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

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x Court, U.S.

, FIL ED

No. 88-293 SEPH E SPANIOL, JR.

ERK

IN THE ——_

Supreme Court of the United States

OCTOBER TERM, 1988

COMMUNITY FOR CREATIVE NON-VIOLENCE, et al.,

Petitioners,

JAMES EARL REID,

Responden:.

On Writ of Certiorari to the

United States Court of Appeals

for the District of Columbia Circuit

BRIEF AMICUS CURIAE OF THE

PROFESSIONAL PHOTOGRAPHERS OF AMERICA, INC,

IN SUPPORT OF RESPONDENT

DAviID LADD *

DAVID E. LEIBOWITZ

BRUCE G, JOSEPH

THOMAS W. KIRBY

WILEY, RFIN & FIELDING

1776 K Street, N.W.

Washington, D.C. 20006

(202) 429-7000

Counsel for Amicus Curiae

The Professional

Photographers of America

January 30, 1989 * Counsel of Record

WILSON - Eres PRINTING Co., INC. - 789-0096 - WASHINGTON, D.C. 20001

TABLE OF CONTENTS

Oe e eee eee ere eee eer

MENT

eee eee eee eee ee eee eee ee ee eee ee ee eee Tees

ARGUMENT

I. The Court of Appeals Correctly Determined

that Independent Contractors Under Agency

Law Are Not Employees Within the Meaning

ERA eR

A. The Ordinary Meaning of the Work For

Hire Doctrine Distinguishes between Em-

ployee and Independent Contractor Works...

B. The Legislative History of the Work For

Hire Compromise Demonstrates a Clear

Understanding that Independent Contrac-

tors Under Agency Law Were Not “Em-

ployees”’ Within the Meaning of the First

Clause of the Definition 2-200...

1. The 1958 Varmer Study...

2. The Register’s 1961 Report...

3. The 1963 Draft Bill and Comments

4. The 1964 Draft Bill and Comments ...........

5. The 1965 Compromise..................................

6. Later Exposition of the Compromise ......

C. The Use of Agency Law Standards To Dif-

ferentiate Salaried or Other Regular Em-

ployees from Independent Contractors is

Mandated by Copyright Policy 00000000000...

II. Proper Interpretation of the Joint Works Doc-

trine Is Essential To Preserve the Protection

Afforded Independent Contractors by Congress..

TABLE OF AUTHORITIES

CASES: Page

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

Constr. Co., 542 F. Supp. 252 (D. Neb. 1982). 26

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

548 (2d Cir.), cert. denied, 469 US. 982

CRED : ccitcessaas 23

American Fed'n of Unions 1 v. . Equitable ‘Life Ae

surence Soc’y, 841 F.2d 658 (5th Cir. 1988).. 9

Brattleboro Publishing Co. v. Winmill Publishing

Corp., 369 F.2d 565 (2d Cir. 1966) .................. 10, 22-23

Brunswick Beacon, Inc. v. Schock-Hopchas Pub-

lishing Co., 810 F.2d 410 (4th Cir. 1987)... 23

Campbell v. Commissioner, 87 F.2d 128 (7th Cir.

1936), cert. denied, 301 U.S. 688 (1937)... 8

Childers v. High Society Magazine, 561 F. Supp.

TR AS eee 27

Community for Creative Non-Violence v. Reid,

846 F.2d 1485 (D.C. Cir. 1988) 6, 21-22, 23-24, 25

Dumas v. Gommerman, No. 87-6542 (9th Cir.

Jan. 13, 1989) (LEXIS, Genfed library, USApp

file) .. =e ...passim

Easter Seal “Soc’y fer ‘Crippled ‘Children ‘end

Adults v. Playboy Enterprises, 815 F.2d 323

(5th Cir. 1987), cert. denied, 108 S. Ct. 1280

(a 6, 8-9, 10, 21-22, 23-24

Meltzer v. Zoller, 520 F. Supp. 847 (D.NJ.

Me tealf & Eddy v v. _ Mitchell, 269 U.S. 514 (1926)... 8

Mills Music, Inc. v. Snyder, 469 U.S. 153 (1985)... ‘7, 9,

11, 12

Murray v. Gelderman, 566 F.2d 1307 (5th Cir.

aes 23

Olan Mills, Inc. v. _ Eckerd ‘Druge oe Texas, ‘Ine.

No. 3-88-0353-D (N.D. Tex. 1988), reported in

Pat. Trademark & Copyright J. (BNA), Vol.

ST at BOS (Sem. BR, BOD cccccccecesesccesenee 27

Professional Photographers of Am., Inc. v. 125 0

Camera Co., No. 3-88-2759-D (N.D. Tex. 1988). 27

Rodriquez v. Compass Shipping Co., 451 U.S. 596

(1981) . _nsacesmessutstiiaanigtisatnnaieiannnnnn 7

iii

TABLE OF AUTHORITIES—Continued

Page

Shapiro, Bernstein & Co. v. Jerry Vogel Music

Co., 115 F. Supp. 754 (S.D.N.Y. 1953), rev’d

on other grounds, 221 F.2d 569 (2d Cir.), modi-

fied on other grounds, 223 F.2d 252 (2d Cir.

Ce cesesacesenenecereces

United States v. Sisson, 399 U.S. 267 (1970)...

Vane v. Newcombe, 132 U.S. 220 (1889) 0...

Whelan Assocs., Inc. v. Jaslow Dental Laboratory,

Inc., 609 F. Supp. 1307 (E.D. Pa. 1985), aff'd,

797 F.2d 1222 (3d Cir. 1986), cert. denied,

Tee cnccccecacersncee 26

Yardley v. Houghton Mifflin Co., 108 F.2d 28

(2d Cir. 1939), cert. denied, 309 U.S. 686

EE SSS 10

aon w

CONSTITUTION AND STATUTES:

ee a, ......... 3

Copyri,»t Act of 1909, 17 U.S.C. $1 et seq.

Neen semaenere 10, 13, 14, 19, 22

a passim

Ne ccccvenccesnece 3, 7-8, 25

ES 25

Teen couustatersnseneocsecs 3

LEGISLATIVE MATERIALS:

formance Rights: Hearings Before the Sub-

comm. on Courts, Civil Liberties and _ the

Admin. of Justice of the House Judiciary

Comm., 96th Cong., Ist Sess. (1979) 0000 20, 21

et al. Before the Subcomm. on Courts, Civil

Liberties and the Admin. of Justice of the

House Judiciary Comm., 89th Cong., 1st Sess.

SE 18

TABLE OF AUTHORITIES—Continued

Page

Before the Subcomm. on Courts, Civil Liberties

and the Admin. of Justice of the House Judiciary

Comm., 94th Cong., Ist Sess. (1975) ................... 19

' 94th Cong., 2d Sess. (1976) .o......ececeeceeeeeeeeee 7

Re ne ee 19

U.S. Copyright Law and Discussions and Com-

ments on the Draft (Published as Copyright

Law Revision, Part 3, September 1964) ............ 15-16

of the Register of Copyrights on the General

Revision of the U.S. Copyright Law: 1975 Re-

vision Bill, October—December 1975 (Draft ed.

