Amicus Curiae Brief — Community for Creative Non-Violence v. Reid

IN THE

Supreme Court of the United States

OCTOBER TERM, 1988

COMMUNITY FOR CREATIVE NON-VIOLENCE, et al.,

Petitioners,

Vv.

JAMES EARL REID,

Respondent.

On Petition for a Writ of Certiorari to the United States

Court of Appeals for the District of Columbia Circuit

BRIEF OF THE COPYRIGHT JUSTICE

COALITION AS AMICUS CURIAE

CHARLES D. OSSOLA *

HUNTON & WILLIAMS

2000 Pennsylvania Ave., N.W.

Suite 9000

Washington, D.C. 20006

(202) 955-1523

Counsel for The Copyright

Justice Coalition

August 19, 1988 * Counsel of Record

WILSON - Eres Printinec Co., Inc. - 789-0096 - WASHINGTON, D.C. 20001

.» *

—_. r,t i. i

QUESTIONS PRESENTED

1. Whether a commissioned work created by an inde-

pendent artist outside of the traditional employment

relationship should be classified as a ‘“‘work made for hire”

under the 1976 Copyright Act, 17 U.S.C. § 101, where

the parties did not agree in writing that the work should

be considered to be “made for hire,” and where the work

does not fall within one of the nine categories of works

enumerated in subdivision (2) of the definition of that

term.

2. Whether Congress intended subdivision (2) of the

definition of “work made for hire” in the 1976 Copy-

right Act, 17 U.S.C. § 101, to preempt the common law

“direct and supervise” test formerly used to determine

the work made for hire status of commissioned works

under the 1909 Copyright Act, 17 U.S.C. § 26 (repealed

1976).

(i)

TABLE OF CONTENTS

Page

QUESTIONS PRESENTED .......................... SE nae i

TABLE OF AUTHORITIRS .....................2.........0.-.cees00s- iv

INTEREST OF AMICUS CURIAE ........... eine l

SUMMARY OF ARGUMENT... 5

THE QUESTIONS PRESENTED ARE SUBSTAN-

EE EL i 8

I. THIS CASE’ PRESENTS AN ISSUE OF NA-

TIONAL IMPORTANCE FOR ALL PARTIES

WHO GREATE OR USE COPYRIGHTABLE

Il. GRANTING THE PETITION IS NECESSARY

TO! RESOLVE A CLEAR’ AND: IRRECONCIL-

ABLE CONFLICT IN. THE’ COURTS OF AP-

lester eereveewrerecncscnevaceeseeseneee = oe: | 13

ce apianbes ilbbcaenanaes 16

(iii)

iv

TABLE OF AUTHORITIES

CASES: Page

Aitken, Hazen, Hoffman, Miller, P.C. v. Empire

Const. Co., 542 F. Supp. 252 (D. Neb. 1982)... 13

Aldon Accessories Ltd. v. Spiegel, 738 F.2d 548

(2d Cir.), cert. denied, 469 U.S. 982 (1984)... 6, 7, 12,

13, 14

Bleistein v. Donaldson Lithographing Co., 188 U.S.

Rs ai il

Blum v. Kline, No. 86 CIV 8149, slip op. (S.D.N. y.

St Titi: SEEN accasascetenicaniconsatialiiuiidianssiemniaindinnameetinddaanaa 12

BPI Systems Ince. v. Leith, 532 F. Supp. 208 CW. D.

sR SR RATE nee Poe CA Ba! Ne) 2 13

Brunswick Beacon v. Schock-Hopchas Publishing

Co., 810 F.2d 410 (4th Cir. 1987) 0.6, 1A

Burrow-Giles Lithographic Co. v. Sarony, 111 U.S.

ie x

Childers v. High Society Magazine, 557 F. Supp.

978 (S.D.N.Y. 1983) ... 13

Colliery Eng. Co. v. United “‘Corresp. “Schools Co., “

94 Fed. 152 (C.C.S.D.N.Y. 1899) ........0.00.0000000... 8

Community for Creative Non-Violence v. Reid,

846 F.2d 1485 (D.C. Cir. 1988), petition for cert.

filed, No. 88-293 (Aug. 17, 1988) —................ 6,7, 10°35

Dodd v. Fort Smith Special School Dist. No. 100,

666 F. Supp. 1278 (W.D. Ark. 1987) 10

Easter Seal Society for Crippled Children and

Adults of Louisiana, Inc. v. Playboy Enterprises,

815 F.2d 323 (5th Cir. 1987), cert. denied, 108

S.Ct. 1280 (1988) .................. leaps hciaaaiameaial 4, 6, 7, 14, 15

Evans Newton Inc. v. Chicago Systems Software,

793 F.2d 889 (7th Cir.), cert. denied, 107 S.Ct.

434 (1986) ae iat oR ene 2 Ban an a wet eS 6,14

Follett v. Arbor House Publishing Co., 497 F.

