Opinion for the Court filed by Circuit Judge RUTH BADER GINSBURG.
RUTH BADER GINSBURG, Circuit Judge:
This case calls for interpretation of the "work made for hire" prescriptions of the Copyright Act of 1976 (1976 Act), 17 U.S.C.
In the case at hand, the district court held the work for hire doctrine applicable and rested its judgment for the plaintiff on that doctrine. Following the path marked by the Fifth Circuit, we rule that case law on works made for hire developed under the Copyright Act of 1909 (1909 Act) no longer holds sway; in accord with Easter Seal Society, 815 F.2d at 324, we conclude that the "1976 Act has greatly restricted the scope of the `work for hire' doctrine." Based on the construction we hold proper under the current Act, we reverse the district court's judgment and remand the instant case for further proceedings.
Plaintiff-appellee in this case, the Community for Creative Non-Violence (CCNV), is a Washington, D.C.-based non-profit unincorporated association devoted to the welfare of homeless people. 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. As the district court recounted, Mitch Snyder, CCNV's agent and trustee (also named as a plaintiff-appellee in this action), and other CCNV members
Community for Creative Non-Violence v. Reid, 652 F.Supp. 1453, 1454 (D.D.C.1987).
Snyder contacted James Earl Reid, a Baltimore sculptor and defendant-appellant herein; in the course of two telephone calls in October 1985, CCNV and Reid reached an agreement. Reid promised to sculpt the three human figures for "Third World America" and a shopping cart containing their meager belongings; he 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 cabinetmaker to construct the pedestal, obtained the special-effects equipment from a company in California, and acquired the chemicals needed to produce the simulated steam from Mobil Oil Company in New Jersey. The parties agreed that Reid's portion of the sculpture would cost no more than $15,000, not counting the sculptor's own services, which Reid donated to the venture; they further agreed that Reid's work would be delivered to CCNV by December 12 for attachment to the base preparatory to display of the total creation in the Pageant. Neither party mentioned copyright.
Reid and his assistants worked on the figures for the sculpture throughout November and December, conferring from time to time with various CCNV members and making changes to the form and arrangement of the figures to accommodate
In late January 1986, CCNV sent the entire sculpture to Reid so that he could repair damage to the foot of the male figure that occurred in the original transportation from Baltimore to D.C. The following month, CCNV began making plans to take the sculpture on a tour of several cities to raise money for the homeless. Reid objected to the planned tour insisting that the Design Cast 62 material was too delicate to withstand the ambitious itinerary; he urged CCNV to cast "Third World America" in bronze or to have a "master mold" made. CCNV declined to fund these additional undertakings but invited Reid to do so at his own expense.
In March 1986 CCNV asked Reid to return the sculpture; Reid refused. He filed a certificate of copyright registration for "Third World America" in his own name on March 20, 1986,
The 1976 Act prescribes that copyright ownership
17 U.S.C. § 201(b). "Work made for hire" is defined in the Act as
17 U.S.C. § 101 (numbers in brackets added). Our task is to determine where the contending parties fit within this statutory framework, specifically, is Reid an "author" of the sculpture "Third World America," as that term is used in the section on ownership of copyright, § 201, or is CCNV the only party "considered the author"? The provision in § 101 defining "work made for hire" is key to this inquiry.
The first subpart of the § 101 "work made for hire" definition concerns work prepared in an "employment" setting; the second concerns works "specifically ordered or commissioned." Does the distinction Congress made between "employment" in § 101(1) and "commissioned" work in § 101(2) mean, the Fifth Circuit asked in Easter Seal Society, 815 F.2d at 328, that the work of an independent contractor can be placed in the "work made for hire" category only when the work is of a type § 101(2) describes in its nine tightly-drawn categories (and, even then, only when the parties so agree)? The Fifth Circuit, in disagreement with the Second and Seventh Circuits, answered this question affirmatively.
A. The Second and Seventh Circuit Interpretation
The 1909 Act defined the word "author" to include an employer in the case of works made for hire, 17 U.S.C. § 26 (repealed 1976), but did not further delineate the "work made for hire" domain. Case law interpreting that Act treated expansively the relationships that qualified under the employer-employee rubric; a test of actual control by the commissioning party slackened to become a right to control (even if not exercised) standard. Ultimately, a firm presumption developed under which virtually "any person who paid another to create a copyrightable work" counted as the statutory "author" within the compass of the work for hire doctrine. See Easter Seal Society, 815 F.2d at 327; see generally Hamilton, Commissioned Works as Works Made for Hire Under the 1976 Copyright Act: Misinterpretation and Injustice, 135 U. PA. L.REV. 1281, 1282-89 (1987). First among the federal courts of appeals to consider what change the 1976 Act had wrought in the work for hire domain, the Second Circuit, in 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), held that only a modest alteration had been made: Congress had corrected exorbitant case law that "worked an injustice in those situations where the contracting party did all of the creative work and the hiring party did little or nothing." 738 F.2d at 552.