IEE cccisccacetstontannitesdnsitieiantau arenas 2, 3, 7, 11, 19-20, 21

Further Discussions and Comments on Prelimi-

nary Draft for Revised U.S. Copyright Law,

88th Cong., 2nd Sess. (Comm. Print 1964)........ 16

H.R. Rep. No. 83, 90th Cong., Ist Sess. (1967)... 7

Report of the Register of Copyrights on the Gen-

eral Revision of the U.S. Copyright Law, 87th

Cong., Ist Sess. (Comm. Print 1961)... 11, 15

1964 Revision Bill with Discussion and Comments,

89th Cong., Ist Sess. (Comm. Print 1965)... 17-18

Supplementary Report of the Register of Copy-

rights on the General Revision of the U.S.

REE EE OEY TLL Mar re Nee 11,18

B. Varmer, Works Made for Hire and on Com-

mission, Copyright Office Study No. 13, 86th

Cong., 2d Sess. 123 (Comm. Print 1960) ......9, 12-14, 20

TABLE OF AUTHORITIES—Continued

MISCELLANEOUS: Page

Black’s Law Dictionary (5th ed. 1979) 0.000... 8

Litman, Copyright, Compromise and Legislative

History, 72 Cornell L. Rev. 857 (1987) ............. 17

1 M. Nimmer, Nimmer on Copyright, § 6.07 25

W. Patry, Latman’s The Copyright Law (6th ed.

1986) ...... ichiiashgantaniindinlicatasagaainbaaesnaaeadaicbeminidandesie 15, 18, 26

Restatement (Second) of Agency § 228 comment a

RSE aise airanad ie kane Mea er tee e ieee re Sere ROT 8

Webster’s Ninth New Collegiate Dictionary

ESE RS eRe teste sme eee sae enone Na 8

In THE

Suprene Court of the Wuited States

OCTOBER TERM, 1988

No. 88-293

COMMUNITY FOR CREATIVE NON-VIOLENCE, et al.,

Petitioners,

\ v.

JAMES EARL REID,

Respondent.

On Writ of Certiorari to the

United States Court of Appeals

for the District of Columbia Circuit

BRIEF AMICUS CURIAE OF THE

PROFESSIONAL PHOTOGRAPHERS OF AMERICA, INC.

IN SUPPORT OF RESPONDENT

The Professional Photographers of America, Inc. sub-

mits this brief amicus curiae in support of respondent.

The parties to this action have given their written con-

sent to the filing of this brief pursuant to Rule 36 of the

Rules of this Court. The letters of consent have been

fi'ed with the clerk.

INTEREST OF THE AMICUS CURIAE

The Professional Photographers of America, Inc.

(“PPA”) is the largest professional society in the United

States promoting the interests of professional photog-

raphers. PPA represents approximately 18,000 mem-

bers, most of whom depend for their livelihood on copy-

right protection for their works.

Professicnal photographers commonly create portraits

and other photographs on commission or order for mem-

bers of the public. Such works are created outside of

traditional employment relationships. Independent photog-

raphers and photographic studios rely on the revenue

from reprints and other exploitation of the copyrights in

their works to recover their expenses and earn any profit.

Their creative incentive is dependent on their recognition

as copyright owners.

As will be discussed below, the legislative history dem-

onstrates that photographers’ interests were specifically

considered and vindicated by Congress in the provisions

of the 1976 Copyright Act (the “1976 Act’’)’ at issue in

this case. The Second Supplementary Report of the Reg-

ister of Copyrights on copyright revision specifically ac-

knowledged that “[a]rtists and photographers are among

the most vulnerable and poorly protected of all the bene-

ficiaries of the copyright law, and it seems clear that,

like serious composers and choreographers, they were not

intended to be treated as “employees” under the carefully-

negotiated definition [of works made for hire|.”* Thus,

photographers have a recognized interest in the proper

interpretation of the work for hire doctrine.

Despite the clear history and language of the 1976

Act, professional photographers have found it necessary

to defend their rights in litigation against photofinishers

who unlawfully duplicate copyrighted portraits. PPA

currently is participating in four such lawsuits involving

the issues of work for hire and joint authorship.

1 Copyright Act of 1976, 17 U.S.C. § 101 et seg. (1982 & 1986

Supp. IV).

2 Copyright Office, Second Supplementary Report of the Register

of Copyrights on the General Revision of the U.S. Copyright Law:

1975 Revision Bill, October—December 1975, ch. XI at 12-13 (Draft

ed. 1975) [hereinafter “Second Supplementary Report”).

The Court of Appeals in this case correctly interpreted

the work for hire* provisions of the 1976 Act. The in-

terpretation advocated by petitioners would destroy the

carefully negotiated compromise adopted by Congress and

could cloud the clear protection Congress provided to pro-

fessional photographers.

Moreover, petitioners, certain amici, and the Court of

Appeals have discussed the relationship of the doctrine

of joint works to the work for hire issue. Proper inter-

pretation and integration of this doctrine with that of

work for hire is essential to the protection Congress af-

forded photographers.

INTRODUCTION AND SUMMARY OF ARGUMENT

Under the 1976 Copyright Act, and consistent with the

Constitutional mandate “To promote the Progress of

Science and useful Arts,”* the person who creates an

artistic work is the author and original copyright owner

except in certain specific cases. As the Register of Copy-

rights explained in the Second Supplementary Report on

head of copyright protection.” *° Under one exception to

this general principle, “the employer or other person for

whom the work was prepared is considered the author”

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

§$ 201(b) (1982). Work made for hire is defined in the

Act as “(1) a work prepared by an employee within the

scope of his or her employment;” or (2) certain specifi-

cally enumerated “specially ordered or commissioned”

works under certain circumstances. Jd. § 101.

The work for hire provision of the Copyright Act

emerged as a carefully balanced and nuanced compromise

3 We adopt the almost universal convention of using “work for

hire” in place of the longer statutory term “work made for hire.”

* U.S. Const. art. I, § 8, cl. 8.

5 Second Supplementary Report, ch. XI at 9.

following a contested legislative history. That history

demonstrates beyond cavil that the Congress and the

and mediator, intended a clear distinction between works

created by employees acting within the scope of their

employment (governed by clause 1) and works created

by independent contractors on commission or special

order ‘governed by clause 2).

By its language—“employee within the scope of his

or her employment”—the 1976 Act invokes well settled

principles of agency law. In ordinary usage, “employee”

and “independent contractor” are mutually exclusive con-

cepts of agency law. Moreover, the phrase “scope of em-

ployment” is a recognized term of art in agency. The

ordinary meaning of the statutory language should gov-

ern.