Supp. 304 (S.D.N.Y. 1980) | Sat 11

Little v. Gould, 15 F.Cas. 612 (C, C. N. D. N. -

1852) .. 8

Meltzer v. Zoller, 520 F. Supp. ‘847 (D. N J. 1981) 13

Mister B Textiles, Inc. v. Woodcrest Fabrics, Inc.,

523 F. Supp. 21 (S.D.N.Y. 1981) awe tes 13

Vv

TABLE OF AUTHORITIES—Continued

Page

Real Estate Data Inc. v. Sidwell, 809 F.2d 366

(7th Cir. 1987) ae et 14

Smith v. Montoro, 618 F.2d 602 (9th Cir. 1981). 10

STATUTES:

17 U.S.C. § 101 (1982) ................. Fo AR a 2,11

17 U.S.C. § 106 (1982)... Ee he Ee, Sa 8,9

Oe rs aio cccsccconessncsicdnsmonsertinnies 8

17 U.S.C. § 201(b) (1982). aASE, eo

Oe es ee I oo vcscincctossscanecsintocennacsnnm M 10

Act of May 31, 1790, Ch. 15, 1 Stat. 124 . 8

Pub. L. No. 60-349, 60 Stat. 1075 (1909), repealed

by Pub. L. No. 94-553, 90 Stat. 2541 (1976),

codified at 17 U.S.C. $$ 101-810 (1982)... 8, 9, 13

LEGISLATIVE HISTORY:

2 Legislative History of the 1909 Copyright Act

(E. Brylawski & A. Goldman eds. 1976) .......... 11

MISCELLANEOUS:

Hardy, Copyright Law’s Concept of E »ployment

—What Congress Really Intended, 35 J. Copy-

right Soc. U.S.A. 210 (April 1988) - 9

IN THE

Supreme Court of the United States

OCTOBER TERM, 1988

No. 88-293

COMMUNITY FOR CREATIVE NON-VIOLENCE, et al.,

Petitioners,

V.

JAMES EARL REID,

Respondent.

On Petition for a Writ of Certiorari to the United States

Court of Appeals for the District of Columbia Circuit

BRIEF OF THE COPYRIGHT JUSTICE

COALITION AS AMICUS CURIAE

The Copyright Justice Coalition (CJC) submits its

brief amicus curiae in support of the petition for cer-

tiorari filed by the Community for Creative Non-Violence,

et al. (CCNV) in this case. All parties have consented

to the filing of this brief by the CJC, and their consent

letters have been filed with the Clerk of this Court.

INTEREST OF AMICUS CURIAE

The CJC is an ad hoe group of 50 organizations whose

over 100,000 members comprise a large segment of the

community of independent creators in the United States.’

' The members of the CJC are listed in Appendix A to this brief.

2

On behalf of its members, the CJC participated as amicus

curiae in support of the respondent in the court below.

Counsel for CJC filed an extensive brief tracing the legis-

lative history of the “work made for hire” doctrine,’ and

participated in the oral argument before the court. Al-

though it argued for and agrees with the District of

Columbia Circuit’s resolution of the work for hire ques-

tions presented in this case, the CJC urges this Court to

grant the petition for certiorari because of the overrid-

ing need to establish uniform rules governing the deter-

mination of authorship and copyright ownership under

the United States copyright laws.

The CJC represents individual creators throughout the

country whose artistic and financial livelihoods are pro-

foundly affected by the work for hire rules of the Copy-

right Act of 1976. 17 U.S.C. $$ 101 et seg. Under those

rules, the creators of copyrightable works are not treated

as either authors or copyright owners of their own works

and are divested of all copyright rights in those works.

Id. $ 201(b). Instead, the “author” and copyright owner

of a work for hire is either (i) the employer of the crea-

tor who is hired as an “employee,” or (ii) the party that

commissioned the work when the parties have agreed in

writing that it shall be considered “for hire”, and the

work falls within one of nine enumerated categories of

commissioned works eligible for work for hire treatment

under the statute. /d. $191 (definition of “work made

for hire’).

