Chapter 16
Third Party Rights
Case 16.1
380 F.3d 624, 2004 Copr.L.Dec. P 28,863, 72 U.S.P.Q.2d 1143
United States Court of Appeals,
Second Circuit.
300 CASE PRINTOUTS TO ACCOMPANY BUSINESS LAW
by the principal employee of a corporation that was, in the Appellants’ view, “created to serve the creative endeavors of an artistic
genius.” Br. for Appellants at 20. This and other issues arise on an appeal by Ronald Protas and The Martha Graham School and
Dance Foundation, Inc. (collectively “Plaintiffs” or “Appellants”) from the November 4, 2002, judgment of the District Court for the
FN1. Ariadne gave Theseus a ball of thread and instructed him to unravel it as he entered the labyrinth that housed the
Minotaur so that Theseus could find his way out after he had slain the Minotaur. The earliest account of this classic
Greek myth is from Pherecydes, writing in the fifth century B.C.
See
Timothy Gantz,
Early Greek Myth: A Guide to
Literary and Artistic Sources
264 (1993). Graham looked to Greek mythology for many of her dance titles,
e.g.,
District Court treated the Center and the School as a single entity for purposes of determining copyright ownership. [FN2]
See
Graham II,
224 F.Supp.2d at 587-92
.
FN2. The Court had ample justification for doing so. The Center and the School were largely operated as if they were
one. By 1980, the Center acted as an umbrella organization encompassing the School. The same individuals served on
both the Center’s and the School’s Board of Trustees, and the two corporations filed combined financial statements.
FN3. The residuary clause stated:
The residue … of all of my property, real and personal, of every kind and description and wherever situated, including all
property over which I may have power of appointment at the time of my death … I give, devise and bequeath to my said
CHAPTER 16: THIRD PARTY RIGHTS 301
friend, Ron Protas, if he shall survive me, or, if he shall not survive me, to the Martha Graham Center of Contemporary
Dance, Inc. In connection with any rights or interests in any dance works, musical scores, scenery sets, my personal
papers and the use of my name, which may pass to my said friend Ron Protas under this Article IV, I request, but do not
enjoin, that he consult with my friends, Linda Hodes, Diane Gray, Halston, Ted Michaelson, Alex Racolin and Lee Traub,
regarding the use of such rights or interests.
Copyright registration certificates.
Between 2000 and 2001, Protas obtained certificates of registration for 30 of Graham’s dances
as unpublished works. By agreement with the Trust, the S & D Foundation became the exclusive licensee in the United States for
live performance of virtually all of Graham’s dances and use of the Martha Graham trademarks. During the same time period, the
Center also obtained certificates of registration for initial and renewal terms for some of Graham’s dances.
The pending lawsuit.
In 2001, after receiving substantial funding, the Center and the School reopened. Protas then initiated this
lawsuit to enjoin the Center and the School from using the Martha Graham trademark, teaching the Martha Graham Technique,
and performing 70 of Graham’s dances. These 70 dances, with the dates of their creation, are listed in the Appendix. [FN4] The
Plaintiffs sought a judgment under 28 U.S.C. § 2201(a) declaring that none of these dances was in the public domain, that the
Trust owned all rights in these dances, that the S & D Foundation was the current and authorized licensee of such rights, and that
any unauthorized use of these dances would constitute willful copyright infringement. The Plaintiffs also sought a judgment
declaring Protas to be the sole owner of the sets and jewelry associated with the dances.
FN4. The Appendix lists 71 dances, the 70 dances listed by the Plaintiffs plus
Duets,
a dance within
Frescoes. Duets
requires separate consideration.
See
[p. 645],
infra.
FN5. The District Court’s decision with respect to the trademark issues is set forth in Graham I
.
The Court ruled that licensee estoppel did not preclude the Defendants from obtaining relief.