Congress intended to limit application of clause 1 to

salaried or other regular employees within the meaning

of agency law. The legislative history reveals that all

parties to the work for hire compromise adopted by Con-

gress understood that

(i) “employee” means salaried or other regular

agency-law employee

(ii) independent contractors creating “specially or-

dered or commissioned” works are not “em-

ployees” within the statutory definition, and

(iii) works created by independent contractors are

governed exclusively under the rubric of works

created on “special order or commission.”

The key to understanding the legislative history is the

timing of the work for hire debate that yielded the com-

promise. Work on copyright law revision began in 1955.

The work for hire compromise was reached in 1965. That

compromise was, with only minor changes, incorporated

into the final 1976 Act.

Petitioners contend that Congress could not have in-

tended to overturn what they claim to have been the

“existing judicial approach” without so declaring. How-

ever, at the time the compromise was crafted in 1965,

the existing law was generally, upon the Copyright Of-

fice’s own analysis, that the work for hire doctrine ap-

plied only to salaried or other regular agency-law em-

ployees. The first case to extend the work for hire

doctrine generally to include works of independent con-

tractors was decided in 1966, the year after the terms

of the work for hire compromise were in place.

The legislative history provides no support for the

proposition that Congress intended to replace the delicate,

long debated, and well-understood 1965 compromise with

judicial interpretation of the 1909 Act after 1905. To

the contrary, Congress explicitly adopted the 1965 com-

promise, as the Register of Copyrights publicly confirmed

immediately prior to and shortly after adoption of the

1976 Act.

The interpretation of work for hire adopted by the

Court of Appeals best achieves and serves the policies

of the Act. It secures the protection of individual au-

thors who are most in need of the protections and incen-

tives afforded by copyright. Because independent au-

thors may assign their copyright, the interests of com-

missioning parties are also protected.

Moreover, as the Court of Appeals correctly noted, the

interpretation of work for hire advocated by petitioners

would create substantial uncertainty with respect to

requiring work-by-work evidentiary evaluation of the

supervision and control exercised by the commissioning

party, and application of an indeterminate, ill-defined

standard.

Accordingly, the decision of the Court of Appeals

should be affirmed.

In order to ensure that the protection afforded to in-

dependent individual authors under the work for hire

doctrine is not circumvented, the doctrine of joint au-

thorship must be appropriately defined and integrated.

Courts have heretofore rebuffed efforts to expand the

concept of joint authorship for that purpose. This Court

should make clear that absent a substantial, copyright-

able contribution, a commissioning party is not a joint

author of a commissioned work.

ARGUMENT

I. THE COURT OF APPEALS CORRECTLY DETER-

MINED THAT INDEPENDENT CONTRACTORS

UNDER AGENCY LAW ARE NOT EMPLOYEES

WITHIN THE MEANING OF THE COPYRIGHT

ACT.

After carefully reviewing the language, legislative his-

tory, and jadicial and scholarly interpretations of the

work for hire doctrine, the Court of Appeals held that

“a copvrightable work of an independent contractor can-

not be a work made for hire under the current Act un-

less that work [meets the specific requirements of clause

2 of the definition].”* In reaching its conclusion, the

Court of Appeals followed the thorough decision of the

Fifth Circuit in Easter Seal Society for Crippled Chil-

dren and Adults v. Playboy Enterprises.’ In light of the

ordinary meaning of the statutory language, its legisla-

tive history, and the policy of the work for hire doctrine,

no other interpretation is supportable.

® Community for Creative Non-Violence v. Reid, 846 F.2d 1485,

1494 (D.C. Cir. 1988).

7815 F.2d 323 (5th Cir. 1987), cert. denied, 108 8S. Ct. 1280

(1988). On January 13, 1989, the Ninth Circuit, after an in-depth

review of the legislative history, aligned itself with the Fifth and

D.C. Cireuits, holding that clause 1 of the work for hire definition

applies only to “formal, salaried employees.” Dumas v. Gommerman,

No. 87-6542, slip op. at 26 (9th Cir. Jan. 13, 1989) (LEXIS, Genfed

library, USApp file).

A. The Ordinary Meaning of the Work For Hire Doc-

trine Distinguishes between Employee and Inde-

pendent Contractor Works.

As petitioners have recognized, “[i]n construing the

1976 Act, ‘it is appropriate to assume that the ordinary

meaning of the language that Congress employed “ac-

curately expresses the legislative purpose.”’” Petition-

ers’ Br. at 17 (quoting Mills Music, Inc. v. Snyder, 469

U.S. 153, 164 (1985)). This assumption is particularly

appropriate because the definition of “work for hire”

was the result of a carefully negotiated legislative “com-

promise.” * See, e.g., United States v. Sisson, 399 "J.S.

267, 291, 298 (1970) (“compromise origins” of an act

“justify the principle of strict construction”) ; Rodriquez

v. Compass Shipping Co., 451 U.S. 596, 617 (1981) (In

interpreting the intent of Congress in fashioning a legis-

lative compromise, “the wisest course is to adhere closely

to what Congress has written.’’).

The “ordinary meaning” of the definition of “works

for hire” is the meaning adopted by the Court of Appeals

in this case and by the Fifth Circuit in Easter Seal

Society. The definition divides works for hire into two

classes-—(i) works “prepared by an employee within the

scope of his or her employment” and (ii) works “spe-

8 See Dumas, slip op. at 15-17, 22-23; Copyright Law Revision,

H.R. Rep. No. 1476, 94th Cong., 2d Sess. 121 (1976) (“The work-

made-for-hire provisions of this bill represent a carefully balanced

compromise .... The definition now provided by the bill represents

a compromise which, in effect, spells out those specific categories of

commissioned works that can be considered works made for hire

under certain circumstances.”); H.R. Rep. No. 83, 90th Cong., Ist

Sess. 87 (1967) (“After full consideration the committee decided to

incorporate the substance and much of the language of this compro-

mise in the bill.”); Second Supplementary Report, ch. XI at 7

(“After a great deal of discussion and splitting of hairs, the defini-

tion of a ‘work made for hire’ which emerged in the bill . . . repre-

sented a carefully balanced compromise ... .”).

cially ordered or commissioned” under certain well de-

fined conditions. 17 U.S.C. § 101.

In ordinary usage, an employee is “one employed by

another usufally] for wages or salary and in a position

below the executive level.”® Regardless of whether the

word “employee” is considered to have “definite content”

(Petitioners’ Br. at 17), in ordinary usage, “ ‘employee’

must be distinguished from ‘independent contractor.’ ”

“Employee” and “independent contractor” are generally

regarded to be mutually exclusive concepts governed by

traditional agency law standards."

Moreover, the phrase “scope of employment” is a

widely used term of art in agency law.

