bank’s

contention that continued copyright infringement necessarily

constitutes irreparable harm. While a “substantial likelihood”

of continuing infringement is necessary to obtain permanent

injunctive relief, Jane Doe No. 1 v. Backpage.com, LLC, 817

F.3d 12, 29 (1st Cir. 2016); see Ferring, 765 F.3d at 219, the

continuing nature of the infringement does not mean that any

future injury would be irreparable, Metro-Goldwyn-Mayer

Studios, Inc. v. Grokster, Ltd., 518 F. Supp. 2d 1197, 1215

(C.D. Cal. 2007); see Nichia Corp. v. Everlight Americas,

Inc., 855 F.3d 1328, 1333 (Fed. Cir. 2017) (affirming a

district court’s conclusion that a patentee failed to show that

the defendants’ “continuing infringement . . . has caused, and

will continue to cause, irreparable harm”). Indeed, the

Federal Circuit has recognized that, after eBay, irreparable

harm can no longer be presumed based on continued

infringement and a likelihood of success on the merits. See

Robert Bosch LLC v. Pylon Mfg. Corp., 659 F.3d 1142, 1149

35

(Fed. Cir. 2011); see also Reebok Int’l Ltd. v. J. Baker, Inc.,

32 F.3d 1552, 1556 (Fed. Cir. 1994) (presuming irreparable

harm before eBay upon a “strong showing of likelihood of

success on the merits coupled with continuing infringement”).

If continued infringement does not justify a presumption of

irreparable harm, a fortiori it does not inherently give rise to

irreparable harm. Instead, the prospect that infringement will

continue merely precipitates the question whether any future

infringement would irreparably injure the copyright owner.

The District Court’s reliance on “the right to not use

the copyright” fares no better. See App. 9. Such a right is

little more than a rephrasing of the right to exclude, which

eBay held did not justify a presumption of irreparable harm.

See 547 U.S. at 392–93. Even when this Court presumed

irreparable harm, we required “a stronger showing of

irreparable harm” if the infringed copyright was “peripheral

to the copyright holder’s business.” Video Pipeline, 342 F.3d

at 206 (citation and internal alterations omitted). Holding that

a violation of “the right to not use the copyright” necessarily

amounts to irreparable harm would not only resurrect the

presumption of irreparable harm, but make it irrebuttable,

even where, as here, the infringement bears only a tangential

relation to the copyright holder’s business. Cf. High Tech

Med. Instrumentation, Inc. v. New Image Indus., Inc., 49 F.3d

1551, 1556 (Fed. Cir. 1995) (reversing the issuance of a

preliminary injunction where the patentee did “not make or

sell [the relevant products] and [did] not license their

manufacture and sale”).

Our position that a violation of “the right to not use [a]

copyright” does not inherently establish irreparable harm

finds further support in the Ninth Circuit’s en banc decision

in Garcia v. Google, Inc., 786 F.3d 733 (9th Cir. 2015).

36

There, an actor who allegedly was duped into making a five-

second performance for the anti-Muslim movie Innocence of

Muslims sought an injunction to remove the movie from

YouTube because its release resulted in a fatwa against her

and threats against her family. Id. at 737–39. The en banc

court noted that the actor’s alleged harms, though disturbing,

bore little relation to any interest protected by copyright law.

Id. at 745. Copyright law grants authors exclusive rights in

their expressive works to incentivize “the creation and

publication of free expression”—not to protect an author’s

privacy or reputation. Id. at 744–45 (quoting Eldred v.

Ashcroft, 537 U.S. 186, 219 (2003)). In seeking to remove

the work (or at least her five-second performance) from

YouTube, the Ninth Circuit concluded, the actor had not

demonstrated any harm, much less irreparable harm,

cognizable in copyright.10 Id. at 746. We express no opinion

on the Ninth Circuit’s ultimate holding, but its premise is one

on which we agree: A bare violation of a statutory right

enshrined in the Copyright Act does not establish irreparable

harm.

In holding otherwise, the District Court relied on the

Second Circuit’s decision in Salinger, which mused that “a

copyright holder might . . . have a First Amendment interest

in not speaking” and later asserted that “‘[t]he loss of First

Amendment freedoms,’ and hence infringement of the right

not to speak, ‘for even minimal periods of time,

unquestionably constitutes irreparable injury.’” 607 F.3d at

81 (emphasis added) (citation omitted). We do not view the

10

Garcia accepted that a court may consider these

collateral injuries where a copyright owner has a “strong

copyright claim.” Id. at 746.