Graham I,
153 F.Supp.2d at 519.
302 CASE PRINTOUTS TO ACCOMPANY BUSINESS LAW
and had not even been shown to exist. Thus, the provision of the agreement purporting to license dances from the Trust to the
Center had never taken effect.
See Graham II,
224 F.Supp.2d at 583
. The Court also found that many of the certificates of
at 612-15.
FN6.
Tanagra, Three Gopi Maidens, Harlequinade, Primitive Mysteries, Serenade, Satyric Festival Song, Dream,
FN7.
Embattled Garden, Episodes: Part I, Acrobats of God, Phaedra, Secular Games, Legend of Judith, The Witch of
Endor, Part Real-Part Dream, Cortege of Eagles, Plain of Prayer, Mendicants of Evening, Jacob’s Ladder, Lucifer, The
Scarlet Letter, O Thou Desire Who Art About to Sing,
and
Shadows.
FN8.
The Owl and the Pussycat, Ecuatorial, Frescoes, Judith (II), Andromache’s Lament, Phaedra’s Dream, Song,
Tangled Night, Persephone, Maple Leaf Rag,
and
The Eyes of the Goddess.
The Court found that ten dances, listed in the margin, [FN9] were in the public domain for lack of timely renewal, five, listed in the
Id.
at 613.
FN10.
Herodiade, Dark Meadow, Cave of the Heart, Judith (I),
and
Canticle for Innocent Comedians.
FN11.
Errand into the Maze, Diversion of Angels, Clytemnestra, Circe, Adorations, Acts of Light, The Rite of Spring,
Temptations of the Moon,
and
Night Chant.
FN12. The District Court found that neither side had shown whether these dances were published with the requisite
statutory notice.
Graham
II, 224 F.Supp.2d at 594, 603, 613.
The Plaintiffs’ appeal contends that the declaratory judgment and the constructive trust rulings are erroneous because (1) none of
the works is a work for hire, and (2) the District Court erred in finding that certain works were published. Further, the Plaintiffs
argue that the District Court erred in finding that (3) the Defendants owned the sets and properties and that (4) Protas breached his
fiduciary duty to the Defendants.
Discussion
FN13. Another way of “fixing” choreography is through use of a written system of notation.
See Horgan,
789 F.2d at 160
FN14. The 1976 Act introduced different rules regarding statutory notice, effective on January 1, 1978. With respect to
copies published prior to the Berne Convention Implementation Act of 1988 (“BCIA”), Pub.L. No. 100-568, 102 Stat. 2853,
§ 7 (1988) (effective March 1, 1989), omissions in statutory notice may be cured if “registration for the work has been
made before or is made within five years after the publication without notice, and a reasonable effort is made to add
notice to all copies … that are distributed to the public in the United States after the omission has been discovered.” 17
U.S.C. § 405(a)(2). Because the BCIA is prospective, all works (whether created before or after January 1, 1978)
published between January 1, 1978, and March 1, 1989, were injected into the public domain unless statutory notice was
made within five years of publication. All works published after March 1, 1989, do not require statutory notice.
See
2
Nimmer
§ 7.02[C][2].
FN15. The 1992 Renewal Act does not apply to works whose initial term began prior to 1964, because it applies only
prospectively; 28 years before 1992 was 1964.
See
3
Nimmer
§ 9.05[A][2].
FN16. Under the 1976 Act, in the absence of a renewal application by the employer for a work for hire, renewal vests in
“the person or entity that was the proprietor of the copyright as of the last day of the original term of the copyright.” 17
U.S.C. § 304(a)(2)(A)(ii).
In determining whether a work is a work for hire under the 1909 Act, we have generally applied the “instance and expense”test.
[FN17] The copyright belongs to the person at whose “instance and expense” the work was created.
See Brattleboro Publishing
304 CASE PRINTOUTS TO ACCOMPANY BUSINESS LAW
Co. v. Winmill Publishing Corp.,
369 F.2d 565, 567 (2d Cir.1966)
. Brattleboro
expressed the view that the “instance and expense”
test determined work-for-hire status, whether the work was created by a traditional employee or an independent contractor. [FN18]
See id.
at 568.