Aldon Accessories noted the two subsections of the statutory (§ 101) "work made for hire" definition, and emphasized the first subsection: "a work prepared by an employee within the scope of his or her
In more cryptic statement, Aldon Accessories addressed the second subsection of § 101's "work made for hire" definition, the subsection delineating nine categories of "specially ordered or commissioned" works. Assuming the absence of the supervision-by-hiring-party ingredient, Aldon Accessories recognized that the independent contractor in these situations is sole author and copyright owner unless, as § 102(2) stipulates, "the parties expressly agree in a written instrument signed by them that the work should be considered a work made for hire." Aldon Accessories did not home in on the case of the independent contractor who is not "sufficiently supervised and directed by the hiring party," but whose commissioned work is not within the nine categories set out in § 101's second subsection.
We pause here to observe that unlike the instant case, in which artist and commissioning party vie for ownership of a copyright, Aldon Accessories pitted the commissioning party (to boot, a genuinely creative participant) against a third-party infringer (and a blatant one at that). Plaintiff Aldon Accessories Ltd. (Aldon) was in the business of designing and marketing decorative objects. In 1977, one of Aldon's two principals conceived of a novel line of statuettes depicting mythical creatures, notably, a Pegasus and a unicorn. Aldon first commissioned a Japanese firm to aid in the design of the figurines and to produce the creations in porcelain. Some two years later, Aldon commissioned a Taiwanese firm to produce brass versions of the statuettes. In 1980, Aldon filed certificates of copyright registration for the statuettes; Aldon listed itself as the author but indicated that the works were "made for hire." In 1981 a buyer for Spiegel, Inc. (Spiegel) saw Aldon's brass unicorn at a gift show. At the Spiegel buyer's request, Aldon sent samples. By mid-1981, Spiegel was selling through its catalog brass unicorns identical to Aldon's. Aldon sued Spiegel for copyright infringement.
On appeal from a judgment for Aldon, Spiegel argued that the statuettes could not be works made for hire under the 1976 Act because statuary does not fall into one of the nine categories enumerated in the second subsection of the § 101 definitional
The record in Aldon demonstrated the very active participation of Aldon's principal every step of the way, from conception of the statuettes to "[standing] over the artists and artisans at critical stages of the process, telling them exactly what to do." 738 F.2d at 553 (commenting that "in a very real sense," Aldon's principal "was the artistic creator"). In this light, Spiegel's liability for infringement could have been upheld by recognizing Aldon as at least "a co-author of the work" and, as joint owner of the copyright, one clearly "entitled to bring and win an action for infringement against a third party." Easter Seal Society, 815 F.2d at 333; cf. Mister B Textiles Inc. v. Woodcrest Fabrics, Inc., 523 F.Supp. 21, 24 (S.D.N.Y.1981) (rejecting, upon finding co-authorship, infringer's objection that plaintiff commissioning party did not own the copyright).
Two years after the Second Circuit's decision, the Seventh Circuit adopted the Aldon Accessories "sufficiently supervised and directed" test; in Evans Newton Inc. v. Chicago Sys. Software, 793 F.2d 889 (7th Cir.), cert. denied, ___ U.S. ___, 107 S.Ct. 434, 93 L.Ed.2d 383 (1986), the court relied on Aldon Accessories to affirm a judgment of infringement against an independent contractor commissioned by the plaintiff to develop a software program. The contractor, after completing work for the plaintiff, attempted to market a competing program. In defense of its conduct, the contractor claimed it was a co-author and co-owner of the copyrighted work, and therefore could not be an infringer.
The parties in Evans Newton had not "expressly agree[d] in a written instrument signed by them" that the work would constitute a "work made for hire," 17 U.S.C. § 101, nor was a software program even in the § 101(2) catalog, and the court accepted the contractor's assertion that work for hire status within § 101's definition therefore turned on a characterization question: was the contractor an "employee"? See 793 F.2d at 893. On that question, Aldon Accessories instructed that the commissioning party's "supervision and direction" of the contractor was decisive. "The evidence at trial" on the point "essentially came down to a credibility contest," the court of appeals said, so that the district court's finding of sufficient supervision could not be held "clearly erroneous." Id. at 894.
