Copyright Law: NYU Bobcat May Not Be "Work For Hire" Rules EDNY Judge

NYU Bobcat Logo

In Fleurimond v. New York University, --- F.Supp.2d ----, 2010 WL 2773089 (EDNY July 14, 2010), Judge Spatt found that the question of whether the NYU Bobcat logo is a work for hire is a question of fact.

Defendant NYU made a motion for judgment on the pleadings pursuant to Rule 12(c) of the Federal Rules of Civil Procedure.   NYU's motion attached the designer's W-2 form and other documents supporting the contention that Fleurimond was an employee of NYU and created the Bobcat within the scope of her employment.   Judge Spatt pointed out that such documents could not be submitted on a Rule 12(c) pre-answer motion for judgment since only documents relied on by the complaint are appropriately considered at that stage of the pleadings:

NYU contends that the W-2 form and the emails between Fleurimond and several NYU employees conclusively establish that Fleurimond developed Orion while she was an NYU employee, acting within the scope of her employment. However, in the Court's view, these documents may not be considered on a Rule 12(c) motion for judgment on the pleadings. These documents were neither referenced in Fleurimond's complaint, nor relied upon in drafting the complaint. It is equally clear that they are not documents of which the Court may take judicial notice.



In the Daily News coverage of the case here, Fleurimond is described as a "freelancer".   Judge Spatt found that Fleurimond's allegation that she was the "sole creator" of the Bobcat logo was sufficient to render her claim of authorship "plausible" under the Twombly and Iqbal pleading standards.

Under 17 USC 201(a), copyright vests initially in the author of a work.

17 USC 201(b) provides:

(b) Works Made for Hire. — In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.


Judge Spatt applied the work-for-hire test (part of federal common law created in the landmark CCNV v. Reid case):

the hiring party's right to control the manner and means by which the product is accomplished ... the skill required; the source of the instrumentalities and tools; the location of the work; the duration of the relationship between the parties; whether the hiring party has the right to assign additional projects to the hired party; the extent of the hired party's discretion over when and how long to work; the method of payment; the hired party's role in hiring and paying assistants; whether the work is part of the regular business of the hiring party; whether the hiring party is in business; the provision of employee benefits; and the tax treatment of the hired party. Community for Creative Non-Violence v. Reid, 490 U.S. at 751-52.

Judge Spatt's conclusions here:

Even with the benefit of the materials NYU appended to its reply papers, the Court is not in a position, at this stage, to comprehensively assess these factors. The W-2 form and the emails seem to suggest that Fleurimond was an NYU employee acting within the scope of her employment when she developed Orion. However, the Court is not prepared to conclusively determine these issues without giving Fleurimond an opportunity to conduct discovery.


In summary, the Court finds that Fleurimond has offered a plausible copyright infringement claim. Her allegation that she is the sole creator of Orion suggests that she could be the legal owner of the Orion copyright. Evidence that exists outside the four corners of the complaint reflects that NYU may be the rightful copyright owner under Section 201(b). However this is not an issue that can be addressed on a Rule 12(c) motion and the Court declines to convert NYU's motion to one for summary judgment. Fleurimond v. New York University L 2773089, 3 -4 (E.D.N.Y. 2010)

I discuss the Work for Hire Doctrine in Copyright Litigation Handbook - Chapter 8: Copyright Ownership and Licensing Litigation and in Chapter 13:  Answer and Defenses.

Earlier Copyright Litigation Blog posts relating to works for hire here and here.

 Purchase Copyright Litigation Handbook from West here  

Copyright, Software Programmers and The Implied Unlimited License to Use and Modify

In Asset Marketing Systems, Inc. v. Gagnon, 542 F.3d 748 (9th Cir. Sept. 9, 2008), the Ninth Circuit found that a computer programmer granted AMS an "unlimited, nonexclusive license to retain, use, and modify" custom software that the programmer Gagnon dba "Mister Computer" had designed. AMS is a company located in San Diego engaged in, inter alia, "information technology consulting". When AMS employees booted up, they saw a copyrighted "Mister Computer" notice. During the course of dealing between the parties, the issue of AMS using the software after the ongoing consulting relationship was not expressly addressed. At a late point in the relationship, the parties exchanged proposed contracts and written statements reflecting their respective understandings (which differed). AMS eventually terminated the contract, hired most of Mister Computer's employees, and moved happily ahead. During the course of negotiations, Mister Computer variously made exorbitant demands for the continued use of his copyrighted software programs, asserted that the source code was a trade secret, and belatedly registered his copyrights. The legal action started when AMS sued in state court on employment claims, Gagnon removed and counterclaimed for copyright. I am not sure how, but the state claims to have gotten remanded (leaving only federal counterclaims), and then AMS appears to have dropped the now remanded claims in state court and then asserted its state law claims as "counter-counterclaims" to Mister Computer's federal counterclaims in the federal action. Whew!

The court's decison turns around the mysterious language of 17 U.S.C. Section 204(a). Section 204(a) requires that a transfer of copyright be in writing, signed by the owner. The case law has not required a writing for a transfer of a non-exclusive license. I discuss non-exclusive licenses as a litigation defense at Section 13:12 of Copyright Litigation Handbook (3d Ed. West 2008).