The previous year, 1965, the phrase first appeared in a reported appellate opinion:
[W]e believe that when one person engages another, whether as employee or as an independent contractor, to produce a
work of an artistic nature, that in the absence of an express contractual reservation of the copyright in the artist, the
presumption arises that the mutual intent of the parties is that the title to the copyright shall be in the person at whose
instance and expense the work is done.
Lin-Brook Builders Hardware v. Gertler,
352 F.2d 298, 300 (9th Cir.1965).
Lin-Brook
applied the phrase to determine that the party commissioning a work by an independent contractor was entitled
to the copyright, although the Ninth Circuit stated, without explanation or citation of authority, that the test applied whether
the work was created by an independent contractor or an employee. As authority for its use of the phrase, the Ninth
Nimmer was referring to the test for determining when copyright in the work of an independent contractor belonged to the
commissioning party,
Brattleboro
appeared to generalize the test to apply to all work-for-hire situations. Indeed,
Brattleboro
reversed the initial application of the phrase by starting from the premise that the “instance and expense” test
See id.
CHAPTER 16: THIRD PARTY RIGHTS 305
lyric, by paying the employee $25 to write the lyric. Because this payment was in addition to his salary and the lyric–
101. [FN20] In
Community for Creative Non-Violence v. Reid,
490 U.S. 730, 109 S.Ct. 2166, 104 L.Ed.2d 811 (1989) (“
CCNV
“),
the Supreme Court ruled that whether a person had created a work as an ” ’employee within the scope of his or her employment,’ ”
FN20. The 1976 Act defines a “work made for hire” as
(2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or
other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as
See, e.g.,
Jessica D. Litman,
Copyright, Compromise, and Legislative History,
72 Cornell L. Rev. 857, 859, 888-91
(1987). Their negotiations with respect to work for hire resulted in the exclusion of work for hire from certain possibilities
FN21. The Restatement’s factors are:
(a) the extent of control which, by the agreement, the [hiring party] may exercise over the details of the work;
(b) whether or not the one employed is engaged in a distinct occupation or business;
(c) the kind of occupation, with reference to whether, in the locality, the work is usually done under the direction of the
(1) the hiring party’s right to control the manner and means of creation; (2) the skill required; (3) the provision of
employee benefits; (4) the tax treatment of the hired party; and (5) whether the hiring party has the right to assign
additional projects to the hired party.
Aymes v. Bonelli,
980 F.2d 857, 861 (2d Cir.1992)
.
[5] Thus, under both the 1909 and 1976 Acts, a person’s status as an employee renders a work created within the scope of
FN22.
Embattled Garden, Clytemnestra, Episodes: Part I, Acrobats of God, Phaedra, Secular Games, Legend of Judith,
Circe, The Witch of Endor, Part Real-Part Dream, Cortege of Eagles, Plain of Prayer, Mendicants of Evening, Jacob’s
Ladder, Lucifer, The Scarlet Letter, Adorations, O Thou Desire Who Art About to Sing,
and
Shadows.
FN23.
The Owl and the Pussycat, Ecuatorial, Frescoes, Judith (II), Acts of Light, Andromache’s Lament, Phaedra’s
Dream, The Rite of Spring, Song, Tangled Night, Temptations of the Moon, Persephone, Night Chant, Maple Leaf Rag,
and
The Eyes of the Goddess.
FN24. These seven dances are the last seven of the nine dances listed in footnote 11,
supra;
the first two, created before
1955, were not found to be works for hire.
were therefore not works for hire, and, as far as the record discloses, the copyrights in them originally belonged to Graham [FN25]
until they entered the public domain for lack of renewal [FN26] or unless she assigned them to the Center,
see
Part III,
infra.