The individual creators represented by the CJC have

a strong and vital interest in confining the scope of this

doctrine to the limits that Congress established. The

membership of CJC organizations include free-lance

photographers, artists, illustrators, writers, cartoonists,

actors, and songwriters. They are not traditional em-

* For convenience, the statutory phrase “work made for hire”

will hereafter be shortened to “work for hire.”

3

ployees who receive a salary and other typical employ-

ment benefits such as insurance and paid vacation time.

Instead, they produce photographs, graphic designs, il-

lustrations, magazine articles, books, advertising mate-

rials, cartoons, musical compositions and other creative

works “on commission,” an arrangement whereby the

creator is hired and paid by a commissioning party on a

project-by-project basis to create a particular work for

a specific purpose.

It is critically important for free-lance creators to be

able to claim authorship of their own works in order to

build a reputation that attracts new clients. Equally as

important, free-lance creators rely heavily on the income-

producing potential associated with ownership of the

copyrights in their works. Copyright ownership ensures

that the free-lance creator can sell, assign, or license his

work, and can use that work as the basis for creating

derivative works. Rights to the income derived from

royalties that result from exploitation of the copyright in

original and derivative works are an integral part of a

free-lance creator’s ability to sustain his business and to

build even a minimal base of financial security.

Work for hire has wreaked havoc with creators’ ability

to establish and preserve any degree of financial stability.

Creators’ fundamental rights of authorship and copyright

ownership have been usurped through the systematic use

of work for hire arrangements covering commissioned

works that are statutorily ineligible for work for hire

treatment. Works of fine art such as sculpture and

photographs taken for advertisements, for example, are

not included in the categories of works enumerated in

subsection (2) of the definition of “work made for hire”

and thus cannot legally be the subject of a work for hire

agreement. Yet the failure of many courts to recognize

the exclusivity of the categories of commissioned works

set forth in subdivision (2) of the definition has allowed

commissioning parties to ignore this statutory limitation.

4

Furthermore, many CJC creators who refuse to sign

work for hire agreements find themselves in the predica-

ment that the respondent in this case experienced in dis-

trict court. They face the prospect in many jurisdictions

of being classified as “employees” under subsection (1) of

the definition of work for hire. As statutory “employees,”

creators lose all authorship and copyright rights in their

works as a matter of law, without any written agreement

so providing, without the creators receiving any of the

usual benefits of an employment relationship, and usually

without any awareness by the parties that such a rela-

tionship exists.

The decision of the court below, together with that of

the Fifth Circuit in Easter Seal Society for Crippled

Children v. Playboy Enterprises, 815 F.2d 323 (5th Cir.

1987), cert. denied, 108 S.Ct. 1280 (1988), protects free-

lance creators from the confiscatory consequences of an

overbroad work for hire doctrine. By confining the

scope of that doctrine to the limits that Congress intended

when it enacted the Copyright Act of 1976, Easter Seal

and the decision below ruled that the fundamental pur-

pose of that statute—to foster and encourage creativity—

should not be eviscerated by an artificial presumption

that the party commissioning a work is deemed the “em-

ployer” of an independent creator. Congress never en-

visioned that the statute would be read to disrupt and

destroy the incentives for free-lance creators to exercise

their talents. The protection offered by the District of

Columbia and Fifth Circuits, however, is available only. to

the relatively few CJC creators who live and work in

those jurisdictions. The majority of CJC members face

the dilemma of either signing work for hire agreements,

or being considered an “employee” for copyright pur-

poses only. Unless that dilemma is resolved favorably for

free-lance creators throughout the country, work for hire

will dry up our national resources of free-lance creative

talent.

5

SUMMARY OF ARGUMENT

This case presents issues of central importance to the

fair administration of the United States copyright laws.

The concept of work for hire has been a difficult and trou-

bling one for Congress and courts alike throughout this

century. Before the 1976 Act, no statutory definition of

that concept existed. Absent statutory guidance, the courts

gradually shaped a doctrine that divested free-lance

creators working “on commission” of all authorship and

copyright rights on the basis of a legal fiction that pre-

sumed the parties had intended that result. In the fif-

teen years that preceded enactment of the Copyright Act

of 1976, the Copyright Office and representatives of

creators’ interests demonstrated the need for drastically

limiting the applicability of that legal fiction. The result

was a statutory definition of work for hire that estab-

lished a dichotomy between two fundamentally different

types of work—those created by traditional (i.e., salaried |

employees, and those produced on commission by inde-

pendent creators. The primary significance of the new

definition with respect to commissioned works was that it

restricted the applicability of the work for hire doctrine

only to the circumstances explicitly authorized by the

statute.