The word “employment” means the subject matter

as to which the master and servant relationship

exists. The phrase “seope of employment” means

the extent of this subject matter and denotes the

field of action within which one is a servant.

Restatement (Second) of Agency, §228 comment a

(1958); see Easter Seal Society, 815 F.2d at 335

® Webster’s Ninth New Collegiate Dictionary 408 (19853).

1 Black’s Law Dictionary 471 (5th ed. 1979) (further defining

“employee” as “one who works for an employer; a person working

for salary or wages”).

11 See, ¢.g., Vane v. Newcombe, 132 U.S. 220, 233-34 (1889) (“It

seems clear to us that Vane was a contractor with the company, and

not an employe within the meaning of the statute.”); Metcalf &

Eddy v. Mitchell, 269 U.S. 514, 520-21 (1926) (“Nor do the facts

stated in the bill of exceptions establish that the plaintiffs were

‘employees’ within the meaning of the statute. So far as appears,

they were in the position of independent contractors.” ) ; Campbell

v. Commisioner. 87 F.2d 128, 130-31 (7th Cir. 1936) (“The question

of whether or not a person is an employee of government or is an

independent contractor #3 been before this and other courts many

times.”), cert. denied, 301 U.S. 688 (1937).

(“‘Seope of employment’ is virtually a term of art in

agency law’’) .*

In short, by limiting clause 1 of the work for hire

doctrine to employees acting within the scope of their

employment, the 1976 Act invokes well settled, familiar

principles of agency law.

B. The Legislative History of the Work for Hire Com-

promise Demonstrates a Clear Understanding that

Independent Contractors Under Agency Law Were

53 Not “Employees” Within the Meaning of the First

Clause of the Definition.

The timing of the compromise that gave rise to the

definition of works for hire in the 1976 Act is critical

to understanding its legislative history. As this Court

described in Mills Music, 469 U.S. at 159-61, the legisla-

tive process leading to the 1976 Act began in 1955 with

the appropriation by Congress of funds for the Copy-

right Office to conduct a comprehensive series of thirty-

four studies on major issues of copyright law. Study

number thirteen of the series, completed by Borge

Varmer in April 1958, focussed on “Works Made for

Hire and on Commission.” “

As petitioners have recognized (Br. at 28), “([t]he

commissioned works controversy was effectively resolved

in 1965 when eight interested groups representing book

publishers, music publishers and artists entered into a

compromise agreement covering a range of copyright

12 By cojoining the concepts of “employee” and “scope of employ-

ment,” the language draws an obvious parallel to the doctrine of

respondeat superior. Cf. American Fed'n of Unions v. Equitable

Life Assurance Soc'y., 841 F.2d 658, 665 (5th Cir. 1988) (respon-

deat superior applies to acts of “employee ... in the course and

scope of his employment”). This parallel was intended. See pages

13-14, infra.

13 B. Varmer, Works Made fo. Hire and on Commss.on, Copy-

right Office Study No. 13, 86th Cong., 2d Sess. 123 (Comm. Print

1960) [hereinafter “Varmer Study”).

issues.” See Dumas, slip op. at 15. Thus, the most rele-

vant period for determining the content of the work for

hire compromise is the period from 1958, when the

Varmer Report was issued, through 1965. Later develop-

ments are useful principally for the light they shed on

this earlier period.

The central thesis of petitioners’ argument fails in the

face of this timing. Petitioners contend that Congress

could not have intended a radical departure from exist-

ing law without acknowledging the change: “[T]here is

no indication whatsoever in the legislative history of the

1976 Act that Congress ever considered replacing the

existing judicial approach with one that focussed exclu-

sively upon agency law.” E.g., Petitioners’ Br. at 16."

However, as the legislative history demonstrates, be-

tween 1958 and 1965, the existing law was, generally,

that “employee” within the meaning of work for hire

referred to salaried or other regular agency law em-

ployees. It was not until 1966, in Brattleboro Publishing

Co. v. Winmill Publishing Corp., 369 F.2d 565, 567-68

(2d Cir. 1966), that a court, interpreting the 1909 Copy-

right Act,’ first held that commissioned works should

generally be treated as works for hire."*

14 Jd. at 14-15 (“| T)here is absolutely nothing in the 1976 Act or

its legislative history which evidences any Congressional intent to

repudiate [the allegedly consistently applied supervision and con-

trol] standard.” ); see id. at 20.

5 Copyright Act of 1909, 17 U.S.C. §1 et seg. (1970).

*® See Easter Seal Society, 815 F.2d at 326; Petitioners’ Br. at

29. As petitioners recognize (Br. at 29), prior to 1966, a line of

cases had imposed a presumption that an independent contractor

had assigned his copyright to the commissioning party. See, ¢.g.,

Yardley v. Houghton Mifflin Co., 108 F.2d 28 (2d Cir. 1939), cert.

denied, 309 U.S. 686 (1940). These cases, however, did not rely on

the work for hire doctrine. See Dumas, slip op. at 7 n4. It is,

therefore, not surprising that they did not form the basis of the

In short, the cases interpreting the 1909 Copyright

Act, on which petitioners rely, actually were decided

after the primary terms of the work for hire doctrine

under the 1976 Act were settled in the legislative proc-

ess. There is no indication anywhere in the legislative

history of the 1976 Act that Congress intended to over-

turn the delicate and well-understood 1965 compromise

in favor of the interpretation first adopted by the Second

Circuit in 1966. To the contrary, as discussed below,

Congress explicitly adopted the 1965 compromise in the

1976 Act.

In Mills Music, this Court described the legislative

process that followed the issuance of the commissioned

Copyrights issued a report containing recommendations

for copyright revision." Following numerous meetings

with representatives of the various affected interests, the

received comments from interested parties. The Register

then issued a Supplementary Report in 1965.'"* See gen-

eral'y, Mills Music, 469 U.S. at 159-61. Ten years later,

as part of the hearings leading to final passage of the

1976 Act, the Register prepared a Second Supplementary

Report, reviewing and explaining prior developments."

17 Report of the Register of Copyrights on the General Revision

of the U.S. Copyright Law, 87th Cong., Ist Sess. (Comm. Print

1961) [hereinafter “Register’s 1961 Report”]; see Mills Music,

469 U.S. at 159.

18 Supplementary Report of the Register of Copyrights on the

General Revision of the U.S. Copyright Law, 89th Cong., Ist

Sess. (Comm. Print 1965) [hereinafter “Register’s Supplementary

Report” }.

19 Second Supplementary Report.

As a review of this history demonstrates, from the be-

ginning of the copyright revision process until the 1965

compromise was reached, all parties * recognized that:

* “employees” meant salaried or other regular

agency law employees;

* independent contractors were not “employees”

within the definition of works for hire; and

* works created by independent contractors were

discussed and considered exclusively under the ru-

brie of works created on “special order or com-

mission.”

