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

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Supreme Court, US,

(\) i} FILED

No, 88-293 JAN 30 1999

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Jn the Supreme Court of the Gnited States:

OCTOBER TERM, 1988

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COMMUNITY FOR CREATIVE NON-VIOLENCE, ET AL.,

PETITIONERS

Vv.

JAMES EARL REID

ON WRIT OF CERTIORARI TO THE UNITED STATES

COURT OF APPEALS FOR THE DISTRICT OF COLUMBIA CIRCUIT

BRIEF FOR THE REGISTER OF COPYRIGHTS

AS AMICUS CURIAE SUPPORTING RESPONDENT

WILLIAM C. BRYSON

Acting Solicitor General

THOMAS W. MERRILL

Deputy Solicitor General

LAWRENCE S. ROBBINS

Assistant to the Solicitor General

Department of Justice

Washington, D.C. 20530

(202) 633-2217

RALPH OMAN

WILLIAM F. PATRY

Policy Planning Advisor

To The Register of Copyrights

United States Copyright Office

James Madison Memorial Building

HW ashingion, D.C. 20540

(202) 707-8350

QUESTION PRESENTED

Whether under the “work made for hire” provisions of the

own the copyright in a statue made by respondent at petitioners’

request and expense and under petitioners’ supervision and con-

trol.

(1)

—

TABLE OF CONTENTS

; Page

I I I oo cc ck cece ccc cece cece |

Ne cae esc cc sccccccess 2

EE 2

I cece ces cee ecees 2

Introduction and summary of argument .................... 6

Argument:

“Third World America” is not a work made for hire under

the Copyright Act of 1976, and respondent accordingly

aes cog asda ek svecesesccees 9

A. The language and structure of the statute demon-

strate that “Third World America” is governed ex-

clusively by Subsection (2) and is therefore not a

cs ceca ewescccesss v7)

B. The legislative history of the work-made-for-hire pro-

visions confirms thé plain meaning of the text ...... 13

C. Petitioners’ construction of the work-made-for-hire

provisions would subject copyright negotiations to

Ne cee ceecdccscece 25

NT enn ne nc eee eee eetcccecs 29

TABLE OF AUTHORITIES

Cases:

Aaron v. SEC, 446 U.S. 680 (1980) .......... Reais id + 9,11

Alaska Airlines, Inc. v. Brock, 480 U.S. 678 (1987) ...... 23

Aldon Accessories Lid. v. Spiegel, Inc., 738 F.2d 548 (2d

Cir.), cert. denied, 469 U.S. 982 (1984) .............. 6-7,

9, 26, 27

Andrus v. Glover Constr. Co., 446 U.S. 608 (1980) ...... 11

Bleistein v. Donaldson Lithographing Co., 188 U.S. 239

ee a awe wensccscecsscece 13

Bourjaily v. United States, No. 85-6725 (June 23, 1987) .. 23

Brattleboro Publishing Co. v. Winmill Publishing Corp.,

a 24, 25

Consumer Product Safety Comm'n. GTE Sylvania, Inc.,

LE 9

Cases — Continued: Page

Dumas v. Gommerman, No. 87-6542 (9th Cir. Jan. 13,

eee eeeSeeicarurdeneenries ) ae OS

23, 25, 26

Easter Seal Society For Crippled Children & Adults of

Louisiana, Inc. v. Playboy Enterprises, Inc., 815 F.2d

323 (Sth Cir. 1987), cert. denied, No. 87-482 (Mar. 28,

BY «cc kvegkvecsscdaueesacdaeeesneeteenens Se

Epoch Producing Corp. v. Killiam Shows, Inc., 522 F.2d

737 (2d Cir. 1975), cert. denied, 424 U.S. 955 (1976) ... 24

Evans Newton Inc. v. Chicago Systems Software, 793

F.2d 889 (7th Cir.), cert. denied, 479 U.S. 949 (1986) .. 7

Grant v. Kellogg Co., 58 F. Supp. 48 (S.D.N.Y.

1944), aff'd, 154 F.2d $9 (2d Cir. 1946) .............. 15

Greyhound Corp. v. Mt. Hood Stages, Inc., 437 U.S.

ED 5 bb Ke ccuncceuts sabe peadeekeaas tenes )

Harrison v. PPG Indus., Inc., 446 U.S. 578 (1980) ...... 23

INS v. Cardoza-Fonseca, 480 U.S. 421 (1987) .......... 9

Iris Arc v. S.S. Sarna, Inc., 621 F. Supp. 916 (E.D.N.Y.

SN: diss Casicnnocexe sue Vine weaneieedeesesuneee 27

Lin-Brook Builders Hardware v. Gertler, 352 F.2d 298

I oo 0:64 ce hdencckeetees hake euecaunae 15

McKay v. Columbia Broadcasting System, Inc., 324 F.2d _

Pe: SDs 5 bc-0 ocean hcecdaena oeeeeeneueees 15

Mills Music, Inc. v. Snyder, 469 U.S. 153 (1985) ........ 1, 9,

13, 24, 25

Murray v. Gelderman, 566 F.2d 1307 (Sth Cir. 1978)... .. 24

Nadel & Sons Toy Corp. v. W. Shaland Corp., 657 F.

Se: CP x. NTE o.0.a ss heoees heanevivesaus 27

Official Aviation Guide Co. vy. American Aviation

Associates, Inc., 180 F.2d 173 (7th Cir.), cert. denied,

Se Gs PED obs s awaccdbecedeek meant cdeees 15

Picture Music, Inc. v. Bourne, Inc., 457 F.2d 1213 (2d

Cir.), cert. denied, 409 U.S. 997 (1972) .............. 24

Sandwiches, Inc. v. Wendy’s Int'l, Inc., 654 F. Supp. 1066

(E.D. Wis.), appeal dismissed, 822 F.2d 707 (7th Cir.

DEON ck vcenesauhscd déenneuedinkelenessae eld ede 27

TOM VU. Fe GT ee CIP EROOED 6 i Sac recencdecedeccns 11

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

1939), cert. denied, 309 U.S. 686(1940) ......... ro

Statutes: Page

ee ME os vend Ona oe 15

a EE oo obs ok ered bee 8, 13, 14,

15, 22, 24, 25

Se, SE a ot oma weer >

Lb Oe RS ears ar odeta ae 1, 28

ET IS, 505s s ea hov oe ecea te ee 2

ROMO os Cs owed dane ba cao dee 2

FP Wes MOI cs oo bo x5 oe okEcd bch e cae oe l

Miscellaneous:

Angel & Tannenbaum, Works Made For Hire Under S.

2, 22 N.Y. L. Sch. L. Rev. 209(1976).............. 10, 22

Subcomm. No. 3 of the House Comm. on the Judiciary,

Perr ON. , COU OUR, GOIN 6 6 is vcs Sh cc vckccceen. i9

C opyright Law Revision, Report of the Register of C opy-

rights on the General Revision of the U.S. C opyright

Law, 87th Cong., Ist Sess. (Comm. Print 1961) ....... 15-16

Revised U.S. Copyright Law and Discussions and Com-

ments on the Draft (1964) ........-5............... 16, 18

Comments on Preliminary Draft for Revised U.S.

1964)

Discussion and Comments, 89th Cong., Ist Sess.

eI: II IY ovo occ dian Gwktreevivccccccui 18

of the Register of Copyrights on the General Revision of

the U.S. Copyright Law: 1965 Revision Bill, 89th

Cong., Ist Sess. (Comm. Print 1965) ............ 6, 18, 19-20

Easterbrook, Foreword: The Court and the Economic

System, 98 Harv. L. Rev. 4(1984) 00000. 25

Miscellaneous — Continued: Page

H.R. Rep. No. 1476, 94th Cong., 2d Sess. (1976) ....... 1-2, 2),

23, 28

H.R. Rep. No. 2237, 89th Cong., 2d Sess. (1966) ........ 20, 22

Hamilton, Commissioned Works as Works Made for

Hire Under the 1976 Copyright Act: Misinterpretation

and Injustice, 135 U. Pa. L. Rev. 1281 (1987) ...... 13, 22, 26

Hardy, Copyright Law’s Concept of Employment — What

Congress Really Intended, 35 J. of the Copyright Soc.

Ee EE oi cvcasehin aus 600eec' ea5e505 17, 26

Litman, Copyright, Compromise, and Legislative His-

tory, 72 Cornell L. Rev. 857 (1987) ...............4.. 13, 17,

23, 24, 25

1 M. Nimmer, Nimmer on Copyright (1987) ............ 2, 10

Note, The Creative Commissioner: Commissioned Works

Under The Copyright Act of 1976, 62 N.Y.U. L. Rev.