The 9th Circuit had previously considered implied licenses in the context of movie special effects and architectural drawings. To illustrate: someone is paid $56,000 for special effects film footage, delivers it, then claims the film company can't use it. Effects Assocs. Inc. v. Cohen, 908 F.2d 555 (9th Cir. 1990) (link courtesy http://www.coolcopyright.com/). This is the "Moviemakers do lunch, not contracts" case.

But in this very hot area of work-for-hire disputes - the implied license doctrine has now been applied to software, substantially reducing the leverage that outside consultants may wield over clients who have not protected themselves in acquiring custom software.

An implied license may be found where (1) licensee requests creation of a work; (2) the creator makes the work and delivers it to the licensee who requested it; (3) the licensor intends that the licensee-requestor copy and distribute his work.

The AMS court found that Mister Computer intended, through "objective manifestations" that AMS "use, retain and modify" the software programs as well. Mister Computer should have put a better warning on his material. Now large and sophisticated software users, too, can do lunch, not contracts.

Copyright and Publishing Online Program

If you would like to earn CLE (Continuing Legal Education) credits online, my publisher, West has made available online a course I delivered in Eagan, Minnesota. Below, you can find a video excerpt.

Anyone putting up a website or a blog is a "publisher" these days, so it helps to know the principles involved. What can you publish? What will get you in trouble? How do you analyze problems that arise in using content created by others?

Copyright Law and Publishing
Content Provider: Clarion LegalDuration: 2 hours 0 minutes
Program Description: This session is comprised of practical, hands-on examples designed to give participants the analytical tools with which to confront copyright issues facing publishers.

If you would like more information or want to enroll in this program, click on the program title listed above or paste this link into your web browser:

http://westlegaledcenter.com/course.jsf?vId=10065888&aId=10065888

Copyright for Labor Lawyers: The Work for Hire Doctrine (Ch 7)

Does an employee, independent contractor, or corporate officer own original copyrightable materials authored by that person in conjunction with the relationship to the employer? We look to 17 U.S.C. Section 101 (the Copyright Act's definitional section) as a starting point:

A “work made for hire” is—
(1) a work prepared by an employee within the scope of his or her employment; or
(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 answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a “supplementary work” is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an “instructional text” is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities. * * *

So, the employer owns the work if it is made by an employee "within the scope of employment" or if there is a written agreement (for certain works). To determine whether an individual was an employee, we look to the federal common law of agency, which was spelled out in a copyright case involving a sculpture called Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989). The factors (the "Reid factors") considered include:
- the hiring party's right to control the manner and means by which the product is accomplished;
- the skill required;
-the source of the instrumentalities and tools;
- the location of the work;
- the duration of the relationship between the parties;
- whether the hiring party has the right to assign additional projects to the hired party;
- the extent of the hired party's discussion over when and how long to work;
- the method of payment;
- the hired party's role in hiring and paying assistants;
- whether the work is part of the regular business of the hiring party;
- the provision of employee benefits;
- tax treatment of the hired party

The Second Circuit in Eisenberg v. Advance Relocation & Storage, Inc., 237 F.3d 111 (2000) applied the Reid factors (the federal common law of agency) to determine whether a hired person is an employee or independent contractor for purposes of applying the Civil Rights Act of 1964, 42 U.S.C. Section 200e ("Title VII"). In Eisenberg, the court noted that the parties could agree whether or not an employee would have intellectual rights to copyrightable work product, but that Title VII antidiscrimination protections could not be bargained away.

The work-for-hire provisions of the Copyright Act have been applied in a wide variety of employment contexts:

- rejecting a claim that the author of a screenplay was an employee of a purported co-author/co-producer, Price v. Fox Entertainment Group, Inc., 2007 WL 241390 (S.D.N.Y)(SAS)

- rejecting a claim that a woman who walked into a recording studio and sang a countermelody for Jay-Z created a "work-for-hire" (applying the 5 "strongest" of the 13 Reid factors) Ulloa v. Universal Music & Video Dist. Corp., 303 F. Supp.2d 409 (S.D.N.Y. 2004)

- rejecting a teacher's claim that his Fourth Amendment rights to be free from illegal seizures was violated by confiscation of teaching materials created while he was a teacher and finding no copyright interest, Shaul v. Cherry Valley-Springfield Central School Dist., 363 F.3d 177 (2d Cir. 2004

- in a case involving the executor of her will, analyzing choreographer Martha Graham's relationship to her eponymous foundation at varying points in her career and making different findings as to whether works were "works-for-hire" depending on how she worked and was paid during her lifetime, Martha Graham School and Dance Foundation, Inc. v. Martha Graham Center of Contemporary Dance, Inc., 380 F.3d 624 (2d Cir. 2004)

- permitting copyright infringement claims against former employee who took, modified and sold on behalf of competitor a copy of software, Jamison Business Systems, Inc. v. Unique Software Support Corp., 2005 WL 1262095 (E.D.N.Y.)

- denying summary judgment motion made against police union employee who wrote songs such as "Rudy the Fox" and "Badillo Beat" for childhood abduction awareness programs. Brower v. Martin, 446, F. Supp.2d 232 (S.D.N.Y. 2006)

As former employers increasingly seek to use the Copyright Act's damages and attorneys fees for theft of corporate materials, labor and employment lawyers will be confronted with these issues.