FN25. The District Court found that neither party established ownership of five dances:
Herodiade, Dark Meadow, Cave
of the Heart, Judith (I),
and
Canticle For Innocent Comedians,
which were commissioned works.
Graham II,
224
FN26. The District Court found that ten of the pre-1956 dances were published before January 1, 1964:
Flute of Krishna,
Heretic, Lamentation, Celebration, Frontier, Panorama, Chronicle/Steps in the Street, American Document, Appalachian
FN27.
Embattled Garden, Clytemnestra, Episodes: Part I, Acrobats of God, Phaedra, Secular Games, Legend of Judith,
Circe, The Witch of Endor,
and
Part Real-Part Dream.
FN28. The District Court’s finding covers nineteen dances that Graham created “before January 1, 1978[,] while she was
[the Defendants’] employee.”
Graham II,
224 F.Supp.2d at 590. These nineteen dances, created during Graham’s
employment after 1956 and before January 1, 1978, include the ten dances created from 1956 through 1965.
Although Graham was an employee of the School from 1956 through 1965, she was only a part-time employee, and, more
significantly, we see no evidence that the scope of her employment included choreography. After the transfer of Graham’s school
District Court determined copyright ownership for the ten dances Graham choreographed from 1956 through 1965 by considering
the publication status of these dances. Three of the dances had been published. The District Court found that neither side had
established ownership for two of them,
Clytemnestra
and
Circe,
because it was insufficiently proved that these dances had been
published with the required statutory notice of copyright.
Graham II,
224 F.Supp.2d at 594. One dance,
Acrobats of God,
was the
only one of the three with the required statutory notice.
Id.
We agree with the District Court’s findings with respect to publication
and notice. [FN30]
See Graham II,
224 F.Supp.2d at 613
.
FN30. If Circe
was published after March 1, 1989, the effective date of the BCIA, statutory notice would not be required.
The District Court found only that
Circe
was published “[b]efore 1993,”
Graham II,
224 F.Supp.2d at 593, and we have
found no evidence to make the date of publication more precise. Thus, we are unable to say that
Circe
was published
after March 1, 1989, and exempt from the statutory notice requirement.
The District Court deemed
Acrobats of God
a work for hire, and found that the copyright notice in the Center’s name
preserved the Center’s copyright in it. Although we are ruling that
Acrobats of God,
created before Graham’s 1966
contract, was not a work for hire and that the copyright belonged to Graham, the copyright notice in the Center’s name
was sufficient to preserve Graham’s copyright.
See Goodis v. United Artists Television, Inc.,
425 F.2d 397, 402-03 (2d
FN31.
Embattled Garden, Episodes: Part I, Phaedra, Secular Games, Legend of Judith, The Witch of Endor,
and
Part
Real-Part Dream.
FN32.
Cortege of Eagles, Plain of Prayer, Mendicants of Evening, Jacob’s Ladder, Lucifer, The Scarlet Letter, Adorations,
O Thou Desire Who Art About to Sing,
and
Shadows.
FN33. The District Court’s finding covers nineteen dances that Graham created “before January 1, 1978[,] while she was
[the Defendants’] employee.”
Graham II,
224 F.Supp.2d at 590. These nineteen dances, created during Graham’s
employment after 1956 and before January 1, 1978, include the nine dances created from 1966 through 1977.
1991.
Graham’s status as an employee of the Center with contractual duties to create dances gives rise to the principal issue on this
appeal: whether the dances she created from 1966 through 1977 (and, as we discuss in the next section, from 1978 through
1991) were works for hire belonging to the Center under traditional doctrine or whether, as the Appellants contend, the work-for-
hire doctrine is inapplicable in view of Graham’s central role with that entity. The Appellants argue that she was not an employee
FN34.
Amici Curiae
are the American Dance Festival, Inc., a not-for-profit corporation committed to promoting the art of
dance, founded in part by Graham; Gerald Arpino, Artistic Director of the Joffrey Ballet of Chicago; and Gordon
Davidson, Artistic Director of the Center Theatre Group/Mark Taper Forum of the Los Angeles County Music Center.