Ro ecg aus'ee cuca es neteaeenccenseesds 22

S. 3008, H.R. 11947, H.R. 12354, 88th Cong., 2d Sess.

(1964) (reproduced in Copyright Law Revision, Part >

1964 Revision Bill with Discussion and Comments, 89th

Cong., Ist Sess. (Comm. Print 1965)) ............... 19

Second Supplementary Report of the Register of Copy-

rights on the General Revision of the U.S. Copyright

Law: 1975 Revision Bill (1975) ... 2.2.0.2... 00 e ee ees 21

B. Varmer, Works Made For Hire And On Commission,

es sik iecdese one tghe sane fed 13-14, 15

Webster’s Third International Dictionary of the English

ID oo cid da ain ae ope use eee eke CERES 10

Jn the Supreme Court of the United States

OCTOBER TERM, 1988

No. 88-293

COMMUNITY FOR CREATIVE NON-VIOLENCE, ET AL..

PETITIONERS

JAMES EARL REID

ON WRIT OF CERTIORARI TO THE UNITED STATES

COURT OF APPEALS FOR THE DISTRICT OF COLUMBIA CIRCUIT

BRIEF FOR THE REGISTER OF COPYRIGHTS

AS AMICUS CURIAE SUPPORTING RESPONDENT

INTEREST OF THE AMICUS CURIAE \

This case presents an important and recurring question con-

cerning the meaning and application of the “work made for

hire” provisions of the Copyright Act of 1976, 17 U.S.C. 101 e7

seq. The Copyright Office, a branch of the Library of Congress,

is generally responsible for discharging “{a]ll administrative

functions and duties” under the Copyright Act (17 U.S.C.

701(a)). The Copyright Office took a principal role in drafting

the work-made-for-hire provisions —including, as this Court

recognized more generally in Mills Music, Inc. v. Snyder, 469

U.S. 153, 159-160 (1985), “authorizing ** * studies”;

“conduct(ing] numerous meetings with representatives of the

many parties that the copyright law affected”; “issu[ing] a

preliminary draft revision bill”; “submitt{ing] [a] 1965 draft

revision bill”; and “prepar{ing] a supplementary report to ac-

company the 1965 draft revision bill.” In addition, pursuant to

17 U.S.C. 105, “work[s}] of the United States Government” are

treated, for copyright purposes, in the same way as “works

made for hire” under 17 U.S.C. 101. See H.R. Rep. No. 1476,

(1)

94th Cong., 2d Sess. 58 (1976). The United States therefore has

a direct programmatic interest in the construction of the work-

made-for-hire provisions. Finally, this Court has previously in-

vited the Solicitor General to express the views of the United

States in Easter Seal Society For Crippled Children & Adults of

Louisiana, Inc. v. Playboy Enterprises, Inc., 815 F.2d 323 (Sth

Cir. 1987), cert. denied, No. 87-482 (Mar. 28, 1988), a case that

raised the same legal issue as this case.

STATEMENT

“ A. The Statutory Framework

Under the Copyright Act of 1976 (the Act), 17 U.S.C. 101 er

seq., the copyright in a work “vests initially in the author or

authors of the work” (17 U.S.C. 201(a)). In the case of so-called

“works made for hire,” “the empioyer or other person for whom

the work was prepared is considered the author” and, “unless

the parties have expressly agreed otherwise in a written instru-

ment signed by them, owns all of the rights comprised in the

The Act defines two categories of works that constitute

“works made for hire” (17 U.S.C. 101). One category, defined

in Subsection (1), includes works “prepared by an employee

within the scope of his or her employment.”' The other, defined

in Subsection (2), includes works “specially ordered or commis-

sioned for use as a coniribution to a collective work, as a part of

a motion picture or other audiovisual work, as a translation, as

a supplementary work, as a compilation, as an instructional

text, as a test, as answer material for a test, or as an atlas, if the

parties expressly agree in a written instrument signed by them

that the work shall be considered a work made for hire.”

B. The Present Controversy

1. Petitioner Community for Creative Non-Violence

(CCNV) is a Washington, D.C.-based non-profit association

' The Copyright Act contains no definition of the terms “employee” or

“scope of employment.” | M. Nimmer, Nimmmer on Copyright § 5.03{B)[1}, at

§-12 (1987).

3 -

devoted to the welfare of homeless persons. In the fall of 1985,

CCNV decided to participate in the annual Christmas Pageant

of Peace in D.C. by sponsoring a display that would dramatize

the plight of the homeless. CCNV, together with its agent and

trustee Mitch Snyder, also a petitioner, conceived the idea for a

modern Nativity scene which would depict, in place of the tra" -

tional Holy Family, a homeless family huddled atop e city steam

grate. The family was to be black; the figures were .o be life-

sized; and the steam grate was to be placed atop a pedestal con-

taining special effects equipment that would emit artiticial

steam to swirl about the figures. CCNV also designated the

name “Third World America” for the work, and settled upon a

legend for the pedestal —“and still there is no room at the inn.”

Pet. App. 3a.

Synder contacted respondent, James Ear! Reid, a Baltimore

sculptor, whom Snyder had never met before. In the course of

two telephone calls in October 1985, the two men reached an

agreement. Respondent promised to sculpt the three human

figures for “Third World America” and a shopping cart for their

belongings; he also agreed to use a synthetic substance called

“Design Cast 62” that could be tinted to resemble bronze.

CCNV assumed responsibility for the steam grate and the

pedestal. For a total outlay of approximately $7,000-$8,000,

CCNV engaged a cabinet maker to construct the pedestal, ob-

tained the special effects equipment, and acquired the chemica!s

to produce the simulated steam. The parties agreed that re-

spondent’s portion of the sculpture would cost no more than

$15,000, not counting respondent’s own services, which he

donated to the project. Respondent agreed to deliver the work

by December 12 for attachment to the base. Neither party men-

tioned copyright. Pet. App. 3a-4a; 2/2/87 Tr. 36-37, 141.

Respondent and his assistants worked on the figures

throughout November and December, conferring periodically

with CCNV and making changes to accommodate petitioners’

requests. On December 24, 1985, respondent delivered his por-

tion of “Third World America” to the District of Columbia,

where it was joined to the steam grate pedestal and placed on

display near the site of the Pageant. At that time, respondent

received $3,000 from Snyder, the final installment of the

$15,000 total payment due him under the agreement. Pet. App.

4a.

In late January 1986, CCNV sent the entire sculpture to re-

spondent so that he could repair damage to the foot of the male

figure. The following month, CCNV began making plans to

take the sculpture on a tour of several cities to raise money for

the homeless. Respondent objected to the proposed tour, con-

tending that the Design Cast 62 material was too delicate to

withstand the trip. He urged CCNV to cast the sculpture in

bronze or to have a “master mold” made. CCNV refused, but

invited respondent to do so at his own expense. Pet. App. 4a.

In March 1986 CCNV asked respondent to return the

sculpture. Respondent refused. Instead, respondent filed an ap-

plication for copyright registration for “Third World America”

in his own name on March 20, 1986, and announced his own

plans to take the sculpture on an exhibition tour that was less

ambitious than the one proposed by petitioners. Snyder filed a

competing application for copyright registration in his name on

May 21, 1986. Pet. App. 4a-Sa.

2. On June 2, 1986, petitioners commenced this litigation

against respondent, seeking return of the sculpture and a deter-

mination of copyright ownership. Pet. App. Sa. The district

court entered judgment in favor of petitioners (id. at 29a-36a).

The court concluded that the sculpture was a “work made for

hire” pursuant to Subsection (1) of the definition in 17 U.S.C.

101, which applies to works “prepared by an employee within

the scope of his or her employment.” The court reasoned that

“for statutory copyright purposes generally, the employment

relationship giving rise to a copyright is somewhat more expan-

sive than the master-servant relationship found in the common

law of agency” (id. at 34a-35a). In particular, the court held,

“{i]f the putative ‘employer’ was either the ‘motivating factor’ in

the production of the work, or possessed the right to ‘direct and

supervise’ the manner in which the work was done, the

exercised by the artist-employee” (id. at 35a). On this record,

the court concluded, “{i}t is indisputable * * * that [petitioners

were] the motivating factor in the procreation of ‘Third World

America.’ ” (ibid.).