37

Second Circuit as holding that copyright infringement

amounts to compelled speech in violation of the First

Amendment. For one, Salinger vacated the district court’s

grant of a preliminary injunction and stressed that irreparable

harm must be proven. Id. at 82, 84. Equating copyright

infringement with compelled speech would justify an

injunction whenever, as in Salinger, an author chooses not to

distribute a work. In addition, Salinger reiterated that

copyright law aims to protect “the commercial interest of the

artist/author” and “not to coddle artistic vanity or to protect

secrecy.” Id. at 81 n.9 (emphasis omitted) (quoting New Era

Publ’ns Int’l, ApS v. Henry Holt & Co., 695 F. Supp. 1493,

1526 (S.D.N.Y. 1988) (Leval, J.)). Yet secrecy is exactly

what would be protected if the unauthorized distribution of a

work were deemed an irreparable violation of the original

author’s right not to speak.11

11

Nor would characterizing copyright infringement as

compelled speech make much sense. Most obviously,

copyright infringement generally lacks the state action needed

to implicate the First Amendment. See Max v. Republican

Comm. of Lancaster Cty., 587 F.3d 198, 200 (3d Cir. 2009).

And even if it did, infringement would not equate with

compelled speech because, regardless of whether the author

takes offense, the infringer’s use does not coerce the

copyright owner to “personally speak the government’s

message” or “to host or accommodate another speaker’s

message” so that “the complaining speaker’s own message

was affected.” Rumsfeld v. Forum for Acad. & Institutional

Rights, Inc., 547 U.S. 47, 63 (2006). Indeed, precisely

because few authors would license their work for criticism or

ridicule, copyright’s fair-use defense provides special

38

For these reasons, the District Court should not have

relied on Hill’s violation of the “right to not use [a]

copyright” alone to establish irreparable harm, App. 9, and

because it did, it abused its discretion. See Highmark Inc. v.

Allcare Health Mgmt. Sys., Inc., 572 U.S. 559, 563 n.2

(2014).

2. Adequate Remedy at Law

Although eBay identified irreparable harm and the

adequacy of legal remedies as separate considerations, they

typically constitute two sides of the same inquiry, for the

“availability of adequate monetary damages belies a claim of

irreparable injury.” Bennington Foods LLC v. St. Croix

Renaissance, Grp., LLP, 528 F.3d 176, 179 (3d Cir. 2008)

(citation omitted); see Samuel L. Bray, The Supreme Court

and the New Equity, 68 Vand. L. Rev. 997, 1026–27, 1048

(2015) (“[T]hese formulations are customarily

interchangeable.”). Below, the District Court concluded that,

because Hill was distributing the 2012 book for free, TD

Bank’s injury “is . . . not easily quantifiable or compensable

at law.” App. 10. This, too, was error.

protection to derivative works like parodies. See Campbell,

510 U.S. at 579–81; Suntrust Bank v. Houghton Mifflin Co.,

268 F.3d 1257, 1271 (11th Cir. 2001). Nor have the

Copyright Act’s longstanding compulsory licensing

provisions, see, e.g., 17 U.S.C. § 111 (compulsory cable

license); 17 U.S.C. § 115 (compulsory cover license), ever

come under serious First Amendment challenge as compelled

speech.

39

Under the Copyright Act, a copyright holder may

recover either actual damages and the infringer’s profits or

statutory damages. 17 U.S.C. § 504(a). Other circuits have

interpreted the Act’s allowance of “actual damages” to permit

reasonable royalty damages. See, e.g., On Davis v. The Gap,

Inc., 246 F.3d 152, 163–72 (2d Cir. 2001); Dash v.

Mayweather, 731 F.3d 303, 312 (4th Cir. 2013); MGE UPS

Sys., Inc. v. GE Consumer & Indus., Inc., 622 F.3d 361, 366

(5th Cir. 2010). As a condition of denying a permanent

injunction, a district court may impose a running royalty to

remedy possible future infringement, at least after providing

the parties with an opportunity to negotiate a rate privately.

See Prism Techs. LLC v. Sprint Spectrum L.P., 849 F.3d

1360, 1377 (Fed. Cir. 2017) (Patent Act); 4 Nimmer on

Copyright § 14.06[D] (2018). A reasonable royalty and

statutory damages may be imposed even if the accused

infringer reaps nothing from infringement. See F. W.

Woolworth Co. v. Contemporary Arts, 344 U.S. 228, 233

(1952) (allowing statutory damages “[e]ven for uninjurious

and unprofitable invasions of copyright”); On Davis, 246

F.3d at 166 (recognizing that reasonable royalty damages may

be awarded even if the infringement proves unprofitable).

Given this arsenal of monetary remedies, a district court can

still award meaningful monetary relief where, as here, an

accused infringer distributes an infringing product for free

and the copyright holder makes no use of a work.

TD Bank protests that it abandoned its request for

statutory damages, so it lacks an adequate remedy at law. But

where an adequate remedy at law exists, “the party seeking

redress must pursue it.” Parker v. Winnipiseogee Lake Cotton

& Woolen Co., 67 U.S. 545, 551 (1862) (emphasis added);

see Goadby v. Philadelphia Elec. Co., 639 F.2d 117, 122 (3d

40

Cir. 1981); Shaw v. United States, 891 F.2d 602, 603 (6th Cir.

1989). TD Bank therefore cannot bolster its case for

equitable relief by abandoning its request for statutory

damages.

