Opposition Brief — Easter Seal Society for Crippled Children & Adults of Louisiana, Inc. v. Playboy Enterprises, Inc.

Supreme Court, U.S.

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VY OCT 23 1987

No. 87-482

JOSEPH E SPANIOL, JR.

In The pac

Supreme Court of the United States

October Term, 1987

EASTER SEAL SOCIETY FOR

CRIPPLED CHILDREN AND ADULTS

OF LOUISIANA, INC.,

Petitioners,

VS.

PLAYBOY ENTERPRISKS, INC.,, ef al..

Respondents.

ray

Vv

REPLY TO PETITION FOR WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

Ly

MF

CuHar.es F. igeaasiaes

Skye \

__~, BARRA CHURCHILL

ae Re = naar C Street, Suite 300

= RK Ky & &"New Orleans, Louisiana 70130

ey Telephone: (504) 523-3565

Attorneys for Defendants-

Respondents Greater New Orleans

Educational Television Foundation

A.R. Curistovicn, JR.

Liane C. Kine

CuristovicH & KEARNEY

Pan American Life Center

601 Poydras Street, Suite 2300

New Orleans, Louisiana 70130

Telephone: (504) 561-5700

Attorneys for Defendants-

Respondents Playhoy

Enterprises, Inc., et al.

COCKLE LAW BRIEF PRINTING CO., (800) 225-6964

or call collect (402) 342-2831

QUESTION PRESENTED FOR REVIEW

In what manner did the 1976 Copyright Act change

the definition and application of the ‘‘work for hire’’ doc-

trine as previously found under the Copyright Act of 1909

and case law arising thereunder?

TABLE OF CONTENTS|

Page

nes, OE TU OO isis ciate 2

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SITTIN: ssinsseciaivilchcshnichsiahnieecineaigkdeaeceleuiegahiasamaaa aaa 3

The Facts of this Case Lead to the Same Result

Under any Theory of ‘‘ Work for Hire’? 0. 3

ELLE AAT Se WN Ic) eI 7

i

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TABLE OF AUTHORITIES

Page

CASES :

Aldon Accessories, Ltd. v. Spiegel, Inc., 738

F.2d 548 (2d Cir.) cert. denied, 469 U.S.

982, 105 S.Ct. 387, 83 L.Ed. 2d 321 (1984) .......... 5, 6

Easter Seal Society v. Playboy Enterprises,

Inc., et al., 815 F.2d 323 (5th Cir. 1987) ............ 4,6

Easter Seal Society v. Playboy Enterprises,

Inc., et al., Civil Action No. 83-39421 (E.D.

ona SE rc a ee? SE 5)

Graver Tank d& Manufacturing Company v.

Linde Air Products Company, 69 S.Ct. 535,

336 U.8. 271, 93 L.Ed. 672 (1949) ____. 6

Tiffany Fine Arts, Inc. v. U.S., 105 8.Ct. 725,

469 U.S. 310, 83 L.Ed. 2d 678 (1985) ................ ree 6

STATUTES:

17 U.S.C. § 101, et seq. (1976) 4

17 U.S.C. § 101(1) (1976) .......... alamaaceiee 4

af Uae, S Pence) (978) Tk. i tavdad besicemtaiel 4,5,6

17 U.S.C. § 204 (1976) ... 6

EASTER SEAL SOCIETY FOR

CRIPPLED CHILDREN

AND ADULTS OF LOUISIANA, INC.

Plaintiff-Petitioner

versus

PLAYBOY ENTERPRISES, INC., ET AL.

Defendants-Respondents

ON PETITION FOR WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

RESPONDENTS’ BRIEF IN OPPOSITION

Respondents, Greater New Orleans Educational Tele-

vision Foundation (‘‘WYES’’)!, Playboy Enterprises, Inc.,

Playboy Productions, Inc., Playboy Programs, Inc., Play-

boy Cable Network, Inc., (collectively ‘‘Playboy’’), Tele-

Metropole International, Inc., 120752 Canada, Inc., RSL

Films, Ltd., PKO Television, Inc. Rainbow Programming

Services, Cox Cable New Orleans, Inc., and Cox Cable of

Jefferson, Ine. respectfully submit this Brief in opposition

to the Petition for Writ of Certiorari filed herein by

Easter Seal Society for Crippled Children and Adults of

Louisiana, Ine. (‘‘Society’’).

ff)

a

1Petitioner’s List of All Parties erroneously denominates

respondent Greater New Orleans Educational Television Foun-

dation (“WYES”) as simply “Television Foundation, Inc.” (See

page ii, entry number 2, of the petition).