3. The court of appeals reversed (Pet. App. la-28a). Rely-

ing on the Fifth Circuit’s decision in Easter Seal Society for

Crippled Children & Adults of Louisiana, Inc. v. Playboy

Enterprises, Inc., 815 F.2d 323 (1987), cert. denied, No. 87-482

(Mar. 28, 1988), the court of appeals stated that Section 101

creates “a simple dichotomy * * * between employees and in-

dependent contractors” (Pet. App. 13a (citation omitted)). In

particular, the court explained, Subsection (1) applies whenever

ihe creator of the work is an employee, as defined by principles

of agency law; Subsection (2), the court continued, applies

whenever, under agency principles, the work’s creator is an in-

dependent contractor. Thus, the court held (Pet. App. 19a (em-

phasis in the original)), if a work is created by an independent

contractor, it is governed by Subsection (2) and therefore can-

not be a work made for hire unless it “falls within one of the

specific categories enumerated in [Section] 101(2) and ‘the par-

ties expressly agree in a written instrument signed by them that

the work shall be considered a work made for hire.’ ” Applying

that approach, the court of appeals held that “Third World

America” was not a work made for hire. It explained that

respondent “was an independent contractor and not an

employee of CCNV within the rules of agency law” (Pet. App.

19a). The court accordingly held that Subsection (2) applied;

and under that provision, the court concluded, “sculpture surely

is NOL a category of commissioned work enumerated” and “no

written agreement existed between [petitioner] and [respond-

ent}.”?

> In this connection, the court of appeals noted (Pet. App. 19a n.11) that

respondent had “donated his services, worked in his own studio, and personal-

ly engaged assistants when he needed them.” Moreover, the court observed

(:bid.), “|cjreating sculptures was hardly ‘regular business’ for CCNV.”

’ The court remanded the case for a determination whether petitioners and

respondent may be “joint authors” of the copyright in the sculpture, as well as

tor a determination whether other persons who had assisted in the project

might likewise have a claim of jomt authorship in the copyright. Pet. App.

INTRODUCTION AND SUMMARY OF ARGUMENT

The Copyright Act of 1976, 17 U.S.C. 101 ef seq., defines

two categories of works that may qualify as works made for hire

(17 U.S.C. 101). Subsection (1) covers works prepared by an

“employee within the scope of his or her employment.” Subsec-

tion (2) covers works that are “specially ordered or commis-

sioned” for use in one or more of nine categories, provided that

there is a written agreement, signed by the parties, designating

the work as one made for hire.

It is common ground (see Pet. Br. 14) that “Third World

America” does not meet the work-made-for-hire requirements

under Subsection (2). That is true for two independent reasons:

first, because statues do not fall within any of the categories

enumerated in Subsection (2); and second, because the parties did

not execute a written agreement concerning “Third World

America.” Petitioners contend (Br. 14), however, that Subsection

(2) does not apply to commissioned works that are prepared

under the close supervision of the hiring party, as was the case

with the creation of “Third World America.” Such commissioned

works, petitioners maintain, should be regarded as works pro-

duced by an “employee within the scope of his employment,” and

therefore as a work made for hire under Subsection (1).

Petitioners thus appear to endorse the Second Circuit's deci-

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

cert. denied, 469 U.S. 982 (1984). The court of appeals con-

19a-28a. Those issues are not presented by the petition. We note, however,

that petitioners address the joint authorship issue at some length in their brief

(at 30-32), contending that the court of appeals’ view of joint authorship

would permit an excessive “fractionalization of copyright” (Br. 30). We agree

with petitioners that the court of appeals embraced an uverly-expansive con-

cept of joint authorship. Congress clearly intended to restrict, rather than ex-

pand, the joint-authorship doctrine as it had been articulated under the

pre-1976 Act case law. See Copyright Law Revision, Part 6, Supplementary

Report of the Register of Copyrights on the General Revision of the U.S.

1965). Moreover, we do not believe, as petitioners seem to suggest, that our

construction of the statute requires a similarly expansive view of joint author-

ship claims. In any event, the question of joint authorship is not presented to

this Court for its review.

cluded in that case that “there is no indication in the legislative

history or elsewhere” that Congress intended Subsection (2) to

cover commissioned artists who are “actually sufficiently super-

vised and directed by the hiring party to be considered

‘employees’ acting within ‘the scope of employment’ ” (id. at

552). The Seventh Circuit subsequently adopted the same posi-

tion in its decision in Evans Newton Inc. v. Chicago Systems

Software, 793 F.2d 889, cert. denied, 479 U.S. 949 (1986).

The court below, following the Fifth Circuit’s decision in the

Easter Seal case, took a different approach. It held that Subsec-

tion (1) applies only to “employees” as defined by agency law

principles, while Subsection (2) applies only to “independent

contractors” as defined by agency law. Applying agency prin-

ciples in the present case, the court concluded that “Third

World America” was the work of an independent contractor,

and that it was therefore subject to Subsection (2). Under that

provision, the court held, the statue is not a work made for hire.

More recently, the Ninth Circuit has articulated a third view

of the work-made-for-hire provisions. Dumas v. Gommerman,

No. 87-6542 (Jan. 13, 1989).4 After reviewing the statutory

language and legislative history, that court concluded that

“(o}nly the works of formal, salaried employees” are covered by

Subsection (1), while a// commissioned works, regardless of the

supervision and control of the hiring party, must meet the work-

made-for-hire criteria of Subsection (2). Slip op. 312, 317-318.

The court rejected (id. at 317-318) the proposition that the work

of an independent contractor may be encompassed within

Subsection (1), explaining that “the drafters wanted a bright line

between employees and independent contractors” (id. at 318).

We agree with the Ninth Circuit. The language, history, and

purposes of the work-made-for-hire provisions make clear that

Subsection (1) applies only to works produced by regular,

salaried employees, while Subsection (2) applies to a// commis-

sioned works, regardless of whether the hiring party has exer-

cised control over the creative process. “Third World America”

is therefore governed exclusively by Subsection (2); and since it

* We have lodged copies of the Dumas case tor the convenience of the

€ ourt

does not meet the work-made-for-hire criteria under that provi-

sion, respondent, not petitioners, owns the copyright in the

statue.

A. This result is compelled by the text of the Copyright Act.

Subsection (2) applies to any “specially ordered or commis-

sioned” work, not just to those works prepared without close

supervision. By contrast, Subsection (1) applies to business rela-

tionships that have a “scope” — ongoing relationships, in other

words, as opposed to contracts to create a particular work. Peti-

tioners’ agreement with respondent was plainly a “commission,”

in the ordinary sense of the word. It is that ordinary sense of the

word that governs. “Third World America” is accordingly sub-

ject exclusively to Subsection (2) and is not a work made for

hire.

B. The history of the work-made-for-hire provisions con-

firms the meaning of the text. At the time the provisions were

drafted, the existing work-made-for-hire statute, Section 26 of

the 1909 Act, had been applied by the courts only to works

prepared by regular, salaried employees; it had never been ap-

plied to commissioned works. Not surprisingly, therefore, the

parties who participated in the revision process understood the

proposed text of Subsection (1), which was based on Section 26,

to apply only to formal employment relationships. What is

more, the development and drafting history of Subsection (2),

which governs commissioned works, is squarely at odds with

petitioners’ view of the statute. That history shows that Con-

gress deliberately narrowed the class of commissioned works

that could be treated as works made for hire to nine specific

categories; it did not intend to confer work-made-for-hire status

on other kinds of commissioned works simply because they may

have been prepared under close supervision. Moreover, the

history shows that Congress selected the nine categories in

Subsection (2) because it believed that those specific kinds of

commissioned works are typically created with more, not /ess,

supervision by the hiring party, and that they should therefore

be governed by the same legal standards as works prepared by

regular, salaried employees.

