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

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Pe ema

FILED

(4) MAR 3 1968

No. 87-482 JOSEPH F. SPANIOL, JR,

PE a EN Ro Ee ENE ES SERS

Jn the Supreme Court of the Anited States

OCTOBER TERM, 1987

EASTER SEAL SOCIETY FOR CRIPPLED CHILDREN AND

ADULTS OF LOUISIANA, INC., PETITIONER

PLAYBOY ENTERPRISES, INC., ET AL.

ON PETITION FOR A WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS FOR

THE FIFTH CIRCUIT

BRIEF FOR THE UNITED STATES AS AMICUS CURIAE

CHARLES FRIED

Solicitor General

JAMES M. SPEARS -

Acting Assistant Attorney General

JOHN F. CORDES

DWIGHT G. RABUSE

Attorneys

Department of Justice

Washington, D.C. 20530

(202) 633-2217

QUESTION PRESENTED

Whether under the “work made for hire” provisions of

the Copyright Act of 1976, 17 U.S.C. 101 and 201(b), peti-

tioner owned the copyright in a videotape made by a

television station at petitioner’s request but without its

close supervision.

(1)

TABLE OF CONTENTS

Page

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ee le sas beak tea ebe cen ketase 6

TI RSL ORCS Gus Sea ES ISS) A er ae ae 9

TABLE OF AUTHORITIES

Cases:

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

Cir.), cert. denied, 469 U.S. 982 (1984) .......... 3, 4, 6, 7, 8

Brunswick Beacon, Inc. v. Schock-Hopchas Pub. Co., 810

EB ee 7

Evans Newton Inc. v. Chicago Systems Software, 793

F.2d 889 (7th Cir. 1986), cert. denied, No. 86-441 (Nov.

EEE Ss SS SESS OCI ges Bea a eo am 7

May v. Morganelli-Heumann & Assoc., 618 F.2d 1363

(Sth Cir. 1980) ..... 26S ASE RECEP PET See ere 8

Statutes:

oh whe Wheeden es eens es |

a ess cceeacsntutssaensss |

I EO os ks ack eveseesseends |

cache acaseaceeress l

Miscellaneous:

1 M. Nimmer, Nimmer on Copyright (1987) itaka veka 2

(IIT)

Jn the Supreme Court of the Gnited States

OCTOBER TERM, 1987

No. 87-482

EASTER SEAL SOCIETY FOR CRIPPLED CHILDREN AND

ADULTS OF LOUISIANA, INC., PETITIONER

Vv.

PLAYBOY ENTERPRISES, INC., ET AL.

ON PETITION FOR A WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS FOR

THE FIFTH CIRCUIT

BRIEF FOR THE UNITED STATES AS AMICUS CURIAE

This brief is submitted in response to the Court’s invita-

tion to the Solicitor General to express the views of the

United States.

STATEMENT

1. Under Section 201 of the Copyright Act of 1976

(the Act), 17 U.S.C. 201, 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 employer or other person for whom the work was pre-

pared is considered the author” and, “unless the parties

have expressly agreed otherwise in a written instrument

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

U.S.C. 101, defines two categories of works that con-

stitute “works made for hire.” One category, defined in

(1)

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 commissioned for use as a contribution 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.”

2. The present case arose in March 1982 when peti-

tioner Easter Seal Society contracted with WYES, a New

Orleans public television station, for the videotaping of a

Staged “Mardi Gras-style” parade and “Dixieland” jam ses-

sion that petitioner proposed to broadcast as part of a

forthcoming telethon. The parties made no agreemenit

concerning copyright ownership. With a certain amount

of direction from Easter Seal representatives, WYES

created a five-hour “field tape” from which it then edited a

16-minute “master tape.” The master tape was broadcast

during the National Easter Seal Telethon. Pet. App.

2a-3a, 56a-58a.

Some time later, Julius Cain, WYES’s director of

broadcasting, was asked by a Canadian television pro-

ducer to send him some Mardi Gras footage. Cain for-

warded 40 minutes of tape copied from the Easter Seal

field tape. Portions of that tape were thereafter incorpo-

rated as part of an “adult” film entitled “Candy, the Strip-

per” that was created, produced, and distributed by

various entities, including respondent Playboy Enter-

prises, Inc. The film was shown nationally on cable tele-

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

or “scope of employment.” 1 M. Nimmer, Nismmer on C opyright

§ 5.03[{B][1], at 5-12 (1987).

vision four times during two days in May 1983. One or

more of the persons who had appeared in the Easter Seal

field tape recognized themselves in the footage now con-

tained in “Candy, the Stripper.” Pet. App. 3a-4a.

In August 1983, petitioner brought an action in the

United States District Court for the Eastern District of

Louisiana, alleging copyright infringement (Pet. App. 4a).

