Compaq Computer Corp. v. Ergonome Inc.
2001 U.S. Dist. LEXIS 23486, 210 F.Supp.2d 839 (2001)
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Rule of Law:
A written "work made for hire" agreement under 17 U.S.C. § 101(2) is valid even if executed after the creation of the work, provided that the writing confirms a prior explicit or implicit agreement between the parties that the work would be for hire.
Facts:
- On October 28, 1992, photographer Terry Gruber took photographs for Stephanie Brown of Ergonome Incorporated for a book she was writing.
- The photographs were intended for publication in Brown's book about avoiding injuries from typing at computer keyboards.
- On June 15, 1993, following a second photographic session, Gruber and Brown signed a written agreement.
- The agreement explicitly stated that the photographs taken on both October 28, 1992 and June 15, 1993 were 'Works made for hire' under U.S. Copyright Law and that Brown owned the copyrights.
- Approximately four years later, Gruber executed a quitclaim, purporting to transfer his rights in the same photographs to Compaq Computer Corporation.
Procedural Posture:
- Ergonome Incorporated, Stephanie L. Brown, and Thomas Mowrey filed a Supplemental Motion for Partial Summary Judgment against Compaq Computer Corporation in the U.S. District Court.
- In its opposition memorandum to that motion, Compaq argued for the first time that Ergonome did not own the copyrights to the photographs at issue.
- The court subsequently issued an order that mooted Ergonome's original summary judgment motion.
- Despite the motion being moot, both Ergonome and Compaq expressed a desire for the court to resolve the copyright ownership issue raised in Compaq's opposition.
- The court agreed to address the issue, treating Compaq's opposition memorandum as a de facto motion for partial summary judgment on the question of copyright ownership.
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Issue:
Does a written agreement designating a work as a 'work made for hire' under the Copyright Act need to be executed before the work's creation to be valid?
Opinions:
Majority - Harmon, District Judge
No, a written agreement designating a work as a 'work made for hire' does not need to be executed before the work's creation. Adopting the Second Circuit's flexible approach, the court held that a writing executed after the work is created can be valid if it confirms a prior agreement, either explicit or implicit, made before the creation of the work. The court rejected the Seventh Circuit's stricter bright-line rule requiring the agreement to be signed before the work's creation, reasoning that the Second Circuit's standard better serves the goal of certainty by honoring the parties' original intent. In this case, the language of the agreement signed by Ergonome and Gruber, though signed after the first photo shoot, clearly demonstrated their mutual understanding that the photos were works made for hire and that Ergonome was the owner. Alternatively, the court found that the agreement would suffice as a valid assignment of Gruber's copyright interests to Ergonome, meaning Gruber had no rights left to transfer to Compaq years later.
Analysis:
This opinion is significant for aligning with the more flexible Second Circuit standard on the timing of 'work made for hire' agreements, rejecting the rigid Seventh Circuit rule. It prioritizes the parties' demonstrated intent over strict temporal formalities, establishing that a subsequent written agreement can retroactively confirm a prior understanding. This creates a more forgiving standard for commissioners of creative works who may not have executed formal agreements before work began. The decision also provides a safety net by suggesting that such agreements can alternatively be construed as copyright assignments, ensuring that the intended owner's rights are protected even if the 'work made for hire' criteria are technically challenged.
