Addressing an issue of whether a letter exchange qualifies as a work for hire agreement under US copyright laws, the US Court of Appeals for the Second Circuit reversed and remanded the district court grant of summary judgment in favor of the defendants. The Estate of Stanley Kauffmann v. Rochester Institute of Technology, Case No. 18-2404 (2d Cir. Aug. 1, 2019) (Newman, J).

Stanley Kauffmann, a film critic, wrote numerous film reviews and articles for The New Republic (TNR) magazine. For 55 years, Kauffmann contributed articles to TNR while never being employed by the magazine. During that time, Kauffmann and TNR took actions consistent with an understanding that Kauffmann was the author of and owned the copyrights to his articles. Kauffmann and TNR never formalized any understanding about whether Kauffmann’s articles were “works made for hire” and therefore owned by TNR, except for one letter agreement from TNR to Kauffman, written on March 22, 2004. In that letter, TNR stated that its agreement with Kauffmann had always been an oral understanding and TNR always understood that, in light of its regular monthly compensation arrangement with Kauffmann, all articles Kauffmann wrote for TNR had been “works made for hire,” as that term is defined under the US copyright laws.

After Kauffmann’s death in 2013, Rochester Institute of Technology (RIT) published an anthology of Kauffman’s file reviews, including 44 that had originally published in TNR in 1999. In 2015, Kauffmann’s estate discovered the anthology and sued RIT for copyright infringement. Based on the 2004 agreement, RIT sought summary judgment, arguing that the estate did not own the copyrights because Kauffmann had created the articles as a work for hire, and therefore TNR, not Kauffmann, was the “author” of the articles. The district court agreed with RIT, ruling that the 2004 agreement unambiguously memorialized in writing a pre-existing oral contract, dating back to when Kauffmann started writing for TNR in 1958. The Kauffmann estate appealed.

On appeal, the Second Circuit noted that the issue turned on the legal effect of the 2004 agreement. The Court noted that other circuit courts have ruled that an agreement sufficient to establish a work as a “work for hire” must be executed before creation of the work. The Second Circuit, however, has ruled that in some circumstances a series of writings executed after creation of the works at issue can satisfy the writing requirement under 17 USC § 101(2).

The Second Circuit cited its precedent Playboy Enterprises, Inc. v. Dumas for the proposition that a writing could be after the fact if the parties had agreed before the creation of the work that it would be a work for 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.” The Court explained that here, the letter exchange did not occur until five years after the year in which the articles were written, there were no special circumstances even approaching the Playboy scenario, and the later agreement did not satisfy the writing requirement of § 101(2).

Practice Note: Before creating copyrightable works, independent contractors should enter into a contract that expressly defines who owns and holds the rights to the copyright.