The evidence of "actual control" in Evans Newton, it has been observed, was less compelling than the showing of constant direction of the work in Aldon Accessories. See Easter Seal Society, 815 F.2d at 334 ("[T]he `actual control' test of Aldon Accessories ... slides too easily into the vague and expansive `right to control' test, as the decision in Evans Newton may portend."). In the case before us, we note that the district court, while citing Aldon Accessories and examining with care CCNV's interactions with Reid, used language harking back to the "payor presumed to control" approach that evolved under the 1909 Act. The district court wrote: "If 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 copyright is his no matter the degree of creative license actually exercised by the artist-employee." Community for Creative Non-Violence v. Reid, 652 F.Supp. at 1456 (emphasis added).
B. The Fifth Circuit Interpretation
The Fifth Circuit panel in Easter Seal Society confronted and comprehensively explored this stated issue: "What effect, if any, did the Copyright Act of 1976 have on the `work for hire' doctrine developed under the 1909 Act?" 815 F.2d at 324. The Easter Seal Society opinion first surveys the work for hire precedent that evolved under the 1909 Act, and then identifies and discusses three distinct interpretations of the 1976 Act. 815 F.2d at 328.
The Fifth Circuit panel presented first a position it designates the "literal interpretation." Summarily stated, that interpretation reads section 101
Id. at 329 (footnote omitted).
We are particularly impressed by scholarly commentary on the legislative history of the 1976 Act and the almost unanimous support that commentary provides for the literal interpretation. See W. PATRY, LATMAN'S THE COPYRIGHT LAW 122 (6th ed. 1986) ("Congress adopted the Copyright Office's intent to limit the types of works created by independent contractors that could be deemed works made for hire to the specified examples given in the second subdivision of the statutory definition, ensuring that, contrary to some decisions construing Section 26 of the 1909 Act, works made for hire within the meaning of the `first' definition would be limited to salaried or like employees and would not include independent contractors even if their work was closely supervised or controlled. The second subdivision of the `work made for hire' definition was thus intended to be the exclusive provision governing works created by independent contractors.") (footnote omitted); A. LATMAN, R. GORMAN, & J.
The Fifth Circuit referred next to the "conservative interpretation," one that preserves in large part the work for hire doctrine developed under the 1909 Act. See 815 F.2d at 331. The critical questions for the "conservative interpretation" are whether the work was created at the commissioning party's "instance and expense," id. at 327, and whether that party "had the right to direct and supervise the manner in which the work was being performed." Id., quoting Murray v. Gelderman, 566 F.2d 1307, 1310 (5th Cir.1978) ("Actual exercise of [the] right [to direct and supervise the manner in which the work was being performed] is not controlling, and copyright is vested in the employer who has no intention of overseeing the detailed activity of any employee hired for the very purpose of producing the material."); see also Scherr v. Universal Match Corp., 417 F.2d 497, 500 (2d Cir.1969) (same), cert. denied, 397 U.S. 936, 90 S.Ct. 945, 25 L.Ed.2d 116 (1970). Under this reading, section 101 carves out a set of very narrow exceptions to the broad "right to control" test, i.e., the familiar right to control test holds sway for all but the nine categories of commissioned works enumerated in subsection (2); for works falling within these categories the statute requires a written agreement to make the commissioning party the author and exclusive owner of the copyright. The district court in the case before us did not distinguish the Aldon Accessories "actually sufficiently supervised" interpretation from this conservative "right to supervise" interpretation. Citing Aldon Accessories in conjunction with Murray v. Gelderman, the district court homogenized the two interpretations, see 652 F.Supp. at 1456, just as courts and commentators had blended these readings during the evolution of the work for hire doctrine under the 1909 Act.
The Fifth Circuit commented that the "[conservative] interpretation, unlike the `literal' one, makes the nine narrow categories in § 101(2) completely mysterious." Easter Seal Society, 815 F.2d at 331. Why would Congress want to afford a translator, for example, shelter from an expansive "work for hire doctrine" that leaves a sculptor or a composer unprotected, the Easter Seal Society panel asked. The § 101(2) enumeration does make sense, in the context of the "literal interpretation," Easter Seal Society observed, because the
Finally, the Fifth Circuit examined as a "third view" the Aldon Accessories "actually sufficiently supervised and directed" test, discussed supra. Summarizing its examination, the Easter Seal Society court listed four problems with the Aldon Accessories approach:
Id. at 334.