C. Finally, petitioners’ construction of the work-made-for-

hire provisions would inject unnecessary uncertainty into or-

dinary copyright transactions. Under petitioners’ test, the deter-

mination of copyright ownership would depend upon whether

the hiring party actually exercised supervision and control over

the creative process. Such an assessment, however, could not be

made until long after the parties had negotiated for the creation

of a particular work. Petitioners’ interpretation would thus

render rational copyright planning more difficult in any transac-

tion involving independent contractors. °

ARGUMENT

“THIRD WORLD AMERICA” IS NOT A WORK MADE FOR

HIRE UNDER THE COPYRIGHT ACT OF 1976, AND RE-

SPONDENT ACCORDINGLY OWNS THE COPYRIGHT IN

A. The Language and Structure Of The Statute Demonstrate

That “Third World America” Is Governed Exclusively By

Subsection (2) And Is Therefore Not A Work Made For Hire

In copyright cases, as elsewhere, “it is appropriate to assume

that the ordinary meaning of the language that Congress

employed ‘accurately expresses the legislative purpose.’ ” Mills

Music, Inc. v. Snyder, 469 U.S. 153, 164 (1985) (footnote

omitted). Accord INS v. Cardoza-Fonseca, 480 U.S. 421, 432

n.l2 (1987); Consumer Product Safety Comm’n v. GTE

Svivania, Inc., 447 U.S. 102, 108 (1980); Aaron v. SEC, 446

U.S. 680, 695 (1980); Greyhound Corp. v. Mt. Hood Stages,

Inc., 437 U.S. 322, 330 (1978). The text and structure of the

* In a January 25, 1983 letter to Senator Cochran, reproduced by petitioners

a an appendix to their brief (at la-12a), the Copyright Office offered “ten-

tative preliminary views” that appear to be consistent with the Second Circuit's

decision in Aldon Accessories (see Br. 6a). The Copyright Office expressed

similar views in an August 21, 1986 letter to Senator Cochran. Those views did

not reflect, however, a detailed examination of the work-made-for-hire provi-

sions. Having now conducted such an examination, the Copyright Office has

concluded that the analysis of Subsections (1) and (2) articulated by the Ninth

Circuit in the Dumas case is correct. For that reason, the Copyright Office has

also withdrawn Circular R-9 (Dec. 1985), cited by petitioners in their brief (at

42-43 n. 21).

work-made-for-hire provisions make clear that “Third World

America” is a “commissioned” work, subject to Subsection (2),

and not the work of an “employee within the scope of his or her

employment” under Subsection (1). Because “Third World

America” does not meet the work-made-for-hire requirements

of Subsection (2), respondent owns the copyright in the statue.

1. Subsection (2) applies to “specially ordered or commis-

sioned” works, and it extends work-made-for-hire status

whenever such a work falls into one of nine specific categories

and there is a written instrument, signed by the parties, pro-

viding that the work shall be considered a work made for hire.

The words “specially ordered” and “commissioned” should be

given their ordinary meaning. To “commission” someone is “to

appoint [him] to a certain task, mission, function or duty.”

Webster’s Third International Dictionary of the English

Language 457 (1986). “In the ordinary case where one person is

requested by another to prepare a copyrightable work, a com-

missioned relationship exists.” 1 Nimmer on Copyright §

§.03({B}(2}[d], at 5-26 (1988) (footnote omitted). Thus, “[a}s the

phrase implies, a work prepared on special order or commission

is one created upon the order or request of a party other than

the author.” Angel & Tannenbaum, Works Made For Hire

Under §.22, 22 N.Y.L. Sch. L. Rev. 209, 227 (1976).

Unlike the relationship between “employer” and “employee,”

a “commissioned” relationship is defined by a particular pro)-

ect. As in the present case, the creator may have had no prior

business relationship with the commissioning party; rather, his

contract with the commissioning party is a contract to ac-

complish a particular task. By contrast, Subsection (1), which

extends work-made-for-hire status to “a work prepared by an

employee within the scope of his or her employment,” covers

business relationships that have a “scope.” Thus, Subsection (1)

applies to ongoing relationships, involving a specific stream of

services that can be defined as falling “within the scope” of that

relationship. Whereas a “commissioned” party contracts to

create a particular work, and is otherwise free to create like

works for others, an “employee” within the meaning of Subsec-

tion (1) enjoys a formal, continuous obligation to perform serv-

ices for his employer, who is entitled, for an agreed-upon salary,

to request his employee to work on whatever projects are consis-

tent with the employment relationship.

2. Petitioners construe Subsection (2) more narrowly. In

their view, some commissioned works are not subject to Subsec-

tion (2); they assert that Subsection (2) applies only to those

commissioned works prepared without the “supervision and

control” of the hiring party (see Br. 15). But Subsection (2) can-

not bear that narrowing construction. The provision applies, by

its terms, to any “work specially ordered or commissioned” —

not just to those produced without active supervision. Indeed,

Subsection (2) does not focus at all on how a project is ex-

ecuted—whether or not it is closely supervised. Instead, that

subsection looks to how a project is initiated: by “special{]

order” or “commission.”® Moreover, Subsection (2) was ob-

viously drafted with considerable care, stating two precise pre-

requisites for treating “commissioned works” as works made for

hire. At the same time, Congress adopted no other criterion ac-

cording to which “commissioned” works could be deemed

works made for hire. There is no warrant for imputing a

criterion that Congress did not enact. Cf. Andrus v. Glover

Constr. Co., 446 U.S. 608, 616-617 (1980); TVA v. Hill, 437

U.S. 153, 188 (1978); Aaron v. SEC, 446 U.S. 680 (1980).

Correspondingly, petitioners construe Subsection (1) more

broadly than we do. In their view, Subsection (1) applies not

only to works created by regular, salaried employees, but also to

commissioned works that have been produced under the super-

vision of the hiring party. Again, the language will not bear the

weight petitioners place on it. Unlike Subsection (2), Subsection

® The text of Subsection (2) suggests, if anything, that the commissioning

party may quite often exercise close supervision over the projects covered by

that provision. The subsection applies to “specially” ordered works. One way

in which a commissioning party may place a “special” order is to state what he

wants created in “starkly specific detail” (Pet. Br. 15), and thereafter to

monitor its production closely.

(1) does not purport to cover commissioned works ait all. And

while the word “employee” may arguably be stretched to encom-

pass a person who works under another’s control, Subsection

(1) does not address works prepared by “employees”; it ad-

dresses works prepared by employees “within the scope of

[their] employment.” That additional language — language that

petitioners never address— makes it clear that Subsection (1)

covers business relationships that involve a “scope” of services.

It does not cover contracts to execute a discrete project.

3. When the plain meaning of the provisions is honored, it

is clear that “Third World America” is not a work made for hire.

Petitioners requested respondent to create a particular work of

art. The parties enjoyed no prior business relationship, nor did

they have any relationship thereafter. The only obligation

respondent bore was to complete his portion of the statue so

that petitioners could display the statue during the Christmas

Pageant. In short, petitioners “commissioned” respondent to

create a work.’ “Third World America” is therefore covered by

Subsection (2), and not by Subsection (1). Since sculpture is not

one of the nine categories of works listed in Subsection (2), and

since in any event there was no written agreement between the

parties, “Third World America” cannot be deemed a work made

for hire. Respondent therefore owns the copyright in the statue.

” Indeed, petitioner Synder testified that after resolving to participate in the

Christmas Pageant, CCNV “decided to go forward and commission * * * a

statue” (7/25/86 Tr. 8). In fact, Snyder and his trial counsel repeatedly used

the term “commission” to describe CCNV’s relationship with respondent

(7/25/86 Tr. 9, 47; 2/2/87 Tr. 34, 38, 39, 40, 43; 2/6/87 Tr. 262). And in issu-

ing a preliminary injunction in this case, the district court found that “Third

World America” was “commissioned by CCNV and made on commission by

the artist” (7/25/86 Tr. 49). See also 7/25/86 Tr. 15 (describing the “commis-

sion” to build the base for the statue); 2/2/87 Tr. 142 (testimony of James Ear!

Reid).

B. The Legislative History of The Work-Made-For-Hire Provi-

sions Confirms The Plain Meaning Of The Text

1. The work-made-for-hire provisions were formulated be-

tween 1961 and 1966, in an extensive revision process in which

the Copyright Office took the lead role, and in which various af-

fected interests expressed their particular views.* Both “the con-

tent of the pre-legislative dialogue and the context in which it

occurred indicate that by using the term ‘employees’ the parties

meant to limit works made for hire under [Subsection (1)]} of the

definition to works created by a salaried worker in a long-term

position.” Litman, Copyright, Compromise, and Legislative

History, 72 Cornell L. Rev. 857, 890 (1987) (footnotes omitted).

At the time that the work-made-for-hire provisions were be-

ing considered, the existing work-made-for-hire provision, Sec-

tion 26 of the 1909 Copyright Act, 17 U.S.C. 26 (1976 ed.), pro-

vided simply that “the word ‘author’ shall include an employer

in the case of works made for hire.” Although the statute did

not define “employer” or “work made for hire,” the case law

under Section 26 had up to that time applied the work-made-

for-hire doctrine solely in cases involving regular, salaried

employees.’ Borge Varmer’s 1958 study of ihe work-made-for-

hire doctrine, which he prepared for the Copyright Office in

* This Court observed in Mills Music that the Copyright Office assumed

central responsibility for the development of the 1976 Act, including

“authorizing a series of 34 studies on major issues of copyright law”;

“conduct{ing] numerous meetings with representatives of the many parties that

the copyright law affected”; “issu[ing] a preliminary draft revision bill”; “sub-

mitt{ing] [a] 1965 draft revision bill”; and “prepar{ing] a supplementary report

to accompany the 1965 draft revision bill” (469 U.S. at 159-160).