Despite these efforts, controversy over the proper inter-

pretation of the work for hire doctrine has continued. A

steady stream of confused and often conflicting decisions

has emerged from the courts ever since the effective date

of the 1976 Copyright Act. As the court below noted,

commentators continue to express their concern about

the chaotic state of the copyright law in this area and to

voice nearly uniform disagreement with the decisions

that fail to acknowledge the limitations on the applicabil-

ity of work for hire imposed by Congress in 1976.

Against this background, the confusion and lack of

predictability have caused substantial hardship for crea-

tors and users alike in determining authorship and copy-

6

right ownership in commissioned works. In the Second,

Fourth, and Seventh Circuits, free-lance creators are con-

sidered “employees” for work for hire purposes if a suffi-

cient degree of control is exercised by the commissioning

party. See Aldon Accessories Ltd. v. Spiegel, 738 F.2d

548 (2d Cir.), cert. denied, 469 U.S. 982 (1984); Evans

Newton Ine. v. Chicago Systems Software, 793 F.2d 889

(7th Cir.), 107 S.Ct. 434 (1986); Brunswick Beacon v.

Schock-Hopchas Publishing Co., 810 F.2d 410 (4th Cir.

1987). Accordingly, the commissioned works of most

free-lance creators in those jurisdictions are works for

hire regardless of the type of work involved or the exist-

ence of a written agreement.

In contrast, free-lance creators in the District of Co-

lumbia and Fifth Cirexits are not considered “employees”

of the parties that commissioned them, and their works

qualify as works for hire only if the statutory conditions

set forth in subsection (2) of the definition of that term

are satisfied. Community for Creative Non-Violence v.

Reid, 846 F.2d 1485 (D.C. Cir. 1988), petition for cert.

filed, No. 88-293 (Aug. 17, 1988); Easter Seal Society

for Crippled Children & Adults of Louisiana, Inc. »v.

Playboy Enterprises, supra. Free-lance creators operat-

ing in other jurisdictions must await their circuit courts’

decisions before they will know whether they will have a

meaningful opportunity to avoid having all their works

classified as works for hire under the “employee” prong

of the statutory definition.

In three of these cases (Aldon, Evans Newton and

Easter Seal), this Court has declined to resolve the con-

flict in the Circuits over the meaning of the 1976 revi-

sions to the work for hire doctrine. In explaining why

the Easter Seal case was not an appropriate vehicle for

resolving the work for hire issue, the Solicitor General

nonetheless acknowledged that “the issue on which the

lower courts are divided is important and may in the

future warrant resolution by [this] Court.” Brief for

7

the United States as Amicus Curiae at 8, Easter Seal

(No. 87-482). While prior cases may not have been ap-

propriate for consideration by this Court, this case

presents an ideal opportunity to settle the conflict.

First, unlike Aldon and Easter Seal, in which work for

hire arose as an affirmative defense in the context of an

infringement action, this case involves a dispute between

the two primary players in the work for hire controversy :

the commissioning party (CCNV) and the creator him-

self (Reid). Both parties claim authorship of and copy-

right ownership in the sculpture in dispute, and it is

clear that CCNV’s claim can succeed only if Reid is clas-

sified as an “employee” for copyright purposes. Reid's

position, on the other hand, is that a commissioned work

can qualify as a work for hire only if both statutory con-

ditions set forth in subsection (2) of the definition are

satisfied. Thus, this case squarely presents the funda-

mental questions that have divided the lower courts, in a

case involving the parties whose interests are most di-

rectly affected by the work for hire controversy.

Second, the opinion of the court below makes unmis-

takably clear that its interpretation of the 1976 revi-

sions to work for hire makes conflict with Aldon Acces-

sories “unavoidable.” CCNV v. Reid, 846 F.2d at 1:97

n.18. This case thus presents the juxtaposition of two

fundamentally different and irreconcilable interpretations

of an important federal statute.