1

STATEMENT OF THE CASE

WYES, through its unincorporated production divi-

sion, contracted with Society to produce a videotape of

a Mardi Gras style parade and Dixieland jam session to

be aired as a segment of the 1982 National Kaster Seal

Telethon. The contract contained no mention of copyright

ownership or transfer. WYES provided the director,

production crew, technical equipment and expertise; So-

ciety supplied the players. The resulting four and one-half

hours of uncut field tape was post-produced by WYEKES

and edited into a sixteen minute master tape which was

delivered to Society and broadcast as part of the telethon.

WYKES retained possession of the field tape, using por-

tions thereof in its local musical programming. Upon re-

quest, WYES also made portions of the field tape avail-

able to a Canadian broadcast producer for screening. The

Canadian producer allegedly incorporated certain portions

of the field tape into an audiovisual work which aired on

the Playboy Cable Network.

Society protested the airing on Playboy and shortly

thereafter filed suit against WYES, Playboy and the oth-

er respondents for copyright infringement. Following

two vears of discovery and several amended petitions,

Society filed a Motion for Summary Judgment alleging

ownership of the copyright and infringement by Respon-

dents. WYES filed a cross-motion seeking dismissal of

Society’s motion and recognition of WYES’s ownership

of the copyright. The United States District Court for

the Kastern District of Louisiana determined that WYES

was an independent contractor over which Society had

exercised insufficient control or supervision to create an

employment relationship. Under the ‘‘work for hire’’

»

o

doctrine, therefore, WYES was found to be the copyright

owner and Society’s Complaint was dismissed. Society

appealed the dismissal to the United States Court of Ap-

peals for the Fifth Cireuit which affirmed the District

Court’s dismissal, albeit on different grounds.

The Fifth Cireuit held that WYES owned the copy-

right because under the ‘‘literal interpretation’’ of the

work for hire doctrine, as an independent contractor

specially commissioned to create a statutorily categorized

work, WYES could only divest itself of authorship by

written agreement to transfer same. Inasmuch as the

contract between WYES and Society contained no such

provision, WYES retained copyright authorship and own-

ership. The Fifth Cireuit further held that WYES would

be the copyright owner under any interpretation of the

work for hire doctrine. Society’s application for rehearing

was denied per curiam and the instant petition for review

was lodged with this Court.

SUMMARY OF ARGUMENT

The facts of this case lead to the same result under

any theory of the work for hire doctrine and a review of

the Fifth Cireuit’s holding would afford Society no relief.

ARGUMENT

The Facts of this Case Lead to the Same

Result under any Theory of ‘‘Work For Hire.’’

Respondents submit that under any theory of ‘‘work

for hire’’ as defined by the courts since the Copyriglit

Act of 1976, 17 U.S.C. § 101, et seq., Society’s cause must

fail. As the Fifth Cireuit stated in its opinion:

The Easter Seal Society would probably lose on its

claim that the field tapes were ‘‘ works made for hire’’

under any view of the 1976 Act.

Easter Seal Soctety v. Playboy Enterprises, Inc., et al., 815

F.2d 323, 336 (Sth Cir. 1987); (Petitioner’s Appendix,

p. 36a).

The Fifth Cireuit set forth three possible views of

work for hire: the literal interpretation, the conservative

interpretation, and, the ‘‘ Aldon Accessories Compromise,’’

Although the Fifth Cireuit decided the case under the

literal interpretation, a review of the conservative and

Aldon Accessories approaches clearly shows, as the Fifth

Cireuit intimated, that petitioner cannot recover under

any theory.

The conservative theory is as follows:

If the work was undertaken at the instance and ex-

pense of the buyer, and if the buyer had the right to

control the work, regardless of whether or not the

right was exercised, then the seller was a (legal) em-

ployee within the meaning of §101(1). If the buyer

wins under traditional analysis, then the court looks

to see if the disputed work falls within the nine cate-

gories in §101(2). These categories are accorded

special treatment, and the buyer will be the author

only if he has complied with the requirement of a

written agreement.

Easter Seal_Society v. Playboy Enterprises, Inc., et al., 815

F.2d 323, 331 (5th Cir. 1987); (Petitioner’s Appendix, pp.

19a-20a).

In the instant case, assuming arguendo that the work,

the field tape, was undertaken at the instance and expense

-

J

of Society, and that Society had the right to control the

work, the work still fails to be a work for hire because

there is no written agreement as required by § 101(2) of

the 1976 Copyright Act. That section provides that:

(2) A work specially ordered or commissioned for

use as a contribution to a collective work, as part of a

motion picture or other audiovisual work, . [is a

work for hire] if the parties expressly agree in a

written instrument signed by them that the work

shall be considered a work made for hire. .

17 U.S.C. § 101(2) (Emphasis added).

In the present case, the field tape was a work specially

ordered and commissioned by Society for use as a part of

an audiovisual work, the Easter Seal Telethon, and cannot

be a work for hire because no written instrument designat-

ing it a work for hire was executed.