* In light of the origin of Section 26, that is hardly surprising. As petitioners

correctly note, Section 26 “effectively codified” (Br. 18-19 n.6) this Court's

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

There, the Court upheld an employer's claim to the copyright in three

chromolithographs produced by formal, salaried employees (see 188 U.S. at

248). See also Hamilton, Commissioned Works as Works Made for Hire

Under the 1976 Copyright Act: Misinterpretation and Injustice, 135 U. Pa. L.

Rev. 1281, 1284 (1987) (citing legislative history suggesting that Section 26 was

intended to apply solely to works prepared by regular, salaried employees).

connection with the revision process, confirms the point. B.

Varmer, Works Made For Hire And On Commission,

Print 1960) (“Varmer 1958 Study”). In that study — which peti-

tioners aptly describe as “(t]he genesis for the 1976 Act’s work

for hire provisions” (Br. 21)— Varmer examined the text of, and

decisions interpreting, Section 26. He found that while the

courts had not articulated a general definition of works made

for hire, “all the cases have involved salaried employees who

received either a fixed salary or a minimum salary plus commis-

sion” (Varmer 1958 Study, at 130). “[{I]t may be concluded,” he

wrote, “that section 26 refers only to works made by salaried

employees in the regular course of their employment” (ibid.).'°

By contrast, at the time of the copyright revision the courts

had not applied Section 26 or the work-made-for-hire doctrine

to commissioned works. Instead, the courts had developed and

applied a common law presumption that a commissioned party

impliedly agrees to convey the copyright, along with the work

itself, to the hiring party. The leading case was the Second Cir-

'® Petitioners acknowledge (Br. 21-22, 27 n.10) the Varmer study, but they

contend that “[njone of the cases cited by Varmer * * * considered the ques-

tion of whether an employment relationship exists where the artist is subject to

supervision and control but does not receive a ‘salary’ ” (Br. 27 n.10). This ig-

nores the fact that Varmer purported to have examined all of the cases decided

under Section 26; petitioners do noi suggest that he overlooked any that might

have been helpful to their interpretation of the work-made-for-hire doctrine.

The fact that no such cases had been reported confirms Varmer’s conclusion

that Section 26 was not intended to apply absent a formal employment rela-

tionship. Petitioners also quote a passage from the Varmer study in which

Varmer explained that works created by employees are treated as works made

for hire, whereas commissioned works are not, because “an employer general-

ly gives more direction and exercises more control over the work of his

employee than does a commissioner with respect to the work of an indepen-

dent contractor” (Br. 21 (citation and emphasis omitted)). It is doubtless true

as Varmer observed, that as a general matter an “employee” is subject to closer

supervision than is a commissioned artist. But Varmer did nor state, as peti-

tioners mistakenly assert (Br. 27 n.10), that any artist whose efforts are subject

to control by a hiring party is therefore an “employee” of that hiring party for

purposes of the work-made-for-hire doctrine.

cuit’s decision in Yardley v. Houghton Mifflin Co., 108 F.2d 28

(1939), cert. denied, 309 U.S. 686 (1940). There, the court of ap-

peals held that the City of New York owned the copyright in a

mural that it had commissioned an artist to paint on the wall of

a high school auditorium. In reaching that result, the court did

not apply Section 26, nor did it conclude that the City was

somehow the artist’s “employer.”'' Instead, it “indulged” the

“presumption” that “[w]hen an artist accepts a commission to

paint a picture for another for pay, he sells not only the picture

but also the right to reproduce copies thereof unless the

plicit, of the contract” (108 F.2d at 30-31).'?

2. It was in that legal context —in which work-made-for-hire

status had been conferred only on works created by regular,

salaried employees — that the revision of the work-made-for-hire

definition took place. Not surprisingly, therefore, the Copyright

Office, in its initial legislative proposal, recommended that no

commissioned works be included within the ambit of the pro-

posed work-made-for-hire provisions. The 1961 Report of the

regarded commissioned works as ‘made for hire’ ” (Copyright

Law Revision, Report of the Register of Copyrights on the

'\ The Yardley court did not cite the work-made-for-hire provision in the

1909 Act. What is more, the court went on to hold that the artist's executor,

and not the City, had the right to renew the copyright under Section 24 of the

1909 Act, 17 U.S.C. 24 (1976 ed.) — which extended the right to renew only to

“authors” or their family and executors. The court of appeals thereby

acknowledged, albeit implicitly, that although a commissioned party is

presumed to transfer his initial copyright to the hiring party, he retains formal

authorship, and thus cannot be chagacterized as an “employee” within the

meaning of the work-made-for-hire provision. Accord Dumas vy. Gommer-

man, No. 87-6542 (9th Cir. Jan. 13, 1989), slip op. 300 n.4.

‘2 Cases following Yardley articulated the same presumption. See, e.g., Lin-

Brook Builders Hardware v. Gertler, 352 F.2d 298, 300 (9th Cir. 1965); McAay

\. Columbia Broadcasting System, Inc., 324 F.2d 762, 763 (2d Cir. 1963); OF-

ficial Aviation Guide Co. v. American Aviation Associates, Inc., 150 F.2d

173, 178 (7th Cir.), cert. denied, 326 U.S. 776 (1945); Grant v. Kellogg Co., 58

F. Supp. 48, $1 (S.D.N.Y. 1944), aff'd, 184 F.2d 59 (2d Cir. 1946). See also

Varmer 1958 Study, at 130. None of those cases held that a commissioned ar-

tist is an “employee” for purposes of Section 26.

General Revision of the U.S. Copyright Law, 87th Cong., Ist

Sess. 86 (Comm. Print 1961)); and the Copyright Office

therefore submitted a Preliminary Draft Bill in 1963 defining

“work made for hire” as “a work prepared by an employee

within the scope of the duties of his employment, but not in-

cluding a work made on special order or commission”

(Copyright Law Revision, Part 3, Preliminary Draft For Re-

vised U.S. Copyright Law and Discussions and Comments on

the Draft, at 15 n.11 (1964)).

That proposal met substantial resistance, chiefly from book

publishers. Significant for present purposes, however, is the fact

that the publishers and their allies uniformly acknowledged that

under the Copyright Office’s proposal — extending work-made-

for-hire status solely to works “prepared by an employee within

the scope of the duties of his employment” (now Subsection

(1))—only works created by regular, salaried employees could

be treated as works made for hire. For example, the American

Book Publishers complained that the suggested work-made-for-

hire provisions would “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.” Copyright Law

Revision, Part 4, Further Discussions and Comments on

Preliminary Draft for Revised U.S. Copyright Law, 88th

Cong., 2d Sess. 250 (Comm. Print 1964) (Nov. 1963 letter from

Dan Lacy, Managing Director, to Register of Copyrights).

Similarly, John R. Peterson, representing the American Bar

Association, contended that there was no “valid philosophical

or economic difference between the situation in which you have

a man on a continuing basis of orders which justifies placing

him on your payroll, and the situation in which you give him a

particular order for a particular job.” In Peterson’s view, a hir-

ing party may not “have enough work to keep [the creator] on

the payroll all the time, yet that work essentially is ‘made for

hire.’ ” Copyright Law Revision, Part 3, at 260-261. Indeed, to

our knowledge, every commentator who has canvassed the

legislative history of the 1976 Act has concluded that the par-

ticipants in the revision debates understood the language in Sec-

tion (1) to refer solely to regular, salaried employees.'* As the

Ninth Circuit recently explained, “ ‘plenty of discussion in-

dicates that everyone involved understood the term

{“employee”] to mean someone working for an employer in a

salaried job, and understood the term to exclude freelance

workers completely.” Dumas v. Gommerman, No. 87-6542

(Jan. 13, 1989), slip op. 305-306 (emphasis and citation

omitted).

Following the initial proposal of the Copyright Office in

1963, the publishers and authors debated the question whether,

and to what extent, commissioned works should be added to the

proposed work-made-for-hire definition. As petitioners

acknowledge, however, the provision governing “employees,”

which would ultimately be enacted as Subsection (1), “was

essentially non-controversial” (Br. !5), and was not further

amended during the subsequent debates. See also Br. 28. As far

as we can determine, none of the participants in those debates

ever suggested that Subsection (1) might be applied to works

that are not created by regular, salaried employees.