1. The 1958 Varmer Study

The propositions stated above appear unambiguously

in the 1958 Varmer study, which formed the basis for

later discussion of the work for hire issue. At the outset

of the Study, Varmer identified three distinct ways a

magazine publisher could obtain an article:

(1) He may assign the task of writing the article

to a salaried employee;

(2) He may commission an author to write the

article for a fixed fee;

(3) He may acquire [by assignment or license]

the article from an author who has written it on his

own initiative.

Varmer Study, Committee Print at 127 (emphasis

added).

20“!W]e quite properly are concerned with what the private in-

terest groups, the negotiators, thought the terms meant when they

negotiated and agreed to them. Congress's intent clearly was to

embody in the Act the negotiated compromises. We must be care-

ful not to distort the bargain reached after so many years of nego-

tiation and compromise.” Dumas, slip op. at 17 (discussing the

work for hire compromise); see Mills Music, 469 U.S. at 182 n.6

(White, J., dissenting) (where legislation is the result of compro-

mise, statements by interested parties carry some weight). More-

over, the understanding of the Copyright Office regarding work for

hire was in accord with that of the parties. See pages 12-15, 17-20,

infra.

Varmer then described the existing case law interpret-

ing the work for hire doctrine under the 1909 Copyright

Act. The Study noted that “all the cases have involved

salaried employees who received either a fixed salary or

a minimum salary plus commission,” id. at 130 (empha-

sis added), and that in one case, a court “held that a

work made by an employee as an extra assignment for

extra pay was not a work made for hire.” /d.*' Accord-

ingly tne Study stated that “it may be concluded that

section 26 [of 1909 Act dealing with works for hire)

refers only to works made by salaried employees in the

regular course of their employment.” Id. (emphasis

added ) .**

The Varmer Study then considered and rejected argu-

ments similar to those being made by petitioners and

their supporting amici in this case. Basing its analysis

on the common law distinction of employees and inde-

pendent contractors, the Varmer Study concluded that

independent contractors should not fall within the scope

of the work for hire doctrine:

It might be argued that the policy considerations

regarding the ownership of copyright in commis-

sioned works are in many ways similar to those with

respect to works made in the course of employment.

Both classes of works are produced for, pursuant to

the initiative and order of, and against payment by,

a person other than the creator. The differences in

21 Citing Shapiro, Bernstein & Co. v. Jerry Vogel Musie Co., 115

F. Supp. 754 (S.D.N.Y. 1953), rev'd on other grounds, 221 F.2d 569

(2d Cir.), modified on other grounds, 223 F.2d 252 (2d Cir. 1955).

22 Varmer subsequently identified a single class of commissioned

(independent contractor) works for which courts had held the work

to have been made for hire-—portrait photographs and paintings.

Id. at 130. Varmer considered these cases to create a special rule

for portraits that Congress “might undertake to codify.” Jd. at 145.

As will be discussed below, see pages 19-20, infra, Congress consid-

ered and rejected codification of such a rule on the ground that

photographers and artists deserved greater protection.

type of payment or regularity of working hours be-

tween the employment and commission situations

would not seem to be crucial reasons for different

treatment.

However, the common law generally has differen-

tiated between the employer-employee relationship

and that of the parties to a contract for a commis-

sioned product: in broad terms, the acts of an em-

ployee as such are imputed to his employer, but those

of an independent contractor are not imputed to the

person for whom he performs a special commission.

Id. at 142 (emphasis added).” Moreover, the Varmer

Study made clear that the 1909 Copyright Act did not

extend work for hire treatment to the works of independ-

ent contractors: “Perhaps in recognition of this prin-

ciple, the statutory provisions in the United States re-

garding the employer’s ownership of copyright in works

made for hire, and the corresponding provisions in the

been extended to commissioned works generally.” J/d.**

23 Varmer explained that the underlying basis for the common

law agency distinction between employees and contractors was the

premise that an employer “generally gives more direction and exer-

cises more control over the work of his employee than does a com-

missioner with respect to the work of an independent contractor.”

Id. at 142 (emphasis added). Petitioners’ misplaced reliance on the

Varmer Report appears to stem from their failure to recognize that,

considered in context, Varmer was not proposing a case-by-case

definition of “employee” any different from that created by the com-

mon law of agency. Rather, Varmer was explicitly rejecting the

argument that works produced by independent contractors, as they

were classified under well-established common law agency concepts,

should be considered works for hire.

24 The Varmer study thus authoritatively contradicts petitioners’

argument (e.g., Br. at 15, 18) that the work for hire doctrine under

the 1909 Copyright Act had been consistently interpreted to encom-

pass agency-law independent contractors who had been supervised

and controlled.

2. The Register’s 1961 Report.

The Register’s 1961 Report adopted Varmer’s dichot-

omy between works by employees and works made on

commission, and agreed with the Varmer Study that the

work for hire doctrine did not include works made on

commission. “The phrase used in the present [1909]

statute—‘works made for hire’—has been criticized as

being inexact, because it might be thought to include works

made on special commission. The courts, however, have

not generally regarded commissioned works as ‘made for

hire.” Register’s 1961 Report at 86 (emphasis added).

To further clarify the doctrine, the Register’s Report

recommended refining the definition of works for hire to

include only “works-created by an employee within the

regular scope of his employment.” *

3. The 1963 Draft Bill and Comments.

In the 1963 Preliminary Draft Bill (the “1963 Draft”),

the Register maintained the clear dichotomy between

works created by employees and works created by inde-

pendent contractors. The 1963 Draft defined works made

for hire as “a work prepared by an employee within the

scope of the duties of his employment, but not including

a work made on special order or commission.” *

; The reaction by publishers to the 1963 Draft high-

lights the broad understanding that, by excluding works

25 Jd. at 87. A noted commentator has argued that the intent to

limit works for hire “to those created in the ‘regular scope of

employment,’ i.e., by salaried employees, could not be clearer.”

W. Patry, Latman’s The Copyright Law 119 (6th ed. 1986) [here-

inafter “Patry”|. Patry argues that no significance should be

attached to the omission of the word “regular” from subsequent

revision bills. Jd. at 119 n.26.

“6 Copyright Office, Preliminary Draft for Revised U.S. Copyright

Law and Discussions and Comments on the Draft, §14 at 15 n.11

(Published as Copyright Law Revision, Part 3, September 1964).

The published comments on the 1963 Draft will be cited herein as

“1963 Draft Comments.”

made on special order or commission, the Register in-

tended to exclude all works by independent contractors:

* If there were any such definition [in the book

publishing industry], you’d put a whole ‘seta

out of business—namely, the freelancers .. .

There would be a necessity of putting people on

the payroll whom the employers wouldn’t want to

put on the payroll, and where the employees would

prefer to work as independent contractors.”

