TOWARD A THEORY OF COPYRIGHT: THE METAMORPHOSES OF "AUTHORSHIP"

PETER JASZI

1991 Duke L.J. 455, 485-491

B. The "Author" in Spite of Herself. Works Made for Hire Despite a tendency of American law to invoke liberal individualism to justify economic structures that frustrate the aspirations of real-life individuals,113 it is somewhat surprising to encounter the individualistic Romantic conception of "authorship" deployed to support a regime that disassociates creative workers from a legal interest in their creations: the "work-for-hire" doctrine of American copyright law.114 Where the doc- trine applies, the firm or individual who paid to have a work created, rather than the person who created it, is regarded as the "author" for purposes of copyright ownership.115

Previous sections of this Article traced how the legal objectification of works of "authorship" contributed to the alienation of creative work- ers from the products of their labor. When a work is deemed to have been made "for hire," that alienation is formally and legally complete: the "author" of the "work" is the person on whose behalf the "work" was made, not the individual who created it. In this legal configuration, the employer's rights do not derive from the employee by an implied grant or assignment. Rather, those rights are the direct result of the em- ployer's status.116 Ironically, the employers' claims are rationalized in terms of the Romantic conception of "authorship" with its concomitant values of "originality" and "inspiration."

The identification of an employer as "author" is not a particularly venerable idea in Anglo-American copyright. Not so long ago, the Ro- mantic conception of "authorship" appeared to cut against the recogni- tion of a work-for-hire doctrine. This was true at least as late as 1883, when the judges of the English Court of Queen's Bench roundly rejected the notion in Nottage v. Jackson. 117 The plaintiffs were proprietors of a large photographic studio, and the pictures at issue (of a visiting Austra- lian cricket team) had been taken by the studio's photographic artists118 at the instigation of a managerial employee. The court rejected the plain- tiffs' claim because they were not the "authors" of the pictures. Justice Brett, the Master of the Rolls, expressed his views somewhat dyspeptically:

I confess I have the greatest difficulty in construing this Act of Parlia- ment. Persons who draw Acts of Parliament will sometimes use phrases that nobody else uses.... It says--"The author, and so on-of every original painting." Who ever, in ordinary life, talks of the "au- thor" of a painting? [N]ow we have "the author" of a photograph. I should like to know whether the person who drew this Act of Parliament was clear in his mind as to who can be the "author" of a photograph .... [The plain- tiffs] think that they are the authors of the photograph because the photograph is made and formed by the work of their mere servants .... They may live 200 miles off. Can they be called the authors of a photograph of which they know nothing? It is done by their servants. They may go to the shop once a week; and when they are there they may superintend the operations, though I suppose they very seldom do .... Take this very case. It is not pretended that these gentlemen were at the Oval; they were either in London or fifty miles perhaps the other side of London .... I confess I cannot be very clear about it, all I can do is see who is the nearest person-the nearest like the author of a painting or the author of a drawing. Certainly it is not the man who simply gives the idea of a picture, because the proprietor may say, "Go and draw that lady with a dog at her feet, and in one hand holding a flower." He may have the idea, but still he is not there. He may be 100 miles from the place, and he may have given the instructions by letter .... 119

Lord Justice Cotton stated that" 'author' involves originating, mak- ing, producing, as the inventive or master mind, the thing, which is to be protected.... [Here the plaintiffs] did not give the direction or make the suggestion; but even that, in my opinion, would not do."120 In the refer- ence to the "master mind," this passage contains the germ of a rationale for treating the employer as "author." Yet Justice Cotton seems to have been unconscious of the implications of his language. Like Justice Brett, he was committed to an individualistic, essentially Romantic vision of "authorship" that appeared to exclude such a possibility. American law, however, was about to put a reverse-twist on individualistic "author- ship," and the Romantic conception of originality would again be pressed into the service of commerce.

Before 1909, American copyright statutes did not address the issue of employed authors, and courts dealt with it on an ad hoc basis. Some of the earliest decisions, although rewarding the contested rights to the employer, suggested that the issue should be viewed in contractual terms: "If a patron gives a commission to an artist, there appears to me a very strong implication that the work of art commissioned is to belong unre- servedly and without limitation to the patron."121 The Supreme Court in Bleistein held that because the three circus posters were "prepared by employees of the plaintiffs" there was sufficient evidence of the plaintiffs' ownership-although not literally of their "authorship."'122

In the deliberations leading up to the Copyright Act of 1909, which first included language stating that the employer was the "author" in the case of "works made for hire," there was no substantive discussion of this definitional innovation,123 even on the part of the representatives of vari- ous authors' organizations who testified on the new legislation. The leg- islative treatment of employed "authors" in the 1909 Act might have been seen as a controversial innovation, coming as it did only a few years after the initial, tentative judicial suggestions of a doctrine of "works made for hire." In fact, this aspect of the legislation apparently seemed too insignificant to merit comment, let alone to occasion protest. That such a superficially radical departure did not attract more attention sug- gests that, at a deeper level, it was no departure at all, and that there existed some principle of harmony between it and the basic ideological structures of copyright law. Decisions applying the new doctrine would reveal how the "work-for-hire" doctrine could be rooted in a version- albeit a curiously distorted one--of the Romantic conception of "authorship."