To be clear, we in no way suggest that all copyright

infringement can be adequately remedied through damages;

that “categorical rule” would flout eBay just as much as a rule

favoring injunctive relief. See 547 U.S. at 393. The

availability of some legal remedy does not mean such a

remedy is adequate. But, at a minimum, where the copyright

holder presents no evidence of actual harm and relies solely

on the exclusive nature of the rights conferred by the

Copyright Act, a district court abuses its discretion by

concluding that the copyright holder lacks an adequate

remedy at law.

3. Balance of Equities

The District Court’s balance-of-harms analysis suffers

from much the same flaws as its irreparable-injury

determination: It relied solely on TD Bank’s “property

interest in its copyrighted material”—in other words, the right

to exclude—and dismissed any hardship that the injunction

would inflict on Hill because “Hill has a property interest in

the 2012 Book only to the extent [it] does not infringe the

2007 Manuscript.” App. 10. But by that measure, the

balance of hardships would always favor the copyright

holder.

At least three considerations inform how much

credence to give a defendant’s claimed hardship: (1) whether

the defendant’s own financial investment, effort, or

expressive contribution eclipses the infringing aspect, see

41

Silverstein v. Penguin Putnam, Inc., 368 F.3d 77, 84–85 (2d

Cir. 2004); Abend v. MCA, Inc., 863 F.2d 1465, 1479 (9th

Cir. 1988), (2) how easily the infringing content could be

separated from the defendant’s product,12 see Opticians Ass’n

of Am. v. Indep. Opticians of Am., 920 F.2d 187, 197 (3d Cir.

1990); Abend, 863 F.2d at 1479, and (3) the degree to which

the defendant reasonably believed his conduct was non-

infringing, see Opticians Ass’n of Am., 920 F.2d at 197;

Helene Curtis Indus., Inc. v. Church & Dwight Co., 560 F.2d

1325, 1333 (7th Cir. 1977). All three factors play a role; no

matter how much a defendant invests in a product and how

deeply intertwined that investment is with the infringing

content, a wanton infringer may deserve little sympathy from

a court contemplating equitable relief. See Opticians Ass’n of

Am., 920 F.2d at 197; Kos Pharm. v. Andrx Corp., 369 F.3d

700, 728–29 (3d Cir. 2004) (refusing to countenance “a

knowing infringer that constructs its business around its

infringement” (emphasis added) (citation and internal

alterations omitted)); see also Douglas Laycock & Richard L.

Hasen, Modern American Remedies 419–20, 446–47 (5th ed.

2019) (stressing the defendant’s culpability vel non). But

12

We note that the question of separability in the

balance of hardships differs from that at issue in the merger

doctrine. The merger doctrine, as a narrow defense to

liability, considers ex ante whether an idea could have been

expressed in numerous ways, see Educ. Testing Servs., 793

F.2d at 539, while the balance of hardships assesses

afterwards how practicable extricating the infringing content

from the defendant’s product would be, given obstacles such

as sunk costs and path dependency, see Abend, 863 F.2d at

1479.

42

even where a defendant makes a strong showing, a copyright

holder’s hardship may be so devastating that the balance of

equities nevertheless tips in its favor. See, e.g., Opticians

Ass’n of Am., 920 F.2d at 197; Abend, 863 F.2d at 1479

(declining to issue injunction where the success of the

infringing work “resulted in large part from factors

completely unrelated to the underlying story” and “defendants

could not possibly separate out [their contributions] from the

underlying work”). In short, balancing aims “to ensure that

the issuance of an injunction would not harm the infringer

more than a denial would harm the [copyright] owner.”

Opticians Ass’n of Am., 920 F.2d at 197.

Here, considering the interests on both sides, the

balance of equities favors neither party. TD Bank has not

submitted any evidence of actual harm, much less irreparable

harm. But the equities do not particularly favor Hill either.

True, as TD Bank admits, no more than 16% of Hill’s 2012

book infringes its copyright, and Hill’s ownership defense,

though ultimately unsuccessful, had considerable merit. And,

without TD Bank’s recent concession that the 2016 book does

not infringe its copyright, we would need to scrutinize

whether the book could practically be rewritten in a non-

infringing manner without detracting from Hill’s story or

voice. With the benefit of hindsight and TD Bank’s recent

concession, however, we know that Hill needed only about

one month to develop a non-infringing version. Under these

circumstances, we decline to hold that the equities weigh in

either party’s favor.

4. Public Interest

Hill and amici contend that the District Court erred in

discounting the harm that the injunction could inflict on the

43

American public by depriving it of the ability to purchase the

work from any lawful source. To determine where the public

interest lies, a court should weigh the “advantages and

disadvantages” to the public of “employing the extraordinary

remedy of injunction over the other available methods of

enforcement.” United States v. Oakland Cannabis Buyers’

Coop., 532 U.S. 483, 498 (2001) (citation omitted). We agree

that this factor weighs against the injunction: Copyright

leaves a narrow but important role for weighing the public’s

right to access expressive works, at least where a copyright

owner pursues an injunction not to safeguard the commercial

marketability of a work but merely to suppress unwelcome

speech.