* In other words, a motion picture company would

employ a man, and give him three months to write

a script. That would be a work made on special

order or commission, and therefore it would not be

for hire.**

The written comments of the American Book Pub-

lishers Council on the 1963 Draft were even more ex-

plicit, objecting to the Draft because, under the proposal,

works for hire “include only work done by a salaried

employee in the scope of his regular duties, and would

exclude works made on special order or commission.” *’

Nowhere in the legislative history did the Copyright Of-

fice, the interested parties, or Congress advise the pub-

lishing community that their understanding of “em-

ployee,” as used in the 1963 Draft, was mistaken. To

the contrary, “p'enty of discussion indicates that every-

one involved understood the term |employee| to mean

*7 1963 Draft Comments at 259 (Comments of Horace S. Manges,

representing the Joint Committee of the American Book Publishers

Council and the American Textbook Publishers Institute).

*8 Jd. at 258-259 (Comments of Julian T. Abeles, representing the

Music Publishers’ Protective Association, Inc.).

*? Further Discussions and Comments on Preliminary D.aft for

Revised U.S. Copyright Law, 88th Cong., 2nd Sess. 250 (Comm.

Print 1964).

someone working for an employer in a salaried job, and

understood the term to exclude freelance workers com-

pletely.” Dumas, slip op. at 15 (quoting Litman, Copy-

right, Compromise and Legislative History, 72 Cornell

L. Rev. 857, 901 (1987)).

4. The 1964 Draft Bill and Comments.

In response to these concerns of the publishing com-

munity, the Copyright Office reversed course, proposing

in the 1964 Draft Revision Bill (the “1964 Draft’) that

a “work made for hire” be “a work prepared by an em-

ployee within the scope of his employment, or a work

prepared on special order or commission if the parties

expressly agree in writing that it shall be considered a

work made for hire.” *” In short, under the 1964 Draft,

all commissioned works could be treated as works for

hire if agreed in writing. Had the Copyright Office be-

lieved the publishing community was misconstruing the

phrase “employee within the scope of his employment,”

it would, almost certainly, have made this point prior to

or in conjunction with this change in position. The Of-

fice’s silence on the construction of “employee,” in the

face of comments that prompted an expansion of the

eligibility of non-employee works to be works for hire. is

strong evidence that the Office believed the publishers’

comments correctly stated the scope of “emp'oyee” works.

Nor is there any evidence that the 1964 Draft intended

to alter the meaning of “employee within the scope of his

employment.” The 1964 Draft retained the clear dis-

tinction between emp'oyee works and works prepared on

39 1964 Revision Bill with Discussion and Comments, 89th Cong.,

Ist Sess. 21, $54 (Comm. Print 1965) [hereinafter “1964 Draft

Bill”, or “1964 Draft Comments”, as applicable]. See id. at 144-45

for the motivation behind the change.

special order or commission that formed the basis of the

earlier proposals.

The approach of the 1964 Draft Bill “drew even heav-

ier fire {than the 1963 Draft Bill] from the representa-

tives of authors’ organizations, who argued that an

author could easily be induced to sign a form contract

stating that his work is ‘made for hire’ ” Register’s

Supp'ementary Report at 67.

5. The 1965 Compromise.

In April, 1965, the two sides reached a compromise

that bears a close resemblance to the provision finally

enacted in 1976." The compromise language continued

unchanged the definition of works for hire as “a work

prepared by an employee within the scope of his emp!oy-

ment.” The essence of the compromise was limitation to

specifically enumerated kinds of ordered or commissioned

works that could, by written agreement, be converted

into works for hire. See Register’s Supp'ementary Re-

port at 67. As the Register explained, “lo)}ther works

made on special order or commission would not come

within the definition.” Jd. at 67-68. In short, within

the class of works created by independent contractors.

only those specifically enumerated could be considered

works for hire; no others could be. See Dumas, slip op.

at 23-24.

6. Later Exposition of the Compromise.

After further negotiations, the specifically enumerated

class of independent contractor works included in clause

2, and thus made eligible for work for hire status, was

expanded somewhat. See Patry at 121-22. However, the

** Dumas, slip op. at 15, 22-24; see Patry at 120-21 (citing

Subcomm. on Courts, Civil Liberties and the Admin. of Justice of

the House Judiciary Comm., 89th Cong., Ist Sess. 134, 148-49

(1965) ).

fundamental distinction between works created by em-

ployees within the scope of their employment and works

created by independent contractors on commission was

retained in all subsequent versions of the bill. Con-

gress explicitly incorporated the compromise into the

1976 Act. See note 8, supra.

Nothing in the legislative history suggests that Con-

gress intended to alter the fundamental terms of the

1965 compromise in light of subsequent judicial decisions

under the 1909 Act. Indeed, subsequent developments,

both immediately preceding and following passage of the

1976 Act, confirmed the limited scope of work for hire

enacted in 1976.

An attempt to expand the class of commissioned works

subject to a work for hire agreement to include portrait

photographs and paintings “—and, thus, to continue an

anomaly in pre-1965 judicial precedent with respect to

such works “—was rejected on the recommendation of

the Register of Copyrights. As the Second Supplemen-

tary Report explained in 1975:

The addition of portraits to the list of commissioned

works that can be made into “works made for hire”

by agreement of the parties is difficult to justify.

Artists and photographers are among the most vul-

nerable and poorly protected of all the beneficiaries

of the copyright law, and it seems clear that, like

Serious composers and choreographers, they were not

“The subcommittee fin 1965) produced a chapter on copyright

ownership and transfer together with a definitive legislative report

that have remained unchanged and virtually unchallenged for nearly

10 years ....” Copyright Law Revision: Hearings on H.R. 2223

Before the Subcomm. on Courts, Civil Liberties and the Admin. of

Justice of the House Judiciary Comm., 94th Cong., Ist Sess. 1889

(1975) (Testimony of B. Ringer, Register of Copyrights).

%3 See Copyright Law Revision, S. Rep. No. 460, 94th Cong., Ist

Sess. 4 (1975).

™ See note 22, supra.

—

intended to be treated as “employees” under the

carefully-negotiated definition in section 101.

Second Supplementary Report, ch. XI at 12-13. No sug-

gestion was made that portrait photographers or artists

might fall within the first clause of the definition. The

photographers and portrait artists would not be works

for hire.”

In 1979 Barbara Ringer, then Register of Copyrights,

testified before Congress concerning certain provisions

of the 1976 Act which had taken effect the previous year.

The Register stated that:

felver since enactment of the new law, the Copy-

right Office has been receiving complaints about the

policies adopted by certain publishers and producers

in their dealings with independent authors, artists

and photographers. Under the definition of “works

made for hire” a person preparing a work on special

order or commission can be considered an “employee

for hire” only if the work falls into certain cate-

gories, and then only if the parties expressly agree

in writing that the work shall be considered a “work

made for hire”. This provision, like others in the

new statute, was intended to give authors and

artists greater protection than they had enjoyed un-

der previous laws.”

