Gilpin v. Siebert
419 F. Supp. 2d 1288, 2006 U.S. Dist. LEXIS 12613, 2006 WL 581137 (2006)
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Rule of Law:
A work created by an employee is a 'work made for hire' under the Copyright Act only if it was prepared within the scope of employment, as determined by the common law of agency. Ownership vests with the employer unless a written agreement signed by both parties expressly states otherwise.
Facts:
- Bernadine Gilpin was employed by Portland Community College (PCC) as a counselor from approximately 1978 to 1995.
- Gilpin's employment contract incorporated a union agreement governing copyright ownership for materials created by employees, distinguishing between works made with and without college resources.
- As part of her counseling duties, Gilpin also taught career and personal development classes, though this was limited to 20% of her term workload.
- While employed at PCC, Gilpin co-authored a book, 'Time for College' (published 1989), with defendant Lawrence Siebert.
- During her employment, Gilpin also independently authored an 'Instructor's Manual' (1989) and a 'College Survival and Success' Workbook (1993).
- Gilpin created these works primarily at home on her own computer and outside of her standard work hours.
- Gilpin used some PCC resources, including having students critique drafts for extra credit, consulting with PCC staff on their own time, and using PCC's copy center for promotional copies of the Manual.
- After Gilpin retired, defendants Siebert and Karr published later editions of the works, removing Gilpin's name as an author, which prompted the lawsuit.
Procedural Posture:
- Bernadine Gilpin (plaintiff) filed a lawsuit against Lawrence Siebert, et al. (defendants), in the United States District Court for the District of Oregon.
- Gilpin's Third Amended Complaint alleged claims for copyright infringement and failure to account for royalties.
- Defendants filed a Motion for Summary Judgment, arguing that Gilpin lacked standing to sue because her works were 'works made for hire' and therefore owned by her former employer, Portland Community College.
- The district court referred the motion to Magistrate Judge Stewart for a Findings and Recommendation.
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Issue:
Is a defendant entitled to summary judgment on the basis that literary works created by a plaintiff-employee are 'works for hire' as a matter of law when there is conflicting evidence as to whether the works were the kind the plaintiff was employed to perform and were created substantially within authorized work time and space?
Opinions:
Majority - Magistrate Judge Stewart
No. A defendant is not entitled to summary judgment on the issue of 'work for hire' when genuine issues of material fact exist regarding whether the employee's creation of the works fell within the scope of her employment. To determine if a work is 'made for hire,' courts apply a three-prong test based on the Restatement (Second) of Agency: (1) was the work the kind the employee was employed to perform; (2) was it created substantially within authorized work hours and space; and (3) was it actuated, at least in part, by a purpose to serve the employer. Here, factual disputes preclude a ruling as a matter of law. Regarding the first prong, Gilpin's primary role was as a counselor, and her contract did not explicitly require her to write textbooks, unlike the contracts for full-time teaching faculty. It is a question of fact whether writing these books was 'incidental' to her duties. For the second prong, while Gilpin used some PCC resources, she performed the bulk of the work at home on her own time, and the significance of the college resources she used is a disputed material fact. Because genuine factual disputes exist for at least two of the three prongs for each work, the issue of copyright ownership must be resolved by a fact-finder at trial.
Analysis:
This case provides a detailed application of the 'work for hire' doctrine from Community for Creative Non-Violence v. Reid within an academic setting. It establishes that copyright ownership for works created by college employees is not automatic but requires a fact-intensive inquiry into the specific scope of employment. The decision underscores that job titles and general duties are not dispositive; a court must analyze the employee's specific responsibilities, the institution's expectations, and the context of the work's creation. The ruling serves as a precedent for denying summary judgment in similar cases where the creation of scholarly or educational materials is not an explicit job requirement, pushing such disputes toward settlement or trial. It highlights the critical importance for academic institutions and their employees to have explicit, written agreements regarding intellectual property ownership to avoid ambiguity.