In settling on the literal interpretation as most consistent with the language, history, and policies of the 1976 Act, the Easter Seal Society court mentioned two factors that gave it pause. First, the Fifth Circuit panel underscored this § 201(b) language: "In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title. ..." Under the literal interpretation, the Easter Seal Society court observed, those words are operative only as to the narrow class of non-employer commissioning parties "who can be authors by compliance with the requirements of § 101(2)." 815 F.2d at 330. We agree that the § 201(b) words draw their meaning from § 101, but we do not think that factor renders the literal interpretation problematic.
Second, the Fifth Circuit expressed some doubt whether "Congress intended to radically revise `work for hire' doctrine." Id. (emphasis in original). We are less doubtful on that score as well. The legislative history, as cogent commentary recounts, see supra pp. 1492-93, reveals both a general concern that creators receive fair recompense and a specific decision, set down in § 101, to separate commissioned works from works made in an employment setting. See particularly Hamilton, supra, at 1290-94 (observing, inter alia, at 1293, that "the amount of deliberations that went into enumerating which types of commissioned works could be treated like employee-created works made for hire indicates that Congress intended for there to be a meaningful distinction between employee-created and commissioned works," thus case law on works made in an employment context "could remain viable," but 1909 Act precedent "relating to commissioned works could not").
Satisfied that the literal interpretation is the one that best suits the 1976 Act, we hold that a copyrightable work of an independent contractor cannot be a work made for hire under the current Act unless that work falls within one of the specific categories enumerated in § 101(2) and "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). It follows from this that "Third World America" does not qualify as a work made for hire, for Reid was an independent contractor and not an employee of CCNV within the rules of agency law;
CCNV sought a declaration of copyright ownership. We have held that CCNV is not author of a work made for hire and see no other basis for a claim that CCNV is sole owner of copyright in "Third World America." But neither does the existing record bear out Reid's assertion that he is the exclusive owner of copyright in the work. The facts thus far found by the district court, however, indicate that "Third World America" may indeed qualify as a joint work. To guide the district court on remand, we set out here the relevant statutory prescriptions and relate them to the record as it now stands.
"Copyright in a work ... vests initially in the author or authors of the work." 17 U.S.C. § 201(a); "[t]he ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law ...." 17 U.S.C. § 201 (d)(1). Neither side contends that any conveyance or operation of law has effected a transfer of copyright ownership in the work in question, thus a determination of authorship of the sculpture will constitute simultaneously a determination of copyright ownership.
"Ownership of a copyright," the 1976 Act states, "is distinct from ownership of any material object in which the work is embodied." 17 U.S.C. § 202. "Transfer of ownership in any material object, including the copy ... in which the work is first fixed, does not of itself convey any rights in the copyrighted work embodied in the object;
"Copyright protection subsists ... in original works of authorship fixed in any tangible medium of expression...." 17 U.S.C. § 102(a) (§ 102(a)(5) lists as "[w]orks of authorship" "pictorial, graphic, and sculptural works"). The sculpture in question, it is evident, qualifies for protection as an "original work of authorship." See, e.g., Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99, 102 (2d Cir.1951) ("`Original' in reference to a copyrighted work means that the particular work `owes its origin' to the `author.' No large measure of novelty is necessary.") (footnote omitted). We consider it plain as well that, intense as CCNV's participation in the project may have been, Reid, as sculptor, contributed more than a minimal amount of creativity to "Third World America." That is enough, once the work for hire doctrine is out of the picture, to render him an author of a protected work.
The idea to be expressed in the work, as the district court indicated, remained constant from the time Snyder and fellow CCNV members first conceived it: the sculpture was to depict "homeless people huddled on a street-side steam grate." 652 F.Supp. at 1454. Reid asserts no large role in the creation of the special effects pedestal designed to simulate a grate emitting steam. CCNV hired a cabinetmaker to construct the steam grate pedestal portion of the sculpture and obtained the special-effects equipment from sources in Hollywood.
The 1976 Act defines a joint work as one "prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole." 17 U.S.C. § 101. "Third World America," on the record thus far made, fits that description.
Nor does it appear — again, we caution, from the current record — that the steam grate pedestal is so insignificant a contribution to the work of art that it fails to reflect the requisite "originality" and "authorship." As we have already indicated, see supra p. 1495, the standard for determining whether a creation is an "original work of authorship" is not high. "It suffices if the author refrains from copying from prior works and contributes more than a minimal amount of creativity." A. LATMAN, R. GORMAN & J. GINSBURG, supra, at 29; see also 1 M. NIMMER & D. NIMMER, supra note 7, § 6.03, at 6-6 and § 6.17, at 6-18 (joint authors need not "work in physical propinquity"; their contributions need not be equal either quantitatively or qualitatively; though contribution of each must be more than de minimis, one may qualify as a joint author even if his contribution, "standing alone would not be copyrightable").