Though not “categorically immune from challenges

under the First Amendment,” copyright law generally does

not invite First Amendment scrutiny, insofar as “copyright’s

built-in free speech safeguards”—in particular, the idea-

expression dichotomy and fair use—adequately guarantee

free expression. Eldred, 537 U.S. at 221 (citation omitted);

see Harper & Row, 471 U.S. at 555–60. And copyright law

strives to spur the creation and diffusion of free expression by

granting authors “a marketable right to the use of one’s

expression.” Id. at 558. For these reasons, the Supreme

Court has rebuffed constitutional challenges that would have

enlarged the fair-use doctrine, id. at 560, or invalidated

Congress’s retroactive extensions of copyrights, Eldred, 537

U.S. at 221; Golan v. Holder, 565 U.S. 302, 335–36 (2012).

Yet it hardly follows that the public interest always

favors granting injunctive relief or that, in exercising its

remedial discretion, a court must ignore whether an injunction

would indefinitely preclude the public from accessing a work.

To the contrary, the Supreme Court has recognized that

44

injunctive relief does not always serve copyright’s goal of

“stimulat[ing] the creation and publication of edifying

matter.” Campbell, 510 U.S. at 578 n.10 (citation omitted).

By considering the public’s interest in accessing works, a

court does not disturb copyright’s liability regime, see Eldred,

537 U.S. at 221; Golan, 565 U.S. at 324, but rather exercises

its centuries-old authority to choose between alternative

“means of enforcing the statute.” Oakland Cannabis Buyers’

Coop., 532 U.S. at 497–98; see II Joseph Story,

Commentaries on Equity Jurisprudence 271 (3d ed. 1843)

(commending the “wisdom” of courts of equity in “constantly

declin[ing] to lay down any rule, which shall limit their power

and discretion as to the particular cases, in which such

injunctions shall be granted, or withheld”).

Consistent with this view, the Supreme Court and

other Courts of Appeals have emphasized the right of access

to works of public interest. For example, in a case cited

approvingly by the Supreme Court as an example of where

the public interest opposed injunctive relief, see Campbell,

510 U.S. at 578 n.10, the Ninth Circuit refused to enjoin the

classic Hitchcock movie “The Rear Window” partly because

“an injunction could cause public injury by denying the

public the opportunity to view a classic film for many years to

come,” Abend, 863 F.2d at 1479. The Second Circuit

likewise vacated an injunction enjoining a biography about

Howard Hughes that allegedly infringed copyrights that

Hughes had acquired to suppress the work, with a two-judge

concurrence pointing out that the “spirit of the First

Amendment” counsels against allowing anyone to use

copyright to “interfere[] with the public’s right to be informed

regarding matters of general interest.” Rosemont Enters., Inc.

v. Random House, Inc., 366 F.2d 303, 311 (2d Cir. 1966); see

45

also Suntrust Bank, 268 F.3d at 1276 (stressing “the public

interest is always served in promoting First Amendment

values”).

By recognizing the public’s interest in accessing

intriguing works, we do not countenance blatant piracy or

indulge in second-guessing of a copyright holder’s business

model. Cf. Campbell, 510 U.S. at 578 n.10 (focusing on

derivative works). And, even where the public interest in

accessing works may appropriately be considered, a district

court may well conclude that the public interest nevertheless

favors injunctive relief. Cf. Disney Enters., Inc. v. VidAngel,

Inc., 869 F.3d 848, 867 (9th Cir. 2017) (concluding that a

district court did not abuse its discretion in issuing injunction

relief even though the content owners did not offer a

competing service). But, at least where a copyright holder

wields its exclusive rights to suppress unwelcome speech, a

district court’s public-interest analysis should consider a

work’s continued availability.

Hill may perhaps not be the next prize-winning, or

even best-selling, business-book author. But he has a story to

tell and readers eager to learn from him. This injunction

deprived the American public of the ability to purchase this

book from any lawful source for the foreseeable future. At

the same time, whatever spurred TD Bank to bankroll this

copyright litigation, it was not a desire to protect the

commercial value of the 2007 manuscript: By its own

admission, TD Bank has no real intention of ever publishing

or licensing that work.

This injunction also inflicted a far more subtle and

insidious harm on the public by placing Hill in jeopardy of a

contempt finding for sharing anything that “sound[s] too

46

much like himself in the 2007 manuscript.” Br. of Amici

Intellectual Property Law Professors at 13. In this manner, a

copyright injunction can limit the public’s access to

expressive content well beyond the work at issue in a lawsuit.

Far from hypothetical, that danger came true here when TD

Bank threatened to bring a contempt motion against Hill for

the 2016 book, which it did not retract until its appellate

response brief. A less financially secure defendant may well

have given up. Thus, on balance, the public interest here also

militates against this permanent injunction.

* * * *

As an appellate court, we police only the margins of a

district court’s exercise of equitable discretion. But where, as

here, a district court strays from a context-specific analysis

and relies instead on broad propositions, it exceeds the

bounds of its discretion. In this case, no invocation of

abstract principles can obscure that TD Bank suffered no

actual harm from Hill’s infringement and the Bank had

adequate remedies at law. As such, although we will affirm

the District Court’s grant of summary judgment to TD Bank

on ownership and liability, we will vacate the permanent

injunction and remand for further proceedings consistent with

this opinion.