The district court granted partial summary judgment in

respondents’ favor (id. at 56a-70a). The court rejected peti-

tioner’s claim that under the work-made-for-hire provi-

sions it owned the copyright to the field tape. The court

found, first (id. at 61a), that because there was no written

agreement designating the tape as a work made for hire,

the tape could not fall within subsection (2) as a “specially

ordered or commissioned” work. The court turned next

(id. at 61a-68a) to whether the tape might be‘a work made

for hire under subsection (1), on the ground that in mak-

ing the tape WYES was an “employee” of Easter Seal act-

ing “within the scope of [its] employment.” Applying the

standard elaborated by the Second Circuit in Aldon Ac-

cessories Ltd. v. Spiegel, Inc., 738 F.2d 548, cert. denied,

469 U.S. 982 (1984), the district court framed (Pet. App.

65a) the legal inquiry as “whether [petitioner] exercised

such control and supervision over the work of WYES

* * * during the creation of the Field Tape that WYES

could be held to be an ‘employee’ acting within the ‘scope

of employment.’ ” The court reviewed the evidence (id. at

66a-67a) and concluded that WYES was an “independent

contractor[ ] in the pure sense of the word when [it]

created the Field Tape” (id. at 66a).? It accordingly con-

2 In particular, the district court noted that while an Easter Seal

representative had “organized the performers and produced the live

parade and jam session,” John Beyer, a WYES employee, “was

responsible for the creation and production of the Field Tape which

cluded that petitioner could not claim copyright in the

field tape on the premise that WYES was its “employee.”

3. The court of appeals affirmed on other grounds

(Pet. App. la-52a). Expressly rejecting (id. at 21a-32a) the

analysis of the Second Circuit in Aldon Accessories, the

court applied what it termed a “literal interpretation” (id.

at 16a) of the work-made-for-hire provisions. Under that

interpretation, the court of appeals stated (ibid. (footnote

omitted)), “a court should first determine —using agency

law rutes— whether or not the seller is an employee or an

memorialized the live event.” Beyer “use[{d] his expertise to achieve the

desired result on videotape” — including “arrang{ing] camera angles”;

“ensur[ing] that the lighting was adequate for videotaping purposes”;

and “ensur[ing] that the live music could satisfactorily be recorded on

audiotape.” Beyer was also “completely responsible for the direction

and supervision of the * * * crew who physically controlled all the

necessary taping equipment.” By contrast, petitioner’s “contribution

in the form of ideas, and * * * minimal involvement in the planning

of the shoot was that normally expected from a client and did not

render [petitioner] the author of the Field Tape.” Pet. App. 66a-67a.

> The court also discerned in two district court decisions a third, so-

called “conservative” interpretation of the work-made-for-hire provi-

sions (Pet. App. 19a-21a). Under that approach, the court explained,

“[iJf the work was undertaken at the instance and expense 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)

~ employee within the meaning of [subsection (1) of the work-made-for-

hire provisions}” (id. at 19a (emphasis in original)). The court added

(id. at 19a-20a), however, that even if the buyer prevails under that

prong of the conservative test, the seller will nonetheless own the

(2) and there is a written agreement treating the work as a work-made-

for-hire. The court rejected the conservative approach (id. at

20a-21a), noting that it ignored the statutory changes effected by the

few cases that have applied the conservative standard would have been

decided the same way had a different test been applied.

independent contractor. Then, the court should apply the

statute.” The court explained that if the seller of the work

is an “employee” under agency principles, then subsection

(1) of the work-made-for-hire provisions applies; and

under subsection (1), if the work was made within the

scope of employment, the employer is deemed to be the

author. If, on the other hand, the seller is an independent

contractor under agency principles, then subsection (2),

covering “specially ordered or commissioned” works, ap-

plies; in that event, the employer will be deemed to be the

nine categories enumerated in subsection (2) and there is a

written instrument that designates the work to be a “work

made for hire.”

Applying the “literal” interpretation (Pet. App. 35a-37a),

the court held that WYES owned the copyright in the field

tape and therefore affirmed the judgment of the district

court. It noted (id. at 37a) that petitioner had “never con-

tended that WYES was not an independent contractor

hired to create the disputed work.” Under the court’s

analysis, therefore, subsection (2) of the work-made-for-

hire provisions applied; and because there was no agree-

ment designating the tape as a work made for hire, WYES

was therefore the copyright owner. The court observed,

however (id. at 36a), that petitioner “would probably lose

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

under any view of the 1976 Act.” Indeed, the court sur-

mised, even the so-called “conservative” approach — which

4 The court explained (Pet. App. 34a) that “[t)he ‘literal’ interpreta-

tion of the 1976 Act has more in its favor” than the two competing ap-

proaches it had discerned in the case law. In particular, the court

found that its preferred approach “makes sense” out of the statutory

provisions, “ties the meaning of ‘work for hire’ to a well-developed

doctrine in agency law,” and “gives buyers and sellers the greatest

predictability” (id. at 34a-35a).

treats buyers of works most favorably—“might not get

[petitioner] to the promised land” (id. at 36a-37a).