Finally, further delay in the resolution of this con-

troversy will cause substantial harm to the creators who

are the intended beneficiaries of the protections afforded

by the copyright laws. Free-lance creators lack the re-

sources to litigate work for hire questions repeatedly

until an appropriate case is finally accepted for review

by this Court. This case is exceptional not only because

the artist’s position was-vindicated, but also because the

artist had the resources to litigate the questions now

8

before this Court. Few, if any, free-lance creators can

afford to sustain this sort of litigation. Thus, although

confusion in the lower courts will continue, it is exceed-

ingly unlikely that another work for hire case involving

a creator as a party will come before this Court for

many years. The CJC therefore urges the Court to take

this opportunity to settle the work for hire controversy.

THE QUESTIONS PRESENTED ARE SUBSTANTIAL

I. THIS CASE PRESENTS ISSUES OF NATIONAL

IMPORTANCE FOR ALL PARTIES WHO CREATE

OR USE COPYRIGHTABLE WORKS

A fundamental tenet of United States copyright law

is that a creator of copyrightable work has the right to

proclaim himself its author and to reap the benefits ac-

corded the owner of the copyright in that work. See 17

U.S.C. § 106. Section 201 of the Copyright Act of 1976

thus provides that “|c)opyright in a work protected un-

der this title vests initially in the author or authors of

the work.” Jd. § 201‘a). Congress has never defined the

term “author” in the various revisions of the copyright

laws that have been enacted since the first statute was

passed in 1790. Act of May 31, 1790, Ch. 15, 1 Stat.

124. Despite the absence of an explicit statutory defini-

tion, the principle is well-established that the person who

actually creates the work should normally be deemed its

“author.” See Burrow-Giles Lithographic Co. v. Sarony,

111 U.S. 53, 58 (1884) (quoting with approval the defi-

nition of “author” as “he to whom anything owes its

origin; origination; maker... .”).

The work for hire concept is an exception to this gen-

eral rule. The concept first emerged during the develop-

ment of common law copyright and was codified for the

first time in the 1909 Copyright Act. Act of March 4,

1909, § 26, Pub. L. No. 60-349, Ch. 320, 35 Stat. 1075.

See Colliery Eng. Co. v. United Corresp. Schools Co., 94

Fed. 152 (C.C.S.D.N.Y. 1899); Little v. Gould, 15 F.

Cas. 612 (C.C.N.D.N.Y. 1852). The key element of the

concept always has been the use of a statutory presump-

tion to elevate to the status of “author” someone other

than the actual creator. The 1909 Act, for example,

stated that the term “author . . . shall include an em-

ployer in the case of a work made for hire.” 17 U.S.C.

$26 ‘repealed 1976). More recently, Congress provided

in the 1976 Copyright Act that “|i]n the case of a work

made for hire, the employer or other person for whom

the work was prepared is considered the author... .”

Id. § 201(b). As author, such employer or other person

“owns all of the rights comprised in the copyright .. .

unless the parties expressly agree otherwise in a written

instrument ....” Jd. § 201‘b).

Authorship and ownership of copyright under the 1976

Act thus turn on whether the work quajifies as a work

for hire. If the work at issue is not a work for hire, its

creator is considered the author and initial copyright

owner. But if the creation is a work for hire, then the

author and copyright owner is the employer or, if cer-

tain statutory conditions are satisfied, the party that

commissioned the work. Where a commissioned work is

involved, therefore, entitlement to the benefits of copy-

right ownership enumerated i: £106 of the 1976 Act

depends upon how the work for hire question is resolved.

A large percentage of the copyrightable works pro-

duced in this country for commercia! purposes are cre- ~

ated by persons who are not traditional employees of the

parties for whom the work is done.” Publishers and ad-

*A 1955 Copyright Office study revealed that approximately 40

percent of copyright registrations issued by the Copyright Office

were for works for hire. See Hardy, “Copyright Law's Concept of

Employment—-What Congress Really Intended.” 25 J. Copyright

See. U.S.A. 210 (April 1988). The percentages of certain types of

works registered as works for hire were even higher: 92 percent

of motion picture registrations and 93.7 percent of periodical regis-

10

vertising agencies increasingly rely on specialized out-

side talent to produce highly sophisticated creative work

that cannot be done in-house. Free-lance creators who

carve out specialties in advertising photography or med-

ical illustration are customarily paid a fee that compen-

sates the creator only for the specific use contemplated

by the commissioning party. Such compensation does not

reflect the economic value of the work over the life of

the copyright term, which is seventy-five years from the

year of publication if the creation is a work for hire.