47

COWEN, concurring in part and dissenting in part.

I join in full Parts II and Parts III.A.1, III.A.3, III.B,

and III.C of the majority opinion, and I agree that we must

vacate the District Court’s permanent injunction. I also join

Part III.A.2 insofar as the majority determines that “the

District Court was mistaken in concluding that the letter

agreement vested ownership in the Bank by deeming the

manuscript a work for hire.” (Majority Opinion at 21-22.)

However, I must respectfully dissent from Part III.A.2’s

assignment analysis. TD Bank has waived this assignment

issue, and, in any event, Hill’s commitments fail to “convey

an unmistakable intent to effect a present transfer of any

interest he possessed in the manuscript” (id. at 24).

Accordingly, I would vacate the District Court’s grant of

summary judgment on the threshold question of ownership

and remand for further proceedings.

“[W]e may affirm on any basis supported by the

record, even if it departs from the District Court’s rationale.”

(Id. at 14 (citing Erie Telecomms., Inc. v. City of Erie, 853

F.2d 1084, 1089 & n.10 (3d Cir. 1988)).) “However, this rule

does not apply to cases in which the party has waived the

issue in the district court.” Holk v. Snapple Beverage Corp.,

575 F.3d 329, 335 (3d Cir. 2009). “This Court has stated:

‘We may affirm the lower court’s ruling on different grounds,

provided the issue which forms the basis of our decision was

before the lower court.’” Id. at 335-36 (quoting Morse v.

Lower Merion Sch. Dist., 132 F.3d 902, 904 n.1 (3d Cir.

1997)). A review of “the record” in this case reveals that TD

Bank has intentionally and knowingly abandoned the issue of

assignment. See, e.g., Robinson v. First State Cmty. Action

Agency, 920 F.3d 182, 187 (3d Cir. 2019) (“‘Waiver is the

1

‘intentional relinquishment or abandonment of a known

right.’” (quoting Barna v. Bd. of Sch. Dirs. of Panther Valley

Sch. Dist., 877 F.3d 136, 147 (3d Cir. 2017))).

It is undisputed that TD Bank failed to argue below

that, even if the 2007 manuscript does not rise to the level of

a work for hire, Hill assigned any interest he may have had in

the manuscript to Commerce Bank. But TD Bank did more

than merely fail to raise a particular issue. It affirmatively

conceded that the letter “is not an assignment.”

In “Plaintiffs’ Responses to Defendant’s First Set of

Requests for Admissions,” TD Bank made the following

admission:

26. Admit that Mr. Hill never signed a

document or any other writing assigning right,

title or interest in the Unpublished Manuscript

to Commerce.

OBJECTION: Plaintiff objects as “any

other writing” is vague and is nowhere defined

and requires Plaintiff to speculate as to

meaning.

RESPONSE: Subject to the foregoing

objection and without waiving the same,

admitted to the extent that the Guaranty is not

an assignment but rather an acknowledgement

that Commerce is the initial owner of the

copyright in the Unpublished Manuscript.

2

(JA1307; see also id. (making same objection and response to

request to admit that Hill never signed document or any other

writing assigning right, title, or interest to TD Bank).)

TD Bank thereby admitted that the letter is not an

assignment but rather an acknowledgement that Commerce

Bank has always been the copyright owner from (to borrow

language from TD Bank’s appellate brief) “day one” pursuant

to the work-for-hire doctrine (Appellee’s Brief at 37). “The

purpose of [Federal Rule of Civil Procedure] 36(a) is to

narrow the issues for trial to those which are genuinely

contested.” United Coal Cos. v. Powell Constr. Co., 839 F.2d

958, 967 (3d Cir. 1988) (citing Webb v. Westinghouse Elec.

Corp., 81 F.R.D. 431, 436 (E.D. Pa. 1978); United States v.

Watchmakers of Switzerland Info. Ctr., Inc., 25 F.R.D. 197,

201 (S.D.N.Y. 1959)). TD Bank did not deny Hill’s request

for admission. See, e.g., id. (“Where, as here, issues in

dispute are requested to be admitted, a denial is a perfectly

reasonable response.”). In fact, TD Bank responded to

similar admission requests by denying them, quoting or

referencing, inter alia, the letter, and asserting that the

document spoke for itself. It also could have answered in the

alternative if it really believed that the letter could be

considered an assignment. For instance, it could have stated

that, while the document constitutes an acknowledgement of

Commerce Bank’s initial ownership, “the Guaranty is an

assignment” to the extent Commerce Bank is not considered

to be the initial owner. But it did not do so. Instead of

leaving open the possibility that it became the copyright

owner by means of a transfer or assignment from the original

owner (or co-owner), TD Bank went so far as to emphasize

the term “initial” in “the initial owner.” Similarly,

“Plaintiff’s Response to Defendant’s Rule 56.1 Statement of

3

Material Facts Not in Dispute In Support of Cross-Motion for

Partial Summary Judgment” stated: “Undisputed that the

Guaranty does not contain such an express provision [in

which Mr. Hill assigned any right, title, or interest in the

Unpublished Manuscript to Commerce].” (JA1388).