3. The subsequent development of the commissioned works

provision, now Subsection (2), is also fundamentally at odds

with petitioners’ construction of the statute. That legislative

history confirms two central propositions: First, contrary to

petitioners’ interpretation of Subsection (1), Congress did not

intend to confer work-made-for-hire status on otherwise com-

missioned works that happen to be created under the close

supervision of the hiring party. Rather, it carefully limited the

kinds of commissioned works entitled to work-made-for-hire

status to the nine categories enumerated in Subsection (2). Sec-

ond and relatedly, Congress did not intend Subsection (2) to ap-

ply only to those commissioned works that are created without

close supervision by the hiring party. To the contrary, Congress

selected the nine categories in Subsection (2) because it was con-

vinced that those particular kinds of commissioned works are

') See, e.g., Hardy, Copyright Law's Concept of Employment — What Con-

eress Really Intended, 38 J. of the Copyright Soc. of the USA 210, 225-227

(1988) (collecting contemporaneous statements); Liman, Copyright, Com-

promise, and Legislative History, 72 Cornell L. Res. 857, 901 (1987)

typically created with close supervision, and therefore should be

governed by the same legal principles that apply to works of

“employees” under Subsection (1).

a. In urging the Copyright Office to include at least certain

kinds of commissioned works within the work-made-for-hire

provisions, the publishers contended that there are “a great

many works which for practical reasons are prepared ‘on special —

order or commission’ but which by their nature deserve to be

treated as ‘works made for hire’ ” (Copyright Law Revision,

Part 6, Supplementary Report of the Register of Copyrights on

the General Revision of the U.S. Copyright Law, 1965 Revision

Bill, 89%h Cong., Ist Sess. 66-67 (Comm. Print 1965)). The

publishers acknowledged that “there are many works, such as

serious music and choreography, that are written ‘on special

order or commission’ but that should not be regarded as ‘works

made for hire’” (id. ai 67). Nevertheless, they reasoned that

other kinds of commissioned works “are prepared by freelance

authors at the instance, direction, and risk of a publisher or pro-

ducer” (ibid.).'* The publishers argued that the latter categories

of works — which, in their view, included translations, maps, il-

lustrations in books, front matter and appendixes, contribu-

tions to dict*onaries and encyclopedias, and parts of motion pic-

tures (ibid.)— should be governed by “the same legal and policy

considerations dictating special treatment of ‘works made for

hire’ ” (ibid.).

The publishers’ concerns were addressed in the 1964 revision

bill. That bill provided in pertinent part that “{a] ‘work made for

‘* For example, the textbook publishers contended that in the case of cer-

tain reference and collective works, such as maps, atlases, and encyclopedias,

“|t}he publisher is in reality the creator * * * and hires individuals to prepare

segments of it under its supervision and control (very similar to the creation of

a motion picture).” Copyright Law Revision, Part 3, at 340-341 (1964) (letter

trom Ellis Arnal!, Esq., on behalf of American Textbook Publishers Institute,

to Register of Copyrights). Similarly, Bella Linden, attorney for the American

Textbook Publishers Institute, explained that reference works such as en-

cyclopedias and maps “are created as composite works where the publisher

participates creatively and orders and commissions segments * * *." Copyright

Law Revision, Part $, 1964 Revision Bill with Discussion and Comments, 8%h

Cong., Ist Sess. 149 (Comm. Print 1965).

hire’ is a work prepared by an employee within the scope of his

employment, or a work prepared on special order or commis-

sion if the parties expressly agree in writing that it shall be con-

sidered a work made for hire.” S. 3008, H.R. 11947, H.R.

12354, 88th Cong., 2d Sess. (1964) (reproduced in Copyright

Law Revision, Part 5, 1964 Revision Bill with Discussion and

Comments, 89th Cong., Ist Sess., 9, 31 (Comm. Print 1965)).

But that bill—which would have extended work-made-for-hire

status to all categories of commissioned works, whenever there

was a written agreement—“drew even heavier fire from the

representatives 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,’ and that ordinary book publica-

tion contracts, signed before the author has completed the work

and calling for an advance against royalties, could be converted

into ‘employment agreements’ as as matter of course”

(Copyright Law Revision, Part 6, at 67).

“In an effort to reconcile these conflicts” (Copyright Law

Revision, Part 6, at 67), the competing parties reached a

“carefully worked out compromise aimed at balancing

legitimate interests on both sides” (id. at 66). That compromise,

whose terms were embodied in a joint memorandum (see

comm. No. 3 of the House Comm. on the Judiciary, 89h

Cong., Ist Sess. 134 (1965)), was reflected in the 1965 revision

bill. That bill defined “work made for hire” in the same form,

and nearly the same terms, as the bill that Congress would

ultimately approve, 11 years later, in the Copyright Act of 1976:

(1) a work prepared by an employee within the scope of his

employment; or

(2) a work specially ordered or commissioned for use as a

contribution to a collective work, as part of a motion pic-

ture, aS a translation, or as a supplementary work, if the

parties expressly agree in writing that the work shall be

considered a work made for hire.

The 1965 bill thus extended work-made-for-hire status to

those categories of commissioned works—but only those

categories —that are ordinarily prepared “at the instance, direc-

tion, and risk of a publisher or producer” (Copyright Law Revi-

sion, Part 6, at 67). In addition, the Register of Copyrights

made clear that under the 1965 bill only the “four special cases

specifically mentioned” could be treated as works made for hire,

and only if there is a written agreement. “Other works made on

special order or commission,” the Register explained, “would

not come within the definition.” /d. at 67-68.

In 1966, Congress drafted a revised bill that expanded the

categories of commissioned works contained in Subsection (2)

to include “a compilation,” “an instructional text,” “a test,” and

“an atlas.” See H.R. Rep. No. 2237, 89th Cong., 2d Sess. 116

(1966). In the accompanying report, the House, approving the

language of the 1965 Register’s supplementary report, reiterated

that the work-made-for-hire provisions were “‘a carefully

worked out compromise aimed at balancing legitimate interests

on both sides’ ” (id. at 114). The House noted that the status of

commissioned works had “been a continuing issue” (id. at 115).

On the one hand, the House stated, “some commissioned works

concededly should not be regarded as made for hive” (ibid.); in

other cases, however, “the distinction between works made for

hire or On commission is a purely technical one” since “in either

case the work is prepared at the employer's initiative and risk

and under his direction” (ibid.). “The problem,” the House ex-

plained, “is how to draw a statutory line between those works

written on special order or commission that should be con-

sidered as works made for hire, and those that should not”

(ibid.). Although the 1965 revision bill had “moved in the direc-

tion of a solution” (ibid.), the House noted that the affected

parties had reached a further “compromise * * * aimed at add-

ing additional categories to the four types of commissioned

work dealt with specially in the definition of works made for

hire” (id. at 116). The House agreed to incorporate that com-

promise.

With the single addition of “answer material for a test,” the

1976 Act, as enacted, contained the same definition of works

made for hire as did the 1966 revision bill, and it contained the

same structure and nearly the same terms as the 1965 bill. In the

accompanying report, the House reiterated that “[t}he basic

problem is how to draw a statutory line between those works

written on special order or commission that should be con-

sidered as ‘works made for hire’ and those that should not”

(H.R. Rep. No. 1476, 94th Cong., 2d Sess. 121 (1976)). It also

stated plainly that “(t}he definition now provided by the bill

represents a compromise which, in effect, spells out those

specific categories of commissioned works that can be con-

sidered ‘works made for hire’ under certain circumstances

(ibid.).

b. Petitioners’ analysis of the work-made-for-hire provi-

sions cannot be squared with this history. Plainly, Congress did

not intend to permit any and every kind of commissioned work

to be deemed a work-made-for-hire, simply because it may have

been prepared under the supervision of the hiring party. To the

contrary, Congress chose particular categories of commissioned

works to include in Subsection (2), and it refused to expand that

set any further.'* Moreover, Congress's reasons for choosing

those particular categories belie petitioners’ supposition that

Subsection (2) applies only to unsupervised commissioned

works. Indeed, just the opposite is true: Congress selected the

’ For example, the 1969 Senate revision bill proposed that Subsection (2) be

expanded to include works specially ordered of commissioned for use “as a

photographic or other portrait of one of more persons.” The Copyright Office

objected to that proposal, explaining that “[t}he addition of portraits to the list

of commissioned works that can be made into ‘works made for hire’ by agree-

ment of the parties is difficult to justify. Artists and photographers are among

the most vulnerable and poorly protected of all the beneficiaries of the

choreographers, they were not intended to be treated as ‘employees’ under the

caretully negotiated definition in section 101.” Second Supplemen.ary Report

of the Register of Copyrights on the General Revision of the U.S. Copyright

Luw: 1975 Revision Bill, ch. XI, at 12-13 (1975). The Copyright Office thus

viewed Subsection (2) of the work-made-for-hire provisions as a closed set,

embracing only those categories of “specially ordered or commissioned” works

that deserved to be treated, as a legal matter, in the same way that works of an

“employee” were treated under Subsection (1). Photographs, the Copyright

Office concluded, were not intended to be included within that closed

set —even if, in a particular case, the photographer worked under the clove

supervision of the hiring party. The proposal to add photographs to Subsec-

tion (2) was ultimately abandoned in Congress

-——

nine categories in Subsection (2) because it was persuaded that,

like the work of an “employee acting within the scope of his

employment,” those categories of commissioned works, but

only those categories, are typically “prepared at the employer's —

initiative and risk and under his direction” (H.R. Rep. No.