17 U.S.C. § 302(c). Nor is the compensation paid free-

lance creators accompanied by employment benefits that

may warrant foregoing the benefit of retaining copyright

rights. In order to maintain economic viability, free-

lance creators therefore rely heavily on their fundamental

rights to claim authorship of and copyright ownership

in the works they create. These intangible rights are the

only valuable business assets that most free-lance crea-

tors have.

Under a work for hire arrangement, independent crea-

tors lose those rights. They cannot claim authorship of

their works by reproducing them in their portfolios. They

cannot require a commissioning party to acknowledge

their authorship of a work for hire because the statutory

“author” is the commissioning party and not the crea-

tor." They cannot license others to use the work for

trations were issued for works for hire. Jd. n.2. Current statistics

are not known because the Copyright Office does not keep records

of the percentages of works registered on a “for hire” basis. How-

ever, the expanding reliance of users on outside talent to fulfill spe-

cific needs suggests that the percentage of works registered as works

for hire is much greater today than it was over 30 years ago.

* As the court below acknowledged, there is a basis outside the

Copyright Act for a creator to require that he be given authorship

credit. See CCNV wv. Reid, 846 F 2d at 1498, citing Smith v. Mon-

toro, 648 F.2d 602 (9th Cir. 1981); Dodd wv. Fort Smith Special

School Dist. No. 100, 666 F. Supp. 1278, 1284-85 (W_D. Ark. 1987) ;

ee er a a

11

other non-competing purposes because the statute vests

copyright rights exclusively in the commissioning party.

Nor can creators subject to a work for hire arrangement

use the original work as the basis for creating derivative

works; that right also vests in the commissioning party

upon creation of a work for hire.

For these reasons, free-lance creators have long sup-

ported legislative attempts to confine the work for hire

doctrine to its origins in the traditional employment re-

lationship.’ Those efforts finally came to fruition with

the passage of the 1976 Copyright Act. The new copy-

right statute contained a compromise definition of work

for hire that for the first time distinguished between

works created by employees and works created by inde-

pendent contractors on commission. Since the focus in

the legislative history was on crafting the circumstances

under which commissioned works would be eligible for

work for hire treatment, Congress did not pay much at-

tention to the “employee” prong of the definition. The

ultimate result was a definition of work for hire that

incorporated but did not define works created by em-

ployees, and that provided that certain types of commis-

sioned works would be eligible for work for hire treat-

ment if the parties expressly so agreed in a written in-

strument. 17 U.S.C. $101. The absence of a statutory

Follett v. Arbor House Publishing Co., 497 F. Supp. 304, 311

($.D.N.Y. 1980).

5 In the course of the hearings that preceded the 1909 Act, pub-

lishers acknowledged that payment of a salary to an employee

“entitle[d] an employer to all rights to obtain a copyright in any

work performed during the hours for which such salary was paid.”

2 Legislative History of the 1909 Copyright Act at 65 (E. Brylawski

& A. Goldman eds. 1976) (statement of Mr. A.W. Elson of A.W.

Elson & Co., educational art publishers). Moreover, an early Su-

preme Court case involving work for hire presumed that vesting

ownership of copyrightable works in employers was logica! in the

context of the traditional employment relationship. See Bleistein

v. Donaldson Lithographing Co., 188 U.S. 239 (1903).

12

definition of “employee,” together with ambiguity con-

cerning whether a commissioned work that failed the

subdivision (2) tests could qualify as a work for hire

under subdivision (1), made the congressional compro-

mise on the work for hire language a precursor to con-

tinued uncertainty and disagreements.

If the work for hire controversy is not resolved by

this Court, free-lance creators have the most to lose.

Much of the litigation involving work for hire questions

takes place in New York, where many creators live and

work. Notwithstanding the decision by the court of ap-

peals in this case, courts in that jurisdiction are obliged

to follow the Second Circuit’s ruling in Aldon Accessor-

ies.” Under that decision, the copyrightable works of

free-lance creators operating under the supervision and

control of a publisher or advertising agency are auto-

matically “employee” works for hire regardless of the

type of work involved, whether or not a traditional em-

ployment relationship exists, and irrespective of whether

the parties executed a written agreement. Unless this

Court overrules Aldon Accessories and adopts the reason-

ing of the court below, thousands of free-lance creators

will lose all rights in their works as a result of an after-

the-fact presumption that they functioned as “em-

ployees,” even though they received no employment

benefits.

*A recent post-Aldon Accessories district court decision in the

Southern District of New York illustrates the harm that will befall!