Most early decisions interpreting and applying the work-for-hire doctrine were opaque in their reasoning,124 but by the time Ann Ronnell forced the issue with Walt Disney and Irving Berlin, Inc., over rights to her arrangement of "Who's Afraid of the Big Bad Wolf," things were clear enough. In 1933, the free-lance musical arranger had been commis- sioned to help adapt the soundtrack version of "Who's Afraid of the Big Bad Wolf" as a popular song, which she did by "rearranging the musical themes in collaboration with an employee of Berlin, and arranging the existing lyrics and adding new ones of her own."125 Twenty-eight years later, she registered a renewal copyright in the song she had helped pro- duce, claiming to be a "joint author." For the Second Circuit Court of Appeals, however, Ronnell was a mere "employee for hire," and thus not entitled to renew; the renewal belonged instead to the assignee of her "employer":

[E]mployees of Berlin did in fact make some revisions in Miss Ron- nell's work. Moreover since Disney had control of the original song on which Miss Ronnell's work was based, Disney (and Berlin, with Dis- ney's permission), at all times had the right "to direct and supervise" Miss Ronnell's work. In short, the "motivating factors" in the composition of the new song ... were Disney and Berlin. They controlled the original song, they took the initiative in engaging Miss Ronnell to adapt it, and they had the power to accept, reject, or modify her work. 126

The characteristics of the employer-employee relationship that Jus- tices Brett and Cotton found irrelevant to "authorship" in 1883 were determinative in 1972. Regardless of who produced the original arrange- ment, it was the individual or firm who could claim "authorship" to the work's initiating "motivating factor" and inspiration.127 In effect, the visionary component of Romantic "authorship" was disaggregated from the associated component of intellectual and physical labor. The em- ployer was cast as the visionary, and the employee as a mere mechanic following orders. Perverse as this variation on the conventional logic of "authorship" may appear, it is not truly surprising in light of what had gone before.

In 1989, the Supreme Court confirmed the Romantic underpinnings of the American "work-for-hire doctrine," as it is specified in new provi- sions of the 1976 Copyright Act designed to limit the circumstances under which an independent contractor or commissioned artist (like Ann Ronnell) would be denied "authorship" of'her own works. Indeed, the definition of a work made for hire in section 101 of the Act limited the circumstances when the productions of "freelancers" could be considered works made for hire; specifically, when an explicit agreement to this ef- fect and the work in question fell into one of nine designated statutory categories. 128

Despite this statutory language, however, several courts thereafter held under some circumstances a commissioned work could be regarded as a "work made for hire" although it did not satisfy the criteria just outlined, as long as it could be characterized as "a work prepared by an employee within the scope of her or her employment";129 this characteri- zation, in turn, would be appropriate when the commissioning party had enjoyed "control" over the creation of the work. 130

The Supreme Court's approach to this dilemma in Community for Creative Non-Violence v. Reid131 was, at best, semi-Solomonic. The unanimous Court concluded that ordinarily the terms of the statute should govern and only specific categories of commissioned works should be considered works for hire.132 But an exception to this generalization was applicable when the commissioned artist or independent contractor could be considered the agent of the commissioning party.133 The artist in this case is theż employee, and the commissioning party the employer and "author" of the work-regardless of the specific character of the work. 134

A central question in agency doctrine is whether a hired individual is the servant of the hiring party for a particular function or activity.'35 According to the Court's formula, the crucial inquiry is "the hiring party's right to control the manner and means by which the product is accomplished."'136 In Reid, the Supreme Court identified circumstances supporting the conclusion that the commissioned artist was the "author" of his own sculpture.'37 The outcome should not obscure the fact that the standard employed was one which can, and often will, deprive crea- tive workers of the "authorship" designation. But it should come as no surprise that the particular version of the "authorship" construct empha- sized in the "work-for-hire" cases may, in practice, be inimical to the concrete pecuniary and moral interests of writers, photographers, sculp- tors, and other flesh-and-blood creative workers. In Reid and the cases leading up to it, certain attributes of Romantic "authorship" are empha- sized while others are marginalized. If the essence of the Romantic ac- count of "authorship" was to be found in its emphasis on the inspired individual, the profoundly anti-individualistic work-for-hire cases focus exclusively on inspiration itself. The origins of the "authorship" con- struct may lie in the tradition of "possessive individualism," but in this version, it serves merely to rationalize possession.