The argument of the Appellants and the
Amici
is not without some appeal, at least as a matter of creative arts policy. We
understand their point that where a corporation is formed for the purpose of fostering a supportive environment in which an
employed artist will have the opportunity to create new works, the default rule should leave the copyrights in the new works with
the employee, and place on the employer the burden of pursuing a contract to obtain her copyrights. Whatever the intrinsic merit
of such an approach, we conclude that its adoption is a matter of legislative choice for Congress in the future, not statutory
interpretation for a court at present. We turn then to an assessment of Graham’s role under prevailing work-for-hire principles.
No doubt Graham was a self-motivator, and perhaps she would have choreographed her dances without the salary of Artistic
Director, without the Center’s support and encouragement, and without the existence of the Center at all, but all that is beside the
point. The fact is that the Center did employ her to do the work, and she did the work in the course of her regular employment with
the Center. Where an artist has entered into an explicit employment agreement to create works, works that she creates under that
agreement cannot be exempted from the work-for-hire doctrine on speculation about what she would have accomplished if she
essentially the same meaning as ‘instance and expense.’ “).
Of course, the presumption that, under the 1909 Act, Graham’s post-1966 dances were made for hire may be rebutted by sufficient
proof, for example, evidence that Graham personally received royalties for her dances. The Plaintiffs offered some evidence to
CHAPTER 16: THIRD PARTY RIGHTS 309
prove that Graham received royalties for dances created after 1966, but the District Court, with ample justification, declined to
credit such evidence.
[10] We agree with the District Court that the dances created from 1966 through 1977 are works for hire. [FN35]
Dream, The Rite of Spring, Song, Tangled Night, Temptations of the Moon, Persephone, Night Chant, Maple Leaf Rag,
and
The Eyes of the Goddess.
Several factors, including ones to which we have accorded particular significance, weigh in favor of finding an employment relation
between Graham and the Center. During the entire interval from 1978 to 1991, Graham continued as the Center’s Artistic Director.
She received employee benefits and reimbursement for personal expenses, travel, and medical benefits, and a regular salary “[t]o
make dances.” Trial transcript 223 (testimony of Lee Traub). The Center routinely withheld income and social security taxes from
her salary. Graham created her dances on the Center’s premises and with the Center’s resources. Graham’s choreography was
also the regular activity of the Center. All these factors weigh in favor of finding an employment relation between Graham and the
Center.
attenuated.” Restatement (Second) of Agency § 220(1) cmt. d (1958). The Restatement offers the example of a “full-time cook”
over whose culinary activity “it is understood that the employer will exercise no control.”
Id.
The Restatement further notes that
“ship captains and managers of great corporations are normally superior servants, differing only in the dignity and importance of
their positions from those working under them.”
Id.
§ 220(1) cmt. a.
Our reasons for rejecting the Appellants’ argument that Graham’s artistic talent and the Center’s purpose to promote her art do not
exempt her dances from the work-for-hire principles of the 1909 Act apply equally to the status of her dances governed by the
1976 Act. Graham’s fifteen dances created in and after 1978 were properly found to be works for hire.
Having found that these fifteen dances were works for hire, the District Court determined whether the Center was entitled to a
declaration of ownership by considering whether they were published and, if so, whether they were published with required notice.
310 CASE PRINTOUTS TO ACCOMPANY BUSINESS LAW
whether
Duets
was published with the requisite notice.
FN37.
