In dispute concerning publication of anthology of film critic’s magazine articles, Second Circuit holds that letter agreement between magazine and non-employee critic executed five years after creation of articles did not satisfy writing requirement of Copyright Act’s work-for-hire provision.
For 55 years, Stanley Kauffmann wrote film reviews and other articles for The New Republic magazine. In 2004, The New Republic and Kauffmann executed a letter agreement purporting to memorialize an earlier oral understanding that Kauffmann’s articles were works made for hire. The agreement provided, in relevant part: “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.”
After Kauffmann’s death in 2013, the Rochester Institute of Technology published an anthology of Kauffmann’s work titled The Millennial Critic: Stanley Kauffmann on Film, 1999-2009. The anthology included, among other works, 44 film reviews that The New Republic had initially published in 1999.
Kauffmann’s estate, as the successor owner of his copyrights, sued RIT for copyright infringement, alleging that the 44 articles at issue had been published without its authorization. RIT moved for summary judgment dismissing the action, arguing that the 2004 letter agreement demonstrated that The New Republic—not the estate—owned the copyrights in Kauffmann’s articles. The estate cross-moved for summary judgment on the issue of liability.
The district court granted RIT’s motion and denied the estate’s cross-motion. It held that the 2004 agreement “unambiguous[ly]” “memorialize[d] in writing a preexisting oral contract, evidently dating back to when Kauffmann started writing for The New Republic in 1958” and therefore satisfied the requirement in Section 101(2) of the Copyright Act that “the parties expressly agree in a written instrument signed by them” that a work commissioned to be created by a nonemployee “shall be considered a work made for hire.” Accordingly, the court held, Kauffman never owned the copyrights in the articles, and the estate, as his successor in interest, could not maintain an infringement action against RIT.
On appeal, however, the Second Circuit reversed. Pointing to its 1995 decision in Playboy Enterprises, Inc. v. Dumas, the court acknowledged that in limited circumstances, a writing executed after the creation of the work at issue may satisfy Section 101(2)’s writing requirement—namely, where there was “unanimous intent among all concerned that the work for hire doctrine would apply, notwithstanding that some of the paperwork remained not fully executed.” In Playboy, the painter Patrick Nagal contributed paintings to the magazine, which issued checks to Nagal after each painting had been submitted. The checks contained legends containing the words “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.” Those writings, the court in Playboy held, were sufficient to demonstrate Nagal’s pre-creation consent to a work-for-hire relationship.
In contrast, the court held that Kauffmann’s 2004 letter agreement with The New Republic, executed five years after the articles at issue were created and published, did not satisfy Section 101(2)’s writing requirement. Here, the court held, there were “no circumstances even approaching the Playboy scenario of a series of writings executed by check endorsements right after payment for each work,” and the letter agreement did not constitute “paperwork [that] remained not fully executed until after the creation of the subject work.” Accordingly, to hold that the agreement retroactively rendered the articles works made for hire would thwart Congress’ goal, in creating the work-for-hire provisions of the Copyright Act, of “ensur[ing] predictability through advance planning.” Such a holding, the court stated, would endorse a “fiction” of two separate authors during the five-year period from 1999 to 2004 and render uncertain several aspects of the copyright in each article, such as its duration, renewal rights and termination rights. For these reasons, the court held, Kauffmann was and remains the author of the 44 articles at issue, and his estate is entitled to proceed on its suit for infringement.