WORKS MADE FOR HIRE AND ON COMMISSION I. INTRODUCTION The problem to be considered in this paper is: What person should be considered the author or first copyright owner (1) of a work made by an employee in the course of his employment by another person, and (2) of a work made by one person under a commission at a fixed fee for another person? The scope of the problem may be illustrated by the following example. A magazine publisher may obtain an article for his magazine in one of three ways: (1) He may assign the task of writing the article to a salaried employee; (2) He may commission an author to write the article for a fixed fee; (3) He may acquire the article from an author who has written it on his own initiative. It is the purpose of this paper to deal with the first two situations in regard to works of all kinds that are made by employees for hire or under a commission. Using the example of an article for a magazine, the first question to be examined in each situation is: Under the present law, what are the respective rights of the magazine publisher and of the person who has written the article? The second question is: Are these rights properly allocated as between the two or should a different allocation of the rights be made in a general revision of the copyright law? When examining these questions, it should be borne in mind that there may be some differences in result between treating an employer for hire as an "author," and treating him as the copyright owner (with the employee being the author). In short, the identity of the author may be significant for purposes other than first ownership of the copyright. Thus, under the present U.S. copyright law authorship, as distinguished from copyright ownership, may be decisive in the following situations: (1) The citizenship of the author may be decisive in determining whether a work is eligible for copyright and, since the implementing of the Universal Copyright Convention, in determining whether deposit, registration and domestic manufacture may be required.2 (2) Only the author (or his specified heirs or representatives) can obtain renewal of his copyright in certain instances. However, the present statute provides specially for the renewal of copyright in works made for hire.3 117 U.S.C. § 9. 17 U.S.C. 9(c). 17 U.S.C. 24. As will be noted below, although the employer is deemed to be the "author" of a work made for hire, it is not the employer as such who is entitled to the renewal, but the copyright proprietor at the time of renewal. (3) Different results may also arise where, as in many foreign laws, the duration of copyright is based on the life of the author. Also, in foreign laws where moral rights are recognized, these rights belong to the author. If the employer is merely the first copyright owner of a work made for hire, is the duration of copyright to be measured from the death of the employee-author? And does the latter have moral rights? In examining the legislative history of the present law, the relevant court decisions, the various legislative proposals introduced in Congress, and the foreign laws, the aforementioned distinctions between the author and a copyright owner should be kept in mind. II. LEGISLATIVE HISTORY OF THE PRESENT LAW The present copyright law contains two provisions regarding works made for hire. Section 26 provides that "the word 'author' shall include an employer in the case of works made for hire," and section 24 provides that in the case of any work copyrighted *** by an employer for whom such work is made for hire, the proprietor of such copyright shall be entitled to a renewal. Both provisions were enacted in 1909 and represented the first legislative attempt to deal with the relationship of employer and employee in the field of copyright. The law does not mention works made on commission. One of the forerunners of the 1909 act, a memorandum draft bill of March 2, 1906, defined the word "author" as including: (1) "Any person who employs a photographer to make a photographic portrait"; and (2) "An employer, in the case of a work produced by an employee during the hours for which his salary is paid, subject to any agreement to the contrary." It will be noted that clause (1) in this draft bill proposed to attribute authorship to the person who commissions a photographic portrait; and that clause (2), in proposing to attribute authorship to the employer in the case of a work made for hire, defined such a work in terms of salaried employment. Not only did the 1909 act omit any reference to commissioned photographs, but it also omitted the definition of works made for hire. It might be argued that the omission of that definition indicated an intention to give employment for hire a wider scope than employment on a salaried basis; or, it might be argued conversely, that employment for hire implies salaried employment and that the omitted definition was presumably thought to be superfluous. The legislative proceedings do not cast any light on this question, but the matter has been clarified to some extent in the court decisions to which we turn next. III. THE COURT DECISIONS A. WORKS MADE FOR HIRE One of the first cases to deal with the statutory concept of works made for hire was National Cloak & Suit Co. v. Kaufman (189 Fed. 215 (C.C. Pa. 1911)). The court recognized that under the 1909 act • Conference on Copyright, Report, 3d Sess., 1906, at 13. the employer, in this case a corporation, was author of a work created by its employees and as such entitled to copyright in the work. The court stated that under the previous case law also, a corporation was entitled to the literary product of a salaried employee. It should be pointed out, however, that the older cases cited support only the copyright ownership of the employer, not his authorship. Similar rulings were made in Yale University Press v. Row, Peterson & Co. (40 F. 2d 290 (S.D.N.Y. 1930)), and Sedler, Brown v. Molle Co. (20 F. Supp. 135 (S.D.N.Y. 1937)). In U.S. Ozone Co. v. U.S. Ozone Co. of America (62 F. 2d 887 (7th Cir. 1932)), the copyright in a work made for hire had been secured and registered in the name of the employee. The court held that the copyright was held in trust for the employer, and that the employee could not assign any beneficial interest in the copyright. There are two important cases involving renewal rights in works made for hire: Tobani v. Carl Fischer, Inc. (98 F. 2d 57 (2d Cir. 1938)); and Shapiro, Bernstein & Co. v. Bryan (123 F. 2d 697 (2d Cir. 1941)). The issue in both cases was whether the renewal right belongs to the employer for hire or to the employee as "actual" author. In the Tobani case the court held that renewals obtained by a son of the deceased employee were void. In the Bryan case renewal was obtained by the employer's successor in title and the court held that the renewal was valid.' These two decisions are based on the following principles. Although the employer for hire is deemed to be the author of works made by his employees, the renewal right does not revert to him as it does to other authors. Nor does it belong to the