DISCUSSION

Petitioner challenges the Fifth Circuit’s interpretation of

the work-made-for-hire provisions of the Copyright Act

of 1976. We agree that the courts of appeals have adopted

conflicting interpretations and that the issue may well war-

rant resolution by this Court. In our view, however, the

outcome of the present case would not have been different

under a different interpretation of the work-made-for-hire

provisions. Accordingly, the case is not an appropriate

vehicle for resolving the issue on which the lower courts

are divided. We therefore conclude that certiorari should

be denied.°

1. The plaintiff in the Aldon Accessories case was a

designer and marketer of figurines and other decorative

items for the home. In 1977, one of its principals con-

ceived the idea of designing a line of statuettes depicting

mythological creatures. After contracting with certain

overseas artisans to fashion the items, the principal went

abroad and actively oversaw the process by which the

figurines were created. Holding that the plaintiff was the

owner of the copyright in the merchandise, the Second

Circuit reasoned (738 F.2d at 552) that while the foreign

concerns were independent contractors, they had been

“sufficiently supervised and directed by the hiring party to

be considered ‘employees’ acting within ‘the scope of

employment.’ ” The court therefore applied subsection (1)

$ Although the petition sets forth three questions presented (Pet. i),

we believe that the question whether the Fifth Circuit has correctly in-

terpreted the work-made-for-hire provisions is better addressed as a

single question and have accordingly set out our views in that format.

of the work-made-for-hire provisions and upheld the

plaintiff’s claim.

The Seventh Circuit followed the Aldon Accessories in-

terpretation in Evans Newton Inc. v. Chicago Systems

Software, 793 F.2d 889 (1986), cert. denied, No. 86-441

(Nov. 10, 1986). That case involved a dispute about

ownership of the copyright in a certain computer manual.

Holding for the plaintiff, the court of appeals found that

the manual was a work made for hire. The court explained

(793 F.2d at 894) that piaintiff’s president had “supervised

and directed the work,” and it noted that in fashioning the

manual the defendant had “merely used [its] programming

skills to produce the work according to [the plaintiff’s]

specifications.’’®

2. In the present case, the court of appeals expressly

rejected (Pet. App. 21a-32a) the Second Circuit’s analysis

® In Brunswick Beacon, Inc. v. Schock-Hopchas Pub. Co., 810

F.2d 410 (1987), the Fourth Circuit distinguished Aldon Accessories

on its facts, but did not dispute the Second Circuit’s rationale. The

court upheld a newspaper’s copyright in certain advertisements that it

had prepared and published at the request of advertisers. Rejecting the

claim that the advertisers owned the copyright under the work-made-

for-hire provisions, the court held, first (810 F.2d at 413), that because

there was no agreement to treat the advertisements as works made for

hire, subsection (2) could not apply. Moreover, the newspaper could

not be characterized as an “employee” of the advertisers for purposes

of subsection (1). While “the advertisers told the [newspaper] what

they wanted, * * * there is no suggestion that they supervised [the

newspaper’s] employees as they developed the advertisements or

directed the manner of the work’s completion” (ibid.). Judge Hall

dissented (id. at 414-415). In his view, the newspaper was an employee

under subsection (1) because the advertisers “retained the right to con-

trol and supervise both the nature and content of the ads” (id. at 415).

As far as we can tell, Judge Hall’s dissenting opinion in Brunswick

Beacon is the only court of appeals opinion that embraces what the

Fifth Circuit characterized as the “conservative” interpretation of the

provisions.

in Aldon Accessories, in favor of what it termed a “literal”

approach to the work-made-for-hire provisions —/.e., as

we read the opinion, an interpretation under which subsec-

tion (1) reaches only those cases where the maker of the

work is “literally” an employee of the claimant.’ We agree

with petitioner (Pet. 19-20) that the issue on which the

lower courts are divided is important and may in the

future warrant resolution by this Court. We believe,

however, that this case is not an appropriate vehicle for

doing so.

The district court in this case applied the Aldon Ac-

cessories standard but, on the facts presented, rejected

petitioner’s claim. The court observed (Pet. App. 66a-67a)

that WYES’s employee, John Beyer, had “use[d] his exper-

tise to achieve the desired result on videotape” and that

petitioner’s role was limited to what would be “normally

expected from a client.” On the record below, the district

court could not find that petitioner “exercised such control

and supervision over the work of WYES and Beyer during

the creation of the Field Tape that WYES could be held to

be an ‘employee’ acting within the ‘scope of employment’ ”

(id. at 65a). Petitioner has not suggested that any of the

trial court’s findings are clearly erroneous.

The court of appeals applied a different legal standard

but reached the same result. Indeed, the court observed

(Pet. App. 36a) that petitioner “would probably lose on its

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

any view of the 1976 Act.” We agree. For that reason, we

believe that the present case is not an appropriate vehicle

for resolving the conflict in the Circuits concerning the

work-made-for-hire provisions.

7? Prior to the Fifth Circuit’s decision in this case, the Ninth Circuit,

in dicta, had endorsed a similar construction of the work-made-for-

hire provisions. May v. Morganelli-Heumann & Assoc., 618 F.2d

1363, 1368 n.4 (1980).

CONCLUSION

The petition for a writ of certiorari should be denied.

Respectfully submitted.

CHARLES FRIED

Solicitor General

JAMES M. SPEARS

Acting Assistant Attorney General

JOHN F. CORDES

DWIGEHT G. RABUSE

Attorneys

MARCH 1988

>. U.S. GOVERNMENT PRINTING OFFICE: 1988—202-037/60329

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