CJC members if the Second Circuit’s reasoning is allowed to stand.

In Blum v. Kline, No. 86 CIV 8149, slip op. at 2-3 (S.D.N.Y. May 17.

1988), the court applied Aldon Accessories in ruling that an in-

dividual photographer, who concededly was not “actually an em-

ployee” of the fashion magazine that commissioned him, would

nevertheless be considered an “employee” for copyright purposes

if the magazine actively directed and supervised his work. The

court further concluded that the extent of supervision and control

could be determined only after a full-fledged trial at which the

roles played by the parties would be explored.

13

Il. GRANTING THE PETITION IS NECESSARY TO

RESOLVE A CLEAR AND IRRECONCILABLE

CONFLICT IN THE COURTS OF APPEALS

The work for hire cases that arose in the first few

years after the 1976 Copyright Act went into effect on

January 1, 1978 suggested that the courts would adhere

to Congress’ intent that subdivision (2) of the definition

of work for hire should be the exclusive source for deter-

mining the eligibility of commissioned works for that

status. These first few cases did not seriously entertain

the notion that a commissioned work that cannot meet

the subdivision (2) criteria can nevertheless qualify as

a work for hire under subdivision (1). See Childers v.

High Soe’y Magazine, 557 F. Supp. 978, 984 (S.D.N.Y.

1983); Aitken, Hazen, Hoffman, Miller, P.C. v. Empire

Constr. Co., 542 F. Supp. 252, 257 (D.Neb. 1982); BPI

Sys., Ine. v. Leith, 532 F. Supp. 208, 210 (W.D. Tex.

1981); Mister B Textiles, Inc. v. Woodcrest Fabrics, Inc.,

523 F. Supp. 21, 23-24 (S.D.N.Y. 1981); Meltzer v.

Zoller, 520 F. Supp. 847, 854-55 (D.N.J. 1981).'

The Second Circuit’s 1984 decision in Aldon Acces-

sories reversed that trend. In that case, the Second Cir-

cuit held that a commissioned work produced by an inde-

pendent contractor was a work for hire under the “em-

ployee” prong of the statutory definition if the commis-

sioning party exercised a sufficient degree of direction

and control over the efforts of the contractors. The Sec-

ond Circuit noted that judicial decisions construing the

7In the Meltzer case, for example, the court held that architec-

tural drawings could not be works for hire under the 1976 Act

because they were not included in the categories listed in subdivi-

sion (2) of the definition of that term. 520 F. Supp. at 854. This

was true, the court reasoned, even though architectural drawings

were considered works for hire under the 1909 Act, because Con-

gress was presumably aware of the prior applications of that concept

and deliberately excluded architectural plans from the subdivision

(2) categories. /d.

14

1909 Act found an employer-employee relationship estab-

lished even where the creator indisputably was not a

“regular or formal” employee. Aldon Accessories, 738

F.2d at 552 (citations omitted). The court concluded

that “{njothing in the 1976 Act or its legislative history

indicates that Congress intended to dispense with this

prior law... .” Id. According to the Second Circuit,

subdivision (2) of the work for hire definition was in-

tended to apply only “where the contractor did all of the

creative work and the hiring party did little or nothing.”

Id. (citation omitted).

The Fourth Circuit’s decision in Brunswick Beacon,

Ine. v. Schock-Hopchas Publishing Co., supra, adopted the

Aldon Accesso,ies analysis. That court agreed that an

independent contractor could be classified as an employee

if a sufficient degree of supervision and control was

exercised by the commissioning party. 810 F.2d at 413.

The court held, however, that there was insufficient evi-

dence to show that supervision and control was actually

exercised over the advertisements in question, and thus,

that the newspaper staff were not “employees” of the

advertisers. Jd,

The Seventh Circuit extended the Aldon Accessories

analysis in Evans Newton Inc. v. Chicago Systems Soft-

ware, supra. In holding that software created by an

independent contractor was a work for hire, the Seventh

Cireuit viewed the mere 1ight to direct and control the

creator’s work as sufficient to render him an “em-

ployee”—even in the absence of any evidence that control

was actually exercised. Evans Newton, 793 F.2d at 894.

See also Real Estate Data Inc. v. Sidwell, 809 F.2d 366

(7th Cir. 1987) (applying 1909 Act, to reach the same

result with respect to maps).

The Aldon Accessories interpretation was resoundingly

rejected by the Fifth Circuit in Easter Seal Society v.