“Disputed that the lack of such a provision provides Mr. Hill

with any ownership interest in the copyright in the 2007

Manuscript.” (Id. (citing JA477, JA1139).)

TD Bank’s pattern of failing to raise or contest the

issue of assignment has continued on appeal.

In his opening appellate brief, Hill argues at some

length that the District Court erred in relying on the letter.

“The only inquiry to which these contracts might be relevant

is whether, after Mr. Hill’s ownership vested, he executed an

agreement transferring the copyright after creation, in

accordance with 17 U.S.C. § 204.” (Appellant’s Brief at 47-

48 (citing Brownstein v. Lindsay, 742 F.3d 55, 68 (3d Cir.

2014)).) Citing to TD Bank’s Responses to Defendant’s First

Set of Requests for Admissions, Hill asserts that “TD Bank

concedes that no such writing exists,” which, in turn,

purportedly entitles him to judgment as a matter of law. (Id.

at 48 (citing JA1307).) According to Hill, the District Court,

among other things, failed to analyze the statutory writing

requirement, acknowledge TD Bank’s admission, properly

apply New York’s contract law in its consideration of the

letter and the publishing agreement, or recognize that there is

a presumption against transfers of copyright ownership unless

they are clearly stated. In the process, Hill (indirectly) cites

TD Bank’s Response to Defendant’s Rule 56.1 Statement of

Material Facts Not in Dispute In Support of Cross-Motion for

Partial Summary Judgment. (See id. (“In fact, there is no

4

evidence of any agreement over copyright ownership between

Commerce and Mr. Hill, whose signatures never appear on

the same contract.” (citing JA1586)).)

Faced with these assertions, one would expect TD

Bank to respond (at least in the form of an alternative

argument) that Hill did assign any interest he may have had in

the manuscript pursuant to § 204 and New York law. At the

very least, it would be expected that a litigant would deny an

adversary’s concession assertion if it truly believed that no

such thing had occurred. Yet TD Bank does nothing of the

sort. Instead, it simply characterizes Hill’s contention “[t]hat

‘[t]he Guaranty never says that Mr. Hill agrees to transfer

exclusive ownership to Commerce’” as “a basic mistake

regarding the Copyright Act’s ‘work made for hire’

provision.” (Appellee’s Brief at 37 (quoting Appellant’s

Brief at 48).) “Because the 2007 Manuscript was a ‘work

made for hire,’ (see [id. at 39-47]), TD Bank is the work’s

statutory ‘author’ and sole copyright owner on day one, 17

U.S.C. § 201(b), and no transfer to TD Bank is required.”

(Id.) According to TD Bank, it is actually Hill’s obligation to

produce a written agreement transferring ownership to him.

TD Bank did not argue that there was any assignment

from Hill to Commerce Bank until oral argument, after this

Court directed the parties to be prepared to discuss this issue

of whether the letter constitutes a valid assignment under

New York law and the Copyright Act. I do not believe it is

appropriate for us to overlook what TD Bank (an obviously

sophisticated litigant represented by able counsel) has done—

and not done—regarding the issue of assignment throughout

the course of this litigation. Recently, this Court considered a

party’s course of conduct to decide that it had waived its

5

objection to a particular jury instruction. See, e.g., Robinson,

920 F.3d at 184 (“We hold that First State has waived this

argument because of its continued acquiescence to

Robinson’s case theory, its encouragement of the adoption of

the very jury instruction to which it now objects, and its

failure to include this error in its post-trial briefing.”). In

turn, the ground upon which Erie Telecommunications relied

was raised in one of the appellee’s affirmative defenses,

summarily rejected by the district court, and then addressed in

the brief that the appellee filed on appeal. Erie Telecomms.,

853 F.2d at 1088 & n.8, 1094 n.16. Given its concession

below that the letter is not an assignment as well as its

dismissal on appeal of Hill’s own assignment assertions, TD

Bank has waived the assignment issue.

Assuming arguendo that the issue of assignment is

properly before us, I do not agree with the majority’s

conclusion that Hill’s letter meets the legal requirements for

an assignment of a copyright interest. As the majority

recognizes, “courts do not lightly infer that a party has

assigned his interest in a copyright, particularly given the

Copyright Act’s writing requirement, and in doubtful cases, a

document should not be construed to divest an author

completely of his ownership interest.” (Majority Opinion at

25 (citing Baisden v. I’m Ready Prods., Inc., 693 F.3d 491,

500 (5th Cir. 2012); Radio Television Espanola S.A. v. New

World Entm’t, Ltd., 183 F.3d 922, 927 (9th Cir. 1999);

Playboy Enters., Inc. v. Dumas, 53 F.3d 549, 564 (2d Cir.