In short, throughout the legislative history, it was un-

derstood by the interested parties, by the Copyright

Office, and by Congress, which adopted the compromise

35 Thus, the only class of independent contractor work that had

been included within the work for hire doctrine at the time of the

Varmer Study, see note 22, supra, was expressly excluded under the

1976 Act.

36 Copyright Issues: Cable Television and Performance Rights:

Hearings Before the Subcomm. on Courts, Civil Liberties and the

Admin. of Justice of the House Judiciary Comm., 96th Cong., Ist

Sess. 24 (1979) (emphasis added) [hereinafter “1979 Hearings”).

agreement, that independent authors, artists and photog-

raphers were covered exclusively by clause 2 of the defi-

nition “f work for hire. Clause 1 applies to salaried or

other regular agency law employees acting in the scope

of their employment.

C. The Use of Agency Law Standards To Differentiate

Salaried or Other Regular Employees from Inde-

pendent Contractors is Mandated by Copyright

Policy.

As the Register explained in her Second Supplemen-

tary Report to Congress shortly before final consideration

and passage of the 1976 Act, the basic principle of U.S.

tainhead of copyright protection.” Second Supplementary

Report, ch. XI at 9. More than any other class of au-

thors, the individual author most needs the protections

afforded by the Co»vyright Act and the incentives for

creativity that form the basis for the Constitutional

scheme of copyright. The work for hire doctrine em-

bodied in the 1976 Act reflected these principles and “was

intended to give authors and artists greater protection

than they had enjoyed under previous laws.” “

Petitioners now seek to rewrite the Copyright Ac to

strip a key subclass of individual, independent authors

and artists of the protection intended and afforded by

the revisions to the work for hire doctrine. In so doing,

they threaten to damp the incentives intended by Con-

gress and the Constitution. The interpretation of work

for hire advanced by petitioners before this Court is con-

trary to the 1976 Copyright Act and core principles of

Moreover, as the Court of Appeals in this case and the

Fifth Cireuit in Easter Seal Society correctly observed,

see 846 F.2d at 1494; 815 F.2d at 333-34, the approach

57 1979 Hearings at 24.

urged by petitioners would create substantial uncertainty

with respect to copyright ownership of independent con-

tractor works. See also Dumas, slip op. at 30. Petition-

ers’ approach leaves determination of the copyright

status of independent contractor works to an after-the-

fact judicial analysis of whether the commissioning party

actually exercised sufficient supervision and control over

the independent contractor in the performance of his

commission. This analysis would require consideration of

the facts and circumstances on a work-by-work basis,

since the degree of supervision and contro] actually exer-

cised by the commissioning party will inevitably vary

from work to work.”

Moreover, no clear standard exists to guide the de-

termination of how much supervision and control is

enough. Petitioners urge, in effect, the creation of a new

juridical class of “employee,” an employee within the

meaning of the Copyright Act and peculiar to it.

Contrary to Petitioners’ repeated assertions, the “ac-

tual supervision and control” test advanced by petitioners

was not “applied consistently by the courts under the

1909 Copyright Act.” Petitioners’ Br. at 15; see id. at

18, 20. Indeed, it was not the standard under the 1909

Act. As previously discussed, prior to 1966, it was gen-

erally concluded that the vork for hire doctrine invoked

well-known agency law principles in identifying “em-

ployees” for hire. Between Brattleboro in 1966 and the

effective date of the 1976 Act, courts following Brattle-

boro required only that the work be done at the instance

and expense of the commissioning party and that the

commissioning party retain only the right to supervise

38 See Dumas, slip op. at 30-31. (“Aldon permits the outcome of

seller in a series of works produced together ... . In a case such as

this, for example, application of the supervision and control test

could lead to different results for each of the lithographs [at

issue }.”).

and control the independent contractor, thereby effec-

tively eliminating the distinction between employee works

and commissioned works.** The standard advocated by

petitioners was an original creation of the Second Cir-

cuit in Aldon Accessories Ltd. v. Spiegel, Inc.,” in 1984.

Rather, as the Court of Appeals below and the Fifth

Cireuit in Easter Seal Society correctly observed, cer-

tainty in copyright transactions would be far better

served by the use of traditional agency law principles in

identifying employee works for hire. 846 F.2d at 1494;

%% See, e.g., Easter Seal Society, 815 F.2d at 326 (citing PBrattle-

boro, 369 F.2d at 565) (the court summarized a number of cases

as “creating the rule that the employer is the ‘author’ ‘whenever

an employee’s work is produced at the instance and expense of his

employer.’”); Murray v. Gelderman, 566 F.2d 1307, 1310 (5th Cir.

1978) (“The crucial element in this determination appears to be

whether the work was created at the employer's insistence | sic;

instance] and expense, or, in other words, whether the motivating

factor in producing the work was the employer who induced its

creation.”); ef. Brunswick Beacon, Inc. v. Schock-Hopchas Pub-

lishing Co., 810 F.2d 410, 412 (4th Cir. 1987) (“Before 1978, it

mattered little, if at all, that the commissioner neither possessed

nor exercised the right to direct the manner in which the work

was done.”).

4° 728 F.2d 548 (2d Cir.), cert. denied, 469 U.S. 982 (1984); see

Dumas, slip op. at 9 (“No circuit, in deciding copyright ownership

under the 1976 Act, has continued to follow the employer-oriented

approach of cases decided under the 1909 Act.”). The novelty of

the Second Circuit’s standard itself demonstrates a fatal incon-

sistency in petitioners’ position. Petitioners attempt to portray

Aldon Accessories as merely carrying forward the law in existence

as of the passage of the 1976 Act. Petitioners’ Br. at 14-15, 20.

Yet not even petitioners can argue that Congress, in passing the

1976 Act, intended to retain the “instance and expense” standard of

Brattleboro and its progeny. See id. at 3-4 (urging adoption of the

Aldon Accessories standard). As recognized by the Court of Ap-

peals below and the Fifth Circuit in Easter Seal Society, continua-

tion of the “instance and expense” standard could not have been

intended, since it would effectively read out of existence the care-

815 F.2d at 335."' Agency law focusses on the relation-

ship between the employer and employee, not on the em-

ployer’s relationship to a particular work. Thus, the rela-

tionship can be settled prior to the creation of any par-

ticular work. Moreover, agency law uses well developed,

generally understood standards. In short, it will be

easier to apply and more easily understood.

Nor will the use of an agency law standard necessarily

cause the copyright fractionalization feared by petition-

ers and certain amici. As discussed below, although the

doctrine of joint works has been invoked in an attempt

to circumvent the protections for individual authors em-

bodied in the 1976 Act, proper interpretation of that

doctrine, coupled with the use of written copyright as-

signments, will obviate concerns of fractionalization.

In sum, the plain language, legislative history, and

policies underlying the Copyright Act and the 1976

revision of the work for hire doctrine support the deci-

sion of the Court of Appeals in this case. That decision

should be affirmed.

fully negot.ated clause 2 of the work for hire definition. See B46

F.2d at 1495-94; 815 F.2d at 331.