Playboy Enterprises, supra. Adopting what it called a

15

“literal interpretation” of the 1976 definition of work for

hire, the Fifth Circuit held that subsection (1) should

be applied only to “agency-law” employees, and that eli-

gibility of all works by independent contractors to be

works for hire must be determined solely by reference to

whether the subdivision (2) conditions are satisfied.

Easter Seal, 815 F.2d at 334-35.

The court below agreed with the Fifth Circuit's

“literal interpretation.” It held that a work created by

an independent contractor (i.e., a creator who is not an

employee under agency law principles) qualifies as a

work for hire only if the two conditions set out in sub-

division (2) are satisfied. The work must fall within one

of the eligible categories listed in that subdivision, and

the parties must agree in writing that the work shall be

considered “for hire.” 846 F.2d at 1494. The court

found that the sculpture commissioned by CCNV in this

case could not be a work for hire because respondent was

clearly not an “employee” of CCNV under agency prin-

ciples, and because neither of the statutory conditions

prescribed by subdivision (2) of the work for hire defini-

tion were satisfied.

These precedents make clear that a stark conflict exists

between the Second, Seventh and Fourth Circuits on the

one hand, and the District of Columbia and Fifth Cir-

cuits on the other. There is clear and unequivocal dis-

agreement about whether Congress intended in the 1976

Act to overrule the common-law tests that developed

under the 1909 Act, and to “radically revise |the| ‘work

for hire’ doctrine.” 846 F.2d at 1496 (citing Easter Seal,

supra, 815 F.2d at 330) (emphasis in original). The

circuit courts further disagree about whether subdivision

(2) of the 1976 definition was intended to be the exclu-

sive basis for determining whether a commissioned work

created outside the traditional employment relationship

qualifies as a work for hire.

16

With five circuits on record as clearly divided over the

proper interpretation of the work for hire provisions of

the 1976 Act, the remaining circuits will no doubt choose

between two conflicting and irreconcilable interpretations.

Only review by this Court can forestall a further deepen-

ing of the conflict that is presented clearly and unequiv-

ocably by the decision in this case.

CONE LUSION

This case presents fundamental issues of national

importance to the fair and effective administration of

United States copyright laws. Work for hire has been

interpreted by three circuit courts to deprive creators of

the authorship and copyright rights that are essential to

their economic survival. Such an interpretation under-

mines the central purposes of the copyright laws, which

are to encourage creative activity for the benefit of the

public and to ensure fair compensation to creators for

their contributions. In adopting an interpretation that is

consistent with these purposes, the decision below presents

a clear opportunity for this Court to settle the work for

hire controversy that has sv divided the lower courts.

Respectfully submitted,

CHARLES D. OssSoLa *

HUNTON & WILLIAMS

2000 Pennsylvania Ave., N.W.

Suite 9000

Washington, D.C. 20006

(202) 955-1523

Counsel for The Copyright

Justice Coalition

August 19, 1988 * Counsel of Record

la

APPENDIX A

THE COPYRIGHT JUSTICE COALITION

Advertising Photographers of America

Advertising Photographers of America—LA

American Federation of Teachers, AFL-CIO

American Federation of Television and Radio Artists,

AFL-CIO

American Society of Journalists and Authors

American Society of Magazine Photographers

Art Directors Club of New York

Art Directors Club of Washington

Artists in Print

Association of Medical Illustrators

Authors Guild, Ine.

Boston Visual Artists Union

Committee of Interns and Residents

Council of Writers Organizations

Albany Writers Guild

Aviation Space Writers Association

Boating Writers International

Chicago Women in Publishing

Dance Critics of America

Editorial Freelancers Association

Independent Writers of Chicago

International Motor Press Association

Midwest Travel Writers Association

Mystery Writers of America

National Association of Science Writers

2a

National Book Critics Circle

Outdoor Writers Association of America

Philadelphia Writers Association

Romance Writers of America

Science Fiction Writers of America

St. Louis Writers Guild

Travel Journalists Guild

United States Ski Writers Association

Washington Independent Writers

Writers Guild of America East

Foundation for the Community of Artists

Graphic Artists Guild

National Artists Equity Association

National Cartoonists Society

National Writers Union

Pen American Center

Sereen Actors Guild, AFL-CIO

Society of Authors Representatives

Society of Illustrators of New York

Songwriters Guild of America

Visual Artists Association

Writers Watch