Acts of Light, The Rite of Spring, Temptations of the Moon, Night Chant,
and
Maple Leaf Rag. Acts of Light
was
published in 1984, thus requiring notice. As the District Court found,
The Rite of Spring, Temptations of the Moon,
and
FN38. The Owl and the Pussycat, Ecuatorial, Frescoes
(except for
Duets,
which we rule was published and which we
remand for determination of ownership),
Judith II, Andromache’s Lament, Phaedra’s Dream, Song, Tangled Night,
FN39. Tanagra, Three Gopi Maidens, Harlequinade, Primitive Mysteries, Serenade, Satyric Festival Song, Dream,
Saraband, Imperial Gesture, Deep Song, Every Soul Is a Circus, El Penitente, Letter to the World, Punch and the Judy,
Salem Shore, Deaths and Entrances, Errand into the Maze, Diversion of Angels, Eye of Anguish, Ardent Song,
and
Seraphic Dialogue.
As a result of its conclusion that works created from 1956 through 1965 were works for hire, belonging to the Center, the
District Court did not make a finding as to whether Graham assigned these works to the Center.
[14] A valid assignment of statutory copyright must be in writing.
See
17 U.S.C. § 204(a);
see Jasper v. Bovina Music, Inc.,
314
F.3d 42, 46- 47 (2d Cir.2002)
. However, we have ruled that assignments of common law copyright need not be in writing. See
Houghton Mifflin Co. v. Stackpole Sons, Inc.,
104 F.2d 306, 311 (2d Cir.1939)
(fact that German publishers had the manuscript of
Adolf Hitler’s Mein Kampf
sufficed to imply assignment of common law copyright).
Although there is no document memorializing Graham’s assignment of copyright in her pre-1956 dances to the Center, the District
CHAPTER 16: THIRD PARTY RIGHTS 311
Our ruling that
Tanagra
was published before 1966,
see infra,
Part IV, and our agreement with the District Court that
neither party established statutory notice (required for ownership) for
Errand into the Maze
and
Diversion of Angels,
leave
the following eighteen dances (created before 1956, unpublished at the time of assignment, and not commissioned) within
the scope of the District Court’s ruling as to assignment by Graham to the Center:
Three Gopi Maidens, Harlequinade,
Primitive Mysteries, Serenade, Satyric Festival Song, Dream, Saraband, Imperial Gesture, Deep Song, Every Soul is a
Circus, El Penitente, Letter to the World, Punch and the Judy, Salem Shore, Deaths and Entrances, Eye of Anguish,
Ardent Song,
and
Seraphic Dialogue.
IV. Publication
The District Court found that sixteen of the pre-1956 dances and ten of the post-1956 dances were published.
Graham II,
224
F.Supp.2d at 583. The Appellants contend principally that the District Court erred by relying on hearsay to make these findings.
We disagree. The District Court properly relied on non-hearsay evidence to determine which dances were published.
The District Court cited five but relied primarily on two documents containing lists of published dances.
Id.
at 580-82. Those
documents were (1) a 1993 list prepared by Christina Duda of 21 ballets that had been “filmed and sold”; (2) a 1990 list prepared
by Christopher Herrmann of nineteen “commercially produced” films and video tapes; (3) a 1991 letter introduced by Protas; (4) a
catalog of the New York Public Library showing that seven of 26 published dances were rented or sold prior to 1975; and (5) a
2001 letter from the Copyright Office raising serious questions regarding the publication status of 26 published dances.
See id.
[17][18][19] The District Court received the 1993 Duda list in its entirety. The Appellants assert that the list was hearsay and
inadmissible. In fact, the list was an admission by a party-opponent, and not hearsay under Fed.R.Evid. 801(d)(2)(D). At trial,
Protas admitted that Duda had been his assistant and that the list had been created by Duda in the scope of her employment. The
Appellants also argue that Herrmann’s list was inadmissible principally because it lacked any indication of authorship. However,
Herrmann, who was an assistant to Protas in 1987 and then in charge of archiving films for the Center until 1990, testified that he
prepared the list. Both the Duda and Herrmann lists were probative as to whether the works had been published. They were not
merely lists of dances that had been filmed, but of films that had been “sold,” and films that were “commercially produced.”