Playboy Enterprises, Inc. v. Dumas
53 F.3d 549 (1995)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
Under the Copyright Act of 1976, a work created by an independent contractor is a 'work made for hire' only if the parties expressly agree in a signed written instrument, which can be executed after the work's creation so long as it memorializes a prior agreement. Under the Copyright Act of 1909, a work is 'made for hire' if created at the hiring party's 'instance and expense,' and paying a fixed sum satisfies the 'expense' requirement.
Facts:
- From 1974 to 1984, freelance artist Patrick Nagel produced approximately 285 pieces of artwork that were published in Playboy magazine.
- Initially, Playboy provided Nagel with specific instructions for his illustrations, but sometime between January 1977 and August 1978, this practice ceased, and Nagel began routinely submitting paintings that Playboy would generally publish.
- Nagel worked as an independent contractor, using his own studio, tools, and assistants, and was not treated as a Playboy employee for tax or benefits purposes.
- Playboy paid Nagel a fixed sum for each painting by check after it was delivered.
- The checks contained legends on the back that changed over time. From 1974 to July 1979, the legend (Legend A) stated the endorsement was for the 'assignment... of all right, title, and interest' in the work.
- From September 1979 to May 1984, the legends (Legends B and C) stated that payment was for 'services rendered on a work-made-for-hire basis' and confirmed Playboy’s ownership of all copyrights.
- After Nagel's death in 1984, his widow, Jennifer Dumas, inherited his copyrights and entered into agreements to license reproductions of the works that had appeared in Playboy.
Procedural Posture:
- Playboy Enterprises, Inc. filed a suit for declaratory judgment against Jennifer Dumas and Jennifer Dumas, Inc. in the U.S. District Court for the Southern District of New York.
- Playboy sought a declaration that it was the sole owner of the copyrights in the Nagel works published in its magazine.
- Dumas filed an amended counterclaim against Playboy for copyright infringement.
- Following a bench trial, the district court entered judgment for Dumas, holding that the works were not 'works for hire' and that Nagel had only transferred one-time reproduction rights.
- The district court dismissed Playboy's claim and found Playboy liable for infringement.
- Playboy, as appellant, appealed the district court's judgment to the U.S. Court of Appeals for the Second Circuit.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Is Playboy the owner of the copyrights in Patrick Nagel's artwork either because the works were 'works made for hire' under the 1909 or 1976 Copyright Acts, or because Nagel transferred the copyrights to Playboy via check endorsement legends?
Opinions:
Majority - Oakes, Senior Circuit Judge
Partially yes and partially no. Playboy is the author of works created before January 1977 as works for hire. Dumas is the author of works created between January 1, 1978, and July 1979. Ownership of other works depends on further findings by the district court on remand. For works created before January 1, 1978 (governed by the 1909 Act), the court applied the 'instance and expense' test. The 'expense' prong was met because Playboy paid Nagel a fixed sum for his work, which is sufficient regardless of Nagel's independent contractor status. For works created before January 1977, Playboy gave specific instructions, satisfying the 'instance' prong and making them works for hire. Dumas failed to rebut the resulting presumption of Playboy's authorship, as Legend A's 'assignment' language was too ambiguous to prove a contrary agreement. For works created after January 1, 1978 (governed by the 1976 Act), a work is 'for hire' only if it is a commissioned work under §101(2) and the parties agree in a signed writing. The court held that the writing can be executed post-creation if it confirms a pre-creation agreement. For works from January 1978 to July 1979, Legend A failed the writing requirement because it did not mention 'work for hire,' and it was also too ambiguous to constitute a valid copyright transfer under §204(a). For works from September 1979 onwards, Legends B and C did use the required 'work for hire' language. Nagel's repeated endorsement of these checks was sufficient to infer a pre-creation agreement. However, the case is remanded to determine if these later works were 'specially ordered or commissioned' (i.e., made at Playboy's instance) and whether the agents who sometimes endorsed the checks were authorized to do so.
Analysis:
This decision provides critical clarification on the 'work made for hire' doctrine, particularly regarding the transition between the 1909 and 1976 Copyright Acts. It establishes that under the 1976 Act, a written work-for-hire agreement can be signed after a work's creation, provided it confirms a prior agreement. This ruling offers some flexibility but also highlights the potential for litigation over the existence and timing of that prior understanding. Furthermore, the case underscores the necessity of using explicit 'work for hire' language in contracts with independent contractors to ensure the hiring party obtains copyright ownership, as ambiguous terms like 'assignment of all rights' may be insufficient.
Unlock the full brief for Playboy Enterprises, Inc. v. Dumas