• Too Late for Work-Made-For-Hire

    by  • August 7, 2019 • copyright • 2 Comments

    There’s a recent decision out of the Second Circuit about an after-the-fact work-made-for-hire agreement. There is a circuit split; the Seventh and Ninth Circuits have held that a “work made for hire” agreement must be executed before the creation of the work. However, the Second Circuit held in Playboy Enterprises, Inc. v. Dumas that the writing could be after the fact if the parties had agreed before the creation of the work that it would be a work made for hire. In Playboy, the writings in question were checks with a legend stamped on them that said “BY ENDORSEMENT, PAYEE: acknowledges payment in full for services rendered on a work-made-for-hire basis in connection with the Work named on the face of this check, …”

    We now have the estate of Stanley Kauffmann suing the Rochester Institute for Technology. Kauffman was a film critic for the New Republic magazine but not an employee. Kaufmann and The New Republic had only one writing regarding the ownership of the articles. In 2004, about 46 years after Kaufmann started writing writing the The New Republic, it sent a letter to Kauffmann saying “Our agreement with you has always been an oral understanding …. We have … always understood in doing business with you that, in light of our regular monthly compensation arrangement with you, all articles you have written for The New Republic have been ‘works made for hire,’ as that term is defined under the US Copyright laws.” Kauffman signed it, checking the word “Agreed.”

    Defendant Rochester Institute of Technology published an anthology of Kaufmann articles. The court tells an interesting back story, although irrelevant to the case:

    The anthology, titled The Millennial Critic: Stanley Kauffmann on Film: 1999-2009, was edited by third-party defendant Robert J. “Bert” Cardullo. He is not a party to this appeal. Cardullo, a serial plagiarist of writings by Kauffmann and others, misrepresented to RIT that Kauffmann’s will had granted him sole authority to prepare an anthology of Kauffmann’s film reviews. He went so far as to forge a letter purporting to be from counsel for the Estate. In emails to counsel in this litigation, Cardullo admitted that he was “fully guilty of all the charges against [him] and that RIT Press was duped by [him] in this affair.”

    But back to the “work made for hire” agreement. We are, of course, speaking here only of the second definition of a work-made-for-hire, “a work specially ordered or commissioned for use as a contribution to a collective work … if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.”

    So we have a writing, signed by both, stating that the work will be considered a work-made-for-hire. All good, right? Yes, according to the district court. But not so fast, says the appeals court. The court described the rationale in Playboy:

    Rejecting an absolute rule that the requisite writing always had to be executed before the work was created, [Judge Oakes] deemed “convincing” the argument that such a requirement could “itself create uncertainty.” Significantly, Judge Oakes indicated the sort of circumstance where a subsequent writing would be acceptable: “ ‘unanimous intent among all concerned that the work for hire doctrine would apply, notwithstanding that some of the paperwork remained not fully executed until after creation of the subject work.’” Then, considering the specific circumstances before him, he acknowledged that “[w]hile Nagel’s endorsement of Playboy’s first check bearing [one version of the legend] may not evidence [Nagel’s] pre-creation consent to a work-for-hire relationship, Nagel’s subsequent pre-creation consent to such a relationship may be inferred from his continued endorsements.

    But this situation was no Playboy:

    In the pending case, the agreement alleged to satisfy the writing requirement was not executed until five years after the year in which the articles were written, and there are no circumstances even approaching the Playboy scenario of a series of writings executed by check endorsements right after payment for each work. It is not “‘paperwork [that] remained not fully executed until after creation of the subject work.’ ” The 2004 Agreement does not satisfy the writing requirement of section 101(2).

    It’s a bit of a surprise, it was an agreement executed by both parties. The appeals court characterized it as not just paperwork but didn’t point out why it thought that was true. However the situation certainly has an odor about it. The pretext for the letter is “expan[sion] into the web and related technologies,” not “we thought we would go ahead and tidy up that loose end.” This letter is fairly shortly after N.Y. Times v. Tasini, when publishers were back-filling on the right to republish independent contractors’ work in electronic publications. So I share what may be the court’s skepticism that this really was a memorialization of the parties’ prior verbal agreement, although I would have preferred a clearer justification.

    Kauffmann v. Rochester Inst. of Tech., No. 1-2404-cv (2d. Cir. Aug. 1, 2019).

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    2 Responses to Too Late for Work-Made-For-Hire

    1. August 8, 2019 at 11:45 am

      The decision may exacerbate the uncertainty the Second Circuit was aiming to prevent. In the earlier Playboy case, it operated under the assumption that the writing requirement could be met by a writing executed after the work was created, if the writing confirms a prior agreement, explicit or implicit, made before the creation of the work. The written agreement in Kaufman satisfies this standard on its face by expressly confirming the prior oral understanding of the writer and publisher. In now finding that the agreement failed to satisfy the writing requirement of § 101(2), principally because the agreement was not executed until five years after the articles were written, the Second Circuit has injected an element of uncertainty as to when parties must execute confirmatory work for hire agreements in order for them to still be effective.

      • Pam
        August 9, 2019 at 11:22 am

        What I find troubling is that all the Twitter comments reduced it to “five years is too long.” I’m afraid that is going to become a bright line rule.

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