Reid observed, in resisting joint work characterization, that "[c]opyright protection does not extend to utilitarian works and the base certainly has utilitarian and functional aspects." Reply Brief at 17. The first part of this observation is more secure than the second. The 1976 Act defines "useful article" as one "having an intrinsic utilitarian function that is not merely to portray the appearance of the article ...." 17 U.S.C. § 101 (emphasis added). The steam grate pedestal on which "Third World America's" figures huddle surely was designed and constructed precisely "to portray the appearance of" an actual streetside grate.
Most prominently undercutting Reid's claim of sole authorship, the district court
In sum, were it not for the prevailing confusion over the work for hire doctrine,
Reid observes that CCNV engaged others to construct the pedestal and supply its components; he asserts that "the Court has insufficient information before it to determine whether CCNV is in fact the `author' of the base." Reply Brief at 17. The possibility of joint authorship was not considered by the district court, and the record on contributions of participants other
We address, finally, a peculiar feature of this case noted earlier, see supra note 4, one on which the parties' presentations are cloudy. There is only one "copy" of the copyrighted work at issue, and that only existing copy is exclusively owned by CCNV. Joint authors co-owning copyright in a work "are deemed to be tenants in common," with "each having an independent right to use or license the copyright, subject only to a duty to account to the other co-owner for any profits earned thereby." W. PATRY, supra, at 116 (footnotes omitted). In the absence of an agreement specifying otherwise, any profits earned are to be divided equally, "even where it is clear that [the] respective contributions to the joint work are not equal." 1 M. NIMMER & D. NIMMER, supra note 7, § 6.08, at 6-20 (footnote omitted). But singular works of art, we recognize, do not fit comfortably into a scheme centrally concerned with reproduction of the underlying work. See BRENNER, A Two-Phase Approach to Copyrighting the Fine Arts, 24 BULL. COPYRIGHT SOC'Y 85, 85 (1976-77).
Reid, as we mentioned earlier, objected to CCNV's travel plans for "Third World America," and planned a more modest exhibition tour of his own. See 652 F.Supp. at 1456. Co-ownership (or even sole ownership) of the copyright does not appear to carry with it a right to stop or limit CCNV's tour or to gain possession of the unique work of art. See 17 U.S.C. § 109(a), (c). Snyder once invited Reid to have a "master mold" of the sculpture made at Reid's own expense. See 652 F.Supp. at 1456. We have so far come upon no current authority for a court to order renewal of that invitation. But see Baker v. Libbie, 210 Mass. 599, 606, 97 N.E. 109, 111-12 (1912) (writer of letter retains copyright; but recipient or present possessor has right to destroy letter itself; yet ownership of copyright "involves a right to copy or secure copies[,] [o]therwise, the author's right of publication might be lost").
If CCNV reproduces "Third World America" in any medium and profits thereby, however, an accounting would be due to Reid as a copyright owner. Independent of Reid's ownership of the copyright, CCNV might be obliged to credit Reid as an author of the sculpture. Cf. Smith v. Montoro, 648 F.2d 602 (9th Cir.1981); Dodd v. Fort Smith Special School Dist. No. 100, 666 F.Supp. 1278, 1284-85 (W.D.Ark.1987); Follett v. Arbor House Publishing Co., 497 F.Supp. 304, 311 (S.D.N.Y.1980) (all three decisions concern correction under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1982), in attribution of authorship or representation of a creator's role). Furthermore, Reid, as an author, may have rights against CCNV should it publish an excessively mutilated or altered version of "Third World America." See Gilliam v. American Broadcasting Co., 538 F.2d 14 (2d Cir.1976); Kwall, Copyright and the Moral Right: Is an American Marriage Possible?, 38 VAND. L. REV. 1, 17-34 (1985) (discussing various common law and statutory doctrines available to protect a creator against publication of excessively mutilated versions of his work but not against destruction);
For the reasons stated, we conclude that the district court incorrectly held the work for hire doctrine applicable to the dispute between Reid and CCNV over copyright in the sculptural work "Third World America." We therefore reverse the judgment from which this appeal has been taken and remand the case for further proceedings consistent with this opinion, particularly, for comprehensive consideration whether the sculpture called "Third World America" is a joint work and, if it is, for determination of the owners of copyright in the work.
It is so ordered.