2237, supra, at 115).

In effect, if not by design, petitioners propose to unravel

Congress's “ ‘carefully worked out compromise aimed at bal-

ancing legitimate interests on both sides’ " (H.R. Rep. No. 2237

at 114). Under their approach, any commissioned work can be a

work made for hire, so long as the hiring party has controlled its

production. But the legislative history shows that when Con-

gress was persuaded that a type of work is typically prepared

under close supervision, it included that work as a distinct

category within Subsection (2). Congress “drje}w a statutory

line” (H.R. Rep. No. 2237 at 115) at nine categories. Petitioners

have no warrant for revising that congressional design. '*

3. Petitioners nevertheless contend that by tue time Con-

gress enacted the Copyright Act of 1976, there was a line of

cases holding that under Section 26 of the 1909 Act —the old

work-made-for-hire provision—an employment relationship

‘* As one commentator has summarized the point:

The legislative history shows that Congress intended that only a commis.

sioned work in one of the enumerated categories could become a work

made tor hire. Nonenumerated commissioned works may not become

works made for hire, even by a written agreement. Whether a commis-

sioned work falls under the works-made-for-hire provision does not de-

pend on whether the commissioner or the independent contractor is the

true creator. Congress simply enumerated nine types of works that ap-

peared to it to be created under conditions very similar to employment.

* * * In structuring the provision this way, Congress mirrored the policy

applied to works created by employees: to reward the party at whose

economic risk the work was prepared.

Note, The Creative Commissioner: Commissioned Works Under The

omitted). Accord Hamilton, Commissioned Works as Works Made for Hire

Under the 1976 Copyright Act: Misinterpretation and Injustice, 135 U. Pa. lL.

Rev. 1281, 1295 (1987); Angel & Tannenbaum, Works Made for Hire Under

§. 22, 22 N.Y. L. Sch. L. Rev. 209, 236-237 (1976). |

exists whenever the hiring parfy has exercised control or supervi-

sion over the artist’s work (Br. 18-19). Petitioners surmise that

Congress must have intended to adopt that line of cases when it

enacted Subsection (1), since “[nJowhere in the 1976 Act or in

the Act’s legislative history d[id] Congress state that it intended

to jettison the control standard or otherwise to reject the pre-

Act judicial approach to identifying a work for hire employ-

ment relationship” (Br. 20). That contention is mistaken for two

reasons.

First, petitioners do not point to any evidence that Congress

actually intended to enact the judicial definition of “employ-

ment” to which they advert.'’ Petitioners rely, instead, on Con-

gress’s failure “to jettison” that definition. But ordinarily “Con-

gress’ silence is just that—silence” (Alaska Airlines, Inc. v.

Brock, 480 U.S. 678, 686 (1987));'* and silence in the legislative

history cannot impeach the plain meaning of Subsection (2) (see

Bourjaily v. United States, No. 85-6725 (June 23, 1987), slip op.

6; Harrison v. PPG Indus., Inc., 446 U.S. 578, 592 (1980)).

Second and in any event, petitioners’ account of the

legislative history is mistaken. As we showed above, the struc-

ture of the work-made-for-hire provisions was fully developed

by 1965, and its text was agreed upon in essentially final form by

’ Indeed, “{t}here is no indication that anyone involved in copyright revi-

sion later became aware of the line of cases expanding the work made for hire

doctrine.” Litman, supra, 72 Cornell L. Rev. at 901 (footnote omitted). As

amici curiae Computer and Business Equipment Manutacturers Association,

et al. concede, “{njowhere do the House and Senate Reports * * * even refer

to” this line of cases (Br. 10).

'* Congress's failure explicitly to meorporate the judicial construction ot

“employment” is particularly telling, since in other respects Congress made

clear when it intended to embrace existing case law. See, e.g., H.R. Rep. No.

1476, at 121 ("There is * * * no need for a specitic statutory provision concern-

ing the rights and duties of the coowners [sa] of a work; court-made law on

this point is left undisturbed”). Accord Dumas +. Gommerman, slip op.

313-314. Moreover, in other instances, Congress clearly altered preexisting

case law without expressly signalling in the legislative reports that u was doing,

so. See, ¢.¢., Litman, supra, 72 Cornell L. Rev. 901 0.275 tdiscussing provt-

sion regarding automatic vesting of copyright upon tivation)

1966.'° As of that time, the courts had applied the work-made-

for-hire doctrine exclusively in cases involving regular, salaried

employees, and had not included commissioned works within

the ambit of Section 26 of the 1909 Act.?° It was not until 1966

that the Second Circuit, in a line of cases beginning with Brar-

leboro Publishing Co. v. Winmill Publishing Corp., 369 F.2d

565, brought commissioned works within the ambit of the term

“employer” under the 1909 work-made-for-hire doctrine.?' Ac-

cord Murray v. Gelderman, 566 F.2d 1307 (Sth Cir. 1978) (ap-

plying 1909 Act); Epoch Producing Corp. v. Killiam Shows,

Inc., 522 F.2d 737 (2d Cir. 1975), cert. denied, 424 U.S. 955

(1976); Picture Music, Inc. v. Bourne, Inc., 457 F.2d 1213 (2d

Cir.), cert. denied, 409 U.S. 997 (1972). That conclusion, which

the Yardley court had rejected (see pages 14-15 & n.11, supra),

was entirely new law. As the Ninth Circuit has recently ex-

plained, the Yardley presumption “was gradually expanded into

a presumption that anyone who paid an artist to create a

'* Cf. Mills Music, 469 U.S. at 160-161 (footnotes omitted) (“[a}lthough ad-

ditional hearings were held in subsequent sessions, and revision bills were sub-

mitted to Congress in each term for the next 10 years, discussion over the ter-

mination provisions * * * was essentially completed at this time. Congress

enacted the termination provisions * * * in the 1976 Act in virtually the same

form as they appeared in the 1965 draft revision bill”).

** As one commentator has put it, “fijn 1965, when the Parties reached

[their] compromise, courts had not yet extended the scope of works made for

hire to include commissioned works. That particular line of cases developed in

the decade to follow.” Litman, supra, 72 Cornell L. Rev. at 890 n.215.

*' In Brattleboro, a newspaper contended that its copyright in certain ad\ er-

(tisements had been infringed by a direct mail circular that published the same

advertisements at the request of the advertisers. The court of appeals rejected

the newspaper's claims, holding that under Section 26 of the 1909 Act the

newspaper did not own the copyright in the advertisements. The court noted

the presumption under Yardley that “the copyright shall be in the person at

whose instance and expense the work is done” (369 F.2d at $67), and it per-

ceived no reason why that presumption should not be extended to a situation

where “the parties bear the relationship of employer and independen contrac.

tor” (id. at $68). Rather than presuming that the contractor comveyed the

“employer” tor purposes of the work-made-for-hire doctrine.

copyrightable work was the statutory author under the work for

hire doctrine.” Dumas v. Gommerman, No. 87-6542 (Jan. 13,

1989), slip. op. 300 (footnote omitted).

The fact remains, however, that by as late as 1966— at which

point the revision of the work-made-for-hire provisions was

essentially complete —the courts had applied Section 26 of the

1909 Act only to works created by regular, salaried employees,

and never to works made on commission. Petitioners’ analysis

of the 1976 Act—which rests on the premise that Congress

failed “to jettison” the Brattleboro line of cases—simply does

not hold up. Congress could not have “jettisoned” a line of cases

that had not yet been decided when the revised work-made-for-

hire provisions were formulated.??