Notes:

113. Perhaps the most notable example is the notorious Supreme Court decision in Lochner v. New York, 198 U.S. 45 (1905), which struck down state wage and hour laws with the observation that "[t]here is no reasonable ground for interfering with the liberty of persons or the right of free contract, by determining the hours of labor, in the occupation of a baker ......

114. The Supreme Court recently considered the doctrine in Community for Creative Non-Vio- lence v. Reid, 490 U.S. 730 (1989).

115. 17 U.S.C. § 201(b) (1988).

116. Id.

117. [1883] 11 Q.B. 627.

118. Id. at 627-28.

119. Id. at 630-32. In a similar vein, Lord Justice Bowen stated: Who would have been the author supposing Messrs. Nottage & Kennard had never been born and that the artists who were employed by them went down on their own business and on their own pecuniary resources to take this picture? Of course the authors would be the artists who took the pictures. Do they become less the authors because they were employed by Messrs. Nottage & Kennard? Id. at 632.

120. Id. at 635.

121. Dielman v. White, 102 F. 892, 894 (C.C.D. Mass. 1900).

122. One may speculate that the wariness of the Supreme Court's approach to the issues of "authorship" in Bleistein, and its complimentary emphasis'on the characteristics of the "works" as such, may have been influenced by the implicit ambiguity as to the legal "author's" identity. In contrast, see Yeungling v. Schile, 12 F. 97 (C.C.S.D.N.Y. 1882), in which an American firm's efforts to assert copyright in a "chromo" executed by a German artist were rebuffed, on the ground that neither the firm (which is not the "author") nor the artist (who is not a citizen) was entitled to protection.

123. See Varmer, Works Made for Hire and on Commission (Study No. 13), in COPYRIGHT LAW REVISION, STUDIES PREPARED FOR THE SENATE JUDICIARY SUBCOMM. ON PATENTS, TRADE- MARKS AND COPYRIGHTS, 86th Cong., 2d Sess. 123, 128 (Comm. Print 1960).

124. See National Cloak & Suit Co. v. Kaufman, 189 F. 215 (C.C.M.D. Pa. 1911).

125. Picture Music, Inc. v. Bourne, Inc., 457 F.2d 1213, 1214 (2d. Cir.), cert. denied, 409 U.S. 997 (1972).

126. Id. at 1216.

127. The employer's contribution of capital is also a factor in the analysis of many "work-for- hire" cases. The typical case, however, tends to deemphasize the employer's economic contribu- tions, and emphasize the "creative" ones. The capital investment is not in any way essential to the determination of whether a particular employer should be considered an "author." The facts of Picture Music suggest that Miss Ronnell received only a promise of future royalties in connection with her work for Disney and Berlin.

128. 17 U.S.C. § 101 (1988) (definition of "work made for hire). The categories are "a contribu- tion to a collective work .... a part of a motion picture or other audiovisual work.... a translation, ... a supplementary work .... a compilation,.., an instructional text, . . . answer material for a test, ... [and] an atlas." Id. The legislative history of this provision is exhaustively reviewed in Hardy, Copyright Law's Concept of Employment-What Congress Really Intended, 35 J. COPYRIGHT SOC'Y U.S.A. 210 (1988).

129. 17 U.S.C. § 101 (1988).

130. These decisions included Aldon Accessories, Ltd. v. Speigel, Inc., 738 F.2d 548 (2d Cir.) (commissioned work is work of "employee" when commissioning party exercises "actual" supervi- sion and control), cert. denied, 469 U.S. 982 (1984) ; Easter Seal Soc'y v. Playboy Enters., 815 F.2d 323 (5th Cir. 1987) (potential supervision and control by commissioning party sufficient), cert. de- nied, 485 U.S. 981 (1988)

131. 490 U.S. 730 (1989).

132. Id. at 750.

133. Id. at 751.

134. The Court drew heavily on the analysis of the case provided below by the United States Court of Appeals for the District of Columbia Circuit. See Community for Creative Non-Violence v. Reid, 846 F.2d 1485 (D.C. Cir. 1988).

135. See RESTATEMENT OF AGENCY §§ 2, 220-227 (1933).

136. Reid, 490 U.S. at 751.

137. Id. at 751-52. Although the sculptor in Reid was significantly influenced in the execution of the commission, the Court found that he was not an agent because "all the other circumstances weigh[ed] heavily against finding an employment relationship." Id. at 752. Previously, the opinion noted: Among the other factors relevant to this inquiry are the skill required; the source of the instrumentalities and tools; the location of the work; the duration of the relationship be- tween the parties, whether the hiring party had 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. Id. at 751-52 (citations omitted). But if the ultimate goal of the inquiry is to determine "the hiring party's right to control the manner and means by the product is accomplished," however, it is diffi- cult to see how it can also be true that "the extent of control the hiring party exercises over the details of the product is not dispositive." Id. at 752.