Once it is conceded that Congress did not intend toe follow the

“instance and expense” standard in the 1976 Act, it is far more

logical to conclude that Congress’ failure to mention Braftlebore

demonstrates its intent to follow the understandings ef the 1965

compromise than that it demonstrates an intent te create a nevel,

hybrid standard, peculiar to copyright law, for identifying “em-

ployees.”

‘! Certainty would be even better served by limiting clause 1

to works of salaried or other regular empleyees. Cf. Damas, slip op.

at 35-37 ‘certainty best served by limiting “employee” te “formal,

salaried employees” ).

II. PROPER INTERPRETATION OF THE JOINT

WORK DOCTRINE IS ESSENTIAL TO PRESERVE

THE PROTECTION AFFORDED INDEPENDENT

CONTRACTORS BY CONGRESS.

Having concluded that the work at issue in this case

was not a work made for hire, the Court of Appeals nev-

ertheless concludes that CCNV may retain a copyright

interest in the work as a joint author. 846 F.2d at 1497.

A commissioned work may, in appropriate circumstances,

be the joint work of the commissioning party and the

independent contractor.” However, it is essential that

the doctrine be properly interpreted lest the protection

intended and afforded to independent contractors by the

1976 Act under the work for hire doctrine be circum-

vented.

Petitioners, in their effort to raise the specter of copy-

right “fractionalization,” suggest that the authorship

standard for joint works has been established and may

be met by a very small contribution to the work—“‘the

contribution [to a joint work] is not required to be copy-

rightable itself.” In fact, such a standard is neither

established, nor consistent with law or common sense.

At minimum, joint authors must be awthors within

the meaning of the Copyright Act. See 17 U.S.C. § 101

(“A ‘joint work’ is a vork prepared by two or more

authors. . . .”). Further, extending authorship status

to one who contributed only the idea of a work and not

expression would run directly counter to the rule that

$102(b). Thus, courts have regularly rejected joint

authorship claims by commissicning parties who provided

42 PPA takes no position on whether, under the facts in this case,

the work at issue is properly considered a joint work.

43 Petitioners’ Br. at 31 (citing 1 M. Nimmer, Nimmer on Copy-

right, $6.07 at 6-18).

information necessary to define the scope of the project

or who specified desired design features.**

The Ninth Circuit, commenting on the application of

the joint authorship doctrine to commissioned works,

recently stated that a commissioned work might be a

joint work “where the commissioning party provides

significant creative input.” Dumas, slip op. at 38 (em-

‘phasis added). And, as one commentator has stated, “a

putative joint author must make some genuine contribu-

tion to the work’s creation.” Patry at 116.

The potential for abuse of the joint authorship doc-

trine is starkly demonstrated in several cases PPA is

currently litigating against photofinishers who have been

duplicating copyr:ghted portrait photographs without the

photographers’ authorization. Several photofinishers have

argued that their conduct is not infringing on the ground

that, in their view, the commissioning party or subject,

who does little more than present him or herself for

photographing, identifies other subjects of the picture,

and, in certain cases, selects clothing and suggests a pose,

#4 See, e.g., Whelan Assocs. Inc. v. Jaslow Dental Laboratory, Inc.,

609 F. Supp. 1307, 1318 (E.D. Pa. 1985), aff'd, 797 F.2d 1222 (3d

Cir. 1986), cert. denied, 479 U.S. 1031 (1987) (rejecting joint

authorship claim relating to computer program by party who sought

out programmer, defined task, described business and provided some

assistance: “(t]he information and advice which Rand Jaslow pro-

vided was little more than one would expect from the operator of

any business who seeks to have a computer system designed for

him.”); Aitken, Hazen, Hoffman, Miller, P.C. v. Empire Constr. Co.,

542 F. Supp. 252, 259 (D. Neb. 1982) (rejecting building owner’s

claim of joint ownership in architectural plans: “!i]n this relation-

ship, it is quite normal for the client to supply the engineer or archi-

tect with general design features which the client expects to be

incorporated into architectural plans and for the professional then

to create the design drawings incorporating those features.”) ;

Meltzer v. Zoller, 520 F. Supp. 847, 857 (D.N.J. 1981) (rejecting

claim for joint authoriship of architectural plans by owner who pro-

vided initial “thumbnail” sketches, contributed ideas, d@fined needs,

made changes and exercised approval power. ).

is a joint author of the photograph, and therefore joint

owner of the copyright with the photographer.” Were

this contention upheld, it would vitiate the protection af-

forded portrait photographers by the 1976 Act. See pages

19-20, supra.

Moreover, it would skew the incentive structure in-

tended by the Constitution and enacted by Congress. A

subject does not require the protection of copyright to

appear for a portrait. The photographer does require

that protection to produce the portrait.

The only courts to rule on claims that a portrait sub-

ject is a joint author have rejected this joint authorship

claim.** However, the mere fact that it is being raised,

demonstrates that the doctrine must be properly inter-

preted and integrated with the language, purpose and

policy of the statutory provisions governing work for

hire.

In order to be a joint author, a commissioning party

must make a substantial creative contribution to the

work. This contribution must be of a kind that itself

is entitled to copyright protection.

45 See, e.g., Olan Mills, Inc. v. Eckerd Drugs of Teras, Inc., No. 3-

88-0333-D (N.D. Tex. 1988), reported in Pat. Trademark & Copy-

right J. (BNA), Vol. 37 at 246 (Jan. 12, 1989); Professional Pho-

tographers of Am., Inc. v. 1240 Camera Co., No. 3-88-2739-D (N.D.

Tex. 1988).

46 See Olan Mills, Inc. v. Eckerd Drugs of Texas, Inc., No. 3-88-

0333-D (N.D. Tex. 1988) (memorandum opinion accompanying order

granting preliminary injunction) (in which PPA is a party plain-

tiff), reported in Pat. Trademark & Copyright J. (BNA), Vol. 37

at 246 (Jan. 12, 1989); Childers v. High Society Magazine, 561

F. Supp. 1374, 1375 n.2 (S.D.N.Y. 1983).

CONCL._ SION

For the reasons set forth above, the judgment of the

Court of Appeals should be affirmed. In order to prevent

the circumvention of the work for hire doctrine, this

Court should make clear that a substantial, copyrightable

contribution is necessary for a commissioning party to be

a joint author of a work produced by an independent

contractor.

Respectfully submitted,

DAvip LADD *

DAVID E. LEIBOWITZ

BRUCE G. JOSEPH

THOMAS W. KIRBY

WILEY, REIN & FIELDING

1776 K Street, N.W.

Washington, D.C. 20006

Counsel for Amicus Curiae

The Professional

Photographers of America

January 30, 1989 * Counsel of Record

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.