1995)).) Under applicable New York law, a contract is

unambiguous if its language possesses “‘a definite and

precise meaning, unattended by danger of misconception in

the purport of the [agreement] itself, and concerning which

there is no reasonable basis for a difference of opinion.’”

6

Greenfield v. Philles Records, Inc., 780 N.E.2d 166, 170-11

(N.Y. 2002) (quoting Breed v. Ins. Co. of N. Am., 385 N.E.2d

1280, 1282 (N.Y. 1978)).

The letter here is doubtful and ambiguous.

According to the majority, “Hill’s commitments

together convey an unmistakable intent to effect a present

transfer of any interest he possessed in the manuscript.” (Id.

at 24.) I agree that no specific language is necessary to

satisfy the requirements for an effective assignment under

state and federal law. See, e.g., Radio Television Espanola,

183 F.3d at 927 (“No magic words must be included in a

document to satisfy § 204(a).”); Deutsche Bank Nat’l Trust

Co. v. Romano, 147 A.D.3d 1021, 1023 (N.Y. App. Div.

2017) (observing that no special language or formalities are

necessary to effect assignment). Nevertheless, the assignor

must in some fashion have “‘manifested an intention to make

a present transfer of his rights to the assignee.’” Deutsche

Bank, 147 A.D.3d at 1023 (quoting 9-47 Corbin on Contracts

§ 47.7); see, e.g., Roger Miller Music, Inc. v. Sony/ATV

Publishing, LLC, 477 F.3d 383, 391 (6th Cir. 2007)

(“Nevertheless, ‘[s]o long as the parties’ intent is clear, a

transfer of copyright need not include any particular

language.’” (quoting Gilleland v. Schanhals, 55 F. App’x 257,

260 (6th Cir. 2003)). According to the Ninth Circuit:

Section 204’s writing requirement is not

unduly burdensome; it necessitates neither

protracted negotiations nor substantial expense.

The rule is really quite simple: If the copyright

holder agrees to transfer ownership to another

party, that party must get the copyright holder

to sign a piece of paper saying so. It doesn’t

7

have to be the Magna Charta; a one-line pro

forma statement will do.

Effects Assocs., Inc. v. Cohen, 908 F.2d 555, 557 (9th Cir.

1990).

Neither the letter nor the publishing agreement

included “a one-line pro forma statement.” Specifically, the

documentation at issue here did not state that Hill is

assigning, transferring, or granting his copyright interest in

the manuscript to Commerce Bank—nor did it say that such

an assignment, transfer, or grant had already occurred (or

would take place in the future). See, e.g., Baisden, 693 F.3d

at 500 (“That [royalty] check merely states that it was for

‘Men Cry in the Dark Fall 2005 Royalties (Paid in Full).’

The check does not expressly refer to an assignment of

copyrights. See [Playboy Enters., 53 F.3d at 564] (applying

clearly erroneous standard and deferring to district court’s

determination that check for past ‘assignment . . . of all rights,

title and interest’ was insufficient to transfer copyrights).”).

Certainly, the inclusion of this sort of language would have

dispelled doubt and “convey an unmistakable intent” to effect

a transfer (id. at 24). Although not strictly required as a

matter of law (see id. at 25 n.8), the existence of a document

executed by the putative assignor and assignee would also

have been stronger evidence of an assignment than what we

have here, i.e., a publishing agreement executed by

Commerce Bank and Portfolio, and a letter signed by Hill

addressed to Portfolio.

In turn, Hill’s letter to Portfolio and the publishing

agreement between Commerce Bank and Portfolio could be

reasonably read as indicating that there was no copyright

assignment. As the majority explains, the letter consists of

8

two principal covenants: (1) “Hill acknowledged the

publishing agreement, a copy of which was attached to the

letter, and ‘guarantee[d], promise[d] and agree[d] with the

Publisher . . . that the Author [i.e., Commerce Bank] will, in

all respects, faithfully perform and fulfill all obligations of the

Agreement’” (id. at 23 (quoting JA1139)); and (2) “Hill

‘unconditionally guarantee[d] that the Work is a work made

for hire within the meaning of the United States Copyright

Law and that the Author is the owner of copyright in the

Work and has full power and authority to enter into the

Agreement’” (id. (quoting JA1139)). “That publishing

agreement provided that ‘the Author [i.e., Commerce Bank] is

the sole and exclusive owner of all rights granted to the

Publisher in this Agreement and has not assigned, pledged or

otherwise encumbered the same; . . . that the Author has full

power to enter into this Agreement and to make the grants

herein contained.’” (Id. (quoting JA1142).) The

documentation thereby indicates that the letter itself

constitutes a guarantee as opposed to an assignment—and

that Commerce Bank “is the work’s statutory ‘author’ and

sole copyright owner on day one and no transfer to

[Commerce Bank] is required” (Appellee’s Brief at 37

(citation omitted)).