Society is likewise unable to succeed in its claim for

copyright ownership under the Aldon Accessories ap-

proach, as enunciated by the Second Cireuit in Aldon Ac-

cessories, Ltd. v. Spiegel, Inc., 738 F.2d 548 (2d Cir.)

cert. denied, 469 U.S. 982, 105 S.Ct. 387, 83 L.Ed. 2d 321

(1984). The Aldon approach focuses on the actual super-

vision and creative direction exercised by the commission

ing party over the creation of the work. Creative direc

tion that is deemed substantial enough entitles the com-

missioning party to authorship of the work.

In fact, the District Court followed Aldon in denying

Society’s copyright in the field tapes. See Easter Seal

Society v. Playboy Enterprises, Inc., et al., Civil Action

No. 83-39421; (Petitioner’s Appendix, pp. 56a-70a). The

District Court found that Society failed to exercise the

requisite direction and control over the creation of the

6

field tapes necessary to render it the statutory author

under the Aldon view of works for hire. (Petitioner’s Ap-

pendix, pp. 665a-67a). That finding of fact is echoed in

the decision of the Fifth Circuit, although not necessary

to its decision. See Kaster Seal Soctety v. Playboy Enter-

prises, Inc., et al., 815 F.2d 323, 324 (5th Cir. 1987); Peti-

tioner’s Appendix, pp. 2a-3a). It is submitted that this

‘*fact,’’ found by both the District Court and Fifth Circuit,

may not be upset unless there is a very obvious and excep-

tional showing of error. Graver Tank & Manufacturing

Company v. Linde Air Products Company, 69 §8.Ct. 535,

538, 336 U.S. 271, 275, 93 L.Ed. 672 (1949); Tiffany Fine

Arts, Inc. v. U.S., 105 S.Ct. 725, 730, n.5, 469 U.S. 310, 83

L.Ed. 2d 678 (1985). ‘‘In accordance with our usual prac-

tice, we must now accord great weight to a finding of fact

which has been made by a district court and approved by a

court of appeals.’’

The ‘‘literal’’ approach applied by the Fifth Circuit

yields the same result. Where a traditional employee-

employer relationship under agency law exists, the em-

ployer will be the ‘‘author’’ of any work prepared by the

creating employee. If the creator is not an employee un-

der traditional agency law, he is an independent contractor,

the ‘‘author’’ of his work, and therefore the copyright

owner. If the work fits within one of the nine categories

enumerated in §101(2), the independent contractor may

designate the work as ‘‘for hire’’ in a written instrument

signed by both parties and thus transfer authorship and

ownership to the commissioning party. For all other

works, the independent contractor, although remaining

the author, may transfer copyright ownership under 17

U.S.C. § 204 to the commissioning party, or may grant an

exclusive license to the commissioning party.

In the present matter, the Fifth Circuit found that

an employee-employer relationship did not exist under

agency law between WYES and Society, and therefore

that WYES was an independent contractor and author of

the field tapes. As no written agreement to designate the

work as ‘‘for hire’’ or to transfer the copyright had been

made, Society had no claim for infringement by WYES or

Playboy.

It is respectfully submitted that a review of this case

can result in no relief to Society, and that under any

theory of the work for hire provisions of the 1976 Copy-

right Act, Society is precluded from ownership of the

copyright to the audiovisual work.

4)

a4

CONCLUSION

Assuming, for the sake of argument, that there is a

split of authority in the circuit courts, this case is not the

proper vehicle for resolving any real or perceived differ-

ences in the interpretation to be given the work for hire

doctrine. As the above makes abundantly clear, Society

would not be found the copyright owner under any theory.

The Fifth Cireuit’s opinion is so well-reasoned and

thorough as to amount to a virtual treatise on the subject

of work for hire. To disturb such a holding on the notion

that a different route to the same end may be available

would present the classic case of bad facts making bad

law. The interpretation and application of the work for

hire doctrine is far-reaching. It would be grossly unfair

to independent contractors and commissioning parties alike

to base review of such an important determination on facts

which do not warrant it. Society’s petition for review

should be denied.

Respectfully submitted,

Or CouNSEL:

BarHaM & CHURCHILL

Cuar_es F’. THENSTED

SxyE McLeop

400 Lafayette Street, Suite 300

New Orleans, Louisiana 70130

Telephone: (504) 523-3565

Attorneys for Defendant-Respondent

Greater New Orleans Educational

Television Foundation

Counsel of Record

Or CouNSEL:

CurIstTovicu & KEARNEY

> A.R. CurisTovicH, JR.

LianE C. Kino

Pan American Life Center

601 Poydras Street, Suite 2300

New Orleans, Louisiana 70130

Telephone: (504) 561-5700

Attorneys for Defendants-

Respondents

Playboy Enterprises, Inc., et al.