C. Petitioners’ Construction of the Work-Made-For-Hire Pro-

visions Would Subject Copyright Negotiations To Excessive

Uncertainty

The drafters of the work-made-for-hire provisions “intended

the definition to be tailored to the realities of the copyright

22 There is another, more general reason why it is appropriate in this case to

regard 1965-1966, rather than 1976, as the relevant period for fixing legislative

intent. The Copyright Act of 1976 was largely the product of “compromise be-

tween Competing interests” and most of the Act, including the work-made-tor-

hire provisions, “was drafted by the Copyright Office, which ts itself an arm of

Congress” (Mills Music, 469 U.S. at 182 n.6 (White, J., dissenting)). “The

legislative materials disclose a process of continuing negotiations among

Various industry representatives, designed and super\ised by Congress and the

negotiated consensus.” Litman, supra, 72 Cornell L. Rev. at 862. Here, as in

Mills Music (see 469 U.S. at 160-161), the relevant statutory provisions were

fully negotiated between the parties by about 1965, and Congress thereafter

did little or nothing to upset the compromise reached by the competing tac-

tions. Indeed, the enacted provisions reflect exactly the compromise struck by

the publishers and authors ten years earlier. Petitioners’ construction of the

work-made-for-hire provisions, which reads into them a line of judicial deci-

sions that could not possibly have been before the \arious parties during the

relevant time period, is for that reason unfaithful to the essentially “contrac-

tual” nature of the compromises adopted in Subsections (1) and (2). Ct.

Easterbrook, Foreword: The Court and the Economic System, 98 Har. L.

Rev. 4, 46 (1984).

marketplace.” Dumas v. Gommerman, slip op. 318 n.18. In a

rational “copyright marketplace,” parties negotiate with an ex-

pectation that one or the other of them will clearly be the owner

of the copyright in the completed work. Armed with that

knowledge, the parties can then more readily settle on the rele-

vant contractual terms — such as the price for the work, and who

shall have rights to future reproduction when the work is com-

pleted and ready for exploitation.

| Petitioners’ construction of the work-made-for-hire provi-

sions makes such rational planning much more difficult

Because the “supervision and control” test turns on whether the

hiring party has closely monitored the creation process, the par-

lies cannot know until late in the day whether a work will

ultimately be deemed to be one for hire under Subsection (1)

Indeed, the determination whether the hiring party “actually

sufficiently supervised and directed” the production process

(Aldon Accessories, 738 F.2d at 552) cannot be made with con-

fidence until the production process has been completed. Thus

under petitioners’ approach “buyers and sellers will have to

predict in advance whether the buyer’s ‘actual control’ over a

given work will make it the ‘author.’ If they guess incorrecily

their reliance on ‘work for hire’ or an assignment may give them

a copyright interest that they did not bargain for.” Easter Seal

Society v. Playboy Enterprises, 815 F.2d 323, 333 (Sth Cir

1987). Accord Dumas v. Gommerman, slip op. 314.23 |

. The Present case illustrates the kind of uncertainty that peti-

tioners’ approach entails. In making its determination that

respondent was an “employee” within the meaning of Subsec-

tion (1), the district court relied on the fact that during the

creative process respondent “was visited on a number of occa-

sions by various CCNV members, ostensibly to check on his

** Moreover, Petitioners’ interpretation “leaves the door open for hirin

parties, who failed to get a full assignment of copyright rights from inde a

dent contractors falling outside the subdivision (2) guidelines, to oven

obtain work-made-for-hire rights years after the work has been completed is

long as they directed or supervised the work, a standard that is hard not i.

meet when one is a hiring party.” Hamilton, supra, 135U. Pa. L. Rev. at 1308.

Accord Hardy, supra, 35 J. of the Copyright Soc. at 250. = | :

progress” (Pet. App. 33a), and that petitioners made their final

payment to respondent “only when satisfied, upon delivery, that

the statufe] did, indeed, convey the message they had intended

for it’\(id. at 35a). The court also observed that petitioners had

“directed enough of [respondent’s] effort to assure that, in the

end, he had produced what they, not he, wanted” (ibid.). And

at trial, petitioners found it necessary to establish that they had

made 10-15 trips to Baltimore during the creative process

(7/25/86 Tr. 12); that they had told respondent what materials

to purchase as he was sculpting the work (id. at 45); that they

had instructed respondent to alter the posture of the figures in

the statue (2/2/87 Tr. 25-26); and that they had prevailed in all

of the 3-5 disagreements with respondent concerning the crea-

tion of the statue (id. at 29).

Petitioners’ “supervision and control” test inevitably turns on

such after-the fact considerations.?4 By contrast, the Ninth Cir-

cuit’s interpretation, which we endorse, is susceptible to ready

application at the outset of the negotiation process. If the

creator is a regular, salaried employee of the hiring f »rty, then

the work is governed by Subsection (1); if the creator is commis-

sioned to prepare a particular project, and otherwise has no for-

mal, ongoing relationship to the hiring party, then the work is

governed by Subsection (2). The parties will know where they

24 The Second Circuit’s decision in Aldon Accessories, on which petitioners

prominently rely (Br. 20, 30, 32 n.13, 33), also illustrates the speculative nature

of the “supervision and control” test. There, the court of appeals concluded

that certain Japanese and Taiwanese artists who had created the figurines

ordered by the plaintiffs were “employees” under Subsection (1) because

“{t}here was evidence that [plaintiffs] actively supervised and directed the[ir]

creation” (738 F.2d at $53). The court relied on the fact that one of the plain-

tiffs had “stood over the artists and artisans at critical stages of the process,

telling them exactly what to do” (ibid.)— including, “ ‘changing shapes, ad-

justing attitudes and proportions’ " and instructing the artists to “ ‘put the leg

this way, make this proportion, put the head this way, make the hair that

way’ " (id. at $$0). The cases that have followed Aldon Accessories turn on the

same after-the-fact analysis. See, e.g., Nadel & Sons Toy Corp. v. W. Shaland

Corp., 657 F. Supp. 133, 135 (S.D.N.Y. 1987); Sandwiches, Inc. v. Wendy's

Int'l, Inc., 654 F. Supp. 1066, 1073 (E.D. Wis.), appeal dismissed, 822 F.2d

707 (7th Cir. 1987); Iris Are v. S.S. Sarna, Inc., 621 F. Supp. 916, 920

(E. DN.Y. 1985).

stand at the outset, and they will not be able to alter the original

bargain by after-the-fact supervision of the creative process.

That approach, moreover, will not only facilitate the process of

contractual negotiation, but should also minimize the need for

highly fact-bound and unpredictable litigation. And, not least

of all, it will give the work-made-for-hire provisions their plain

and evident meaning.?°

** Under 17 U.S.C. 105, a “work of the United States Government” — which

is defined as “a work prepared by an officer or employee of the United States

Government as part of ihat person’s official duties” (17 U.S.C. 101)—is not

available for copyright protection. Petitioners correctly note (Br. 34) that

Congress intended “works of the United States Government” to be construed

in the same way as “works made for hire” (see H.R. Rep. No. 1476, at 58).

From that premise, petitioners contend that “an overly restrictive interpreta-

tion of the term ‘employee’ in the work for hire provisions” would likewise nar-

row the scope of the parallel language in Section 105 and thereby impair the

prospect for the “broadest publicity for matters of government” (Br. 35). In

fact, however, Congress itself imposed a “restrictive” interpretation on the

reach of Section 105, by explicitly stating that Section 105 does not apply to

“work([s} prepared under U.S. Government contract or grant” (H.R. Rep. No.

1476, at $9). That restriction limits the scope of Section 105 precisely to

parallel the scope of Subsection (1), as we have construed it. Just as works “of

an employee within the scope of his or her employment” do not encompass

commissioned works, works “prepared by an officer or employee of the

United States Government as part of that person’s official duties” do not en-

compass contracts to complete a particular project.

—

CONCLUSION

The judgment of the court-of appeals should be affirmed.

Respectfully submitted.

WILLIAM C. BRYSON

Acting Solicitor General

THOMAS W. MERRILL

Deputy Solicitor General

LAWRENCE S. ROBBINS |

Assistant to the Solicitor General

RALPH OMAN |

WILLIAM F. PATRY

Policy Planning Advisor

To The Register of Copyrights

United States Copyright Office

JANUARY 1989

US GOVERNMENT PRINTING OFFICE 1989 — 241 699 00077

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.