According to the majority, the latter provisions of the

letter do not resemble a true guarantee. But it also

acknowledges that Hill’s commitment guaranteeing,

promising, and agreeing that Commerce Bank would fulfill its

obligations “could by itself suggest a guarantee” (Majority

Opinion at 24). While not dispositive, the repeated use of this

sort of “guarantee” language (at the very least) represents a

highly unconventional expression of an intent to effect a

transfer. Furthermore, the cited cases did not consider

9

whether the “guarantee” at issue actually constituted an

assignment under New York law. See, e.g., N.Y. Plumber’s

Specialties Co. v. 91 E. End Corp., 366 N.E.2d 866, 867

(N.Y. 1977) (“Although described as a guarantee this writing

is actually an agreement or promise to pay appellant’s own

obligation for purchases made on its own account.” (quoting

Deeves & Son v. Manhattan Life Ins. Co., 88 N.E. 395, 396

(N.Y. 1909))); Brewster Transit Mix Corp. v. McLean, 169

A.D.2d 1036, 1037 (N.Y. App. Div. 1991) (“Despite the

parties’ use of the word guarantee, we are of the view that the

nature of defendant’s obligation is the same as that of his

corporation and, therefore, the only reasonable interpretation

of the writing is that which makes defendant a co-obligor of

his corporation’s debts to plaintiff, not a guarantor of the

payment of those debts.” (citing Am. Trading Co. v. Fish, 42

N.Y.2d 20, 24 (1977))). Even if parts of the letter do not

really look like a typical guarantee (i.e., an agreement to pay

a principal obligor’s debt upon the principal obligor’s

default), the same could be said with respect to the letter’s

resemblance to an assignment, especially given what the

document did not say (and what it did). In fact, Hill stated in

the letter that “I have an interest in the Author [Commerce

Bank] and in having the Work published by the Publisher,”

and thereby made these guarantees “as an inducement to the

Publisher to enter into the Agreement.” (JA1139.) He clearly

wanted the book to be published as opposed to expressing any

sort of interest in effecting an assignment of his existing

copyright interest to his employer. In fact, I question whether

he was really concerned with the intricacies of copyright

assignment and the work-for-hire doctrine in the first place.

Finally, the differences between assignment and the

concept of a work for hire weigh against the majority’s

10

assignment determination. The agreement and the letter

could be reasonably read as acknowledging that Commerce

Bank was always the exclusive owner of the manuscript as a

work for hire. After all, the letter basically said as much,

unconditionally guaranteeing that the manuscript “is a work

made for hire within the meaning of the United States

Copyright Law and that the Author is the owner of copyright

in the Work and has full power and authority to enter into the

Agreement.” (JA1139.) Commerce Bank warranted in the

publishing agreement that it “is the sole and exclusive owner

of all rights granted to the Publisher in this Agreement” and

“has full power to enter into this Agreement and to make the

grants herein contained.” (JA1142.) The majority asserts

that, although Hill’s assurance that the manuscript is a work

made for hire is insufficient to make it one, this assurance

nevertheless “denotes an intent to relinquish his interest in the

copyright.” (Majority Opinion at 25 (citing 1 Nimmer on

Copyright § 5.03[B][1][b][ii])).) However, assignment and

work for hire are two different concepts. As I have already

explained in my waiver discussion, TD Bank characterizes

Hill’s assignment assertions as fundamentally mistaken. It is

TD Bank who insists that, because the manuscript is a work

for hire, “TD Bank [as Commerce Bank’s successor] is the

work’s statutory ‘author’ and sole copyright owner on day

one and no transfer to TD Bank is required.” (Appellee’s

Brief at 37 (citation omitted).) Where a work is made for

hire, “the employer . . . is considered the author for purposes

of this title, and, unless the parties have expressly agreed

otherwise in a written instrument signed by them, owns all the

rights comprised in the copyright.” § 201(b). In contrast, a

transfer or assignment implicates “the conveyance” (as §

204(a) puts it) of the owner’s interest to another. A “work for

hire” characterization thereby indicates that the employer has

11

been the exclusive copyright owner from the very beginning.

Nimmer does state that an agreement whereby works

prepared by the employee but not prepared within the scope

of employment are deemed to be works made for hire “may

be regarded as the equivalent of a simple transfer of copyright

from the employee to the employer.” 1 Nimmer on Copyright

§ 5.03[B][1][b][ii]. But the treatise does not provide any

further explanation, and it immediately qualifies the statement

itself by pointing to additional differences between a transfer

and a work for hire, id. (“but will not trigger the various other

legal consequences that flow from the status of a ‘for hire’

work” (footnote omitted)). (See, e.g., Majority Opinion at

20-21 & n.7 (pointing out that work’s status determines

duration of copyright, author retains certain non-waivable

rights to cancel transfer after 35-40 years and perhaps

waivable moral rights in proper attribution, and creator of

work for hire lacks such rights).) In any event, the specific

letter at issue here still fails to manifest “an unmistakable

intent to effect a present transfer” of Hill’s copyright interest

(id. at 24).

For the foregoing reasons, I would vacate the District

Court’s summary judgment disposition on the question of

copyright ownership and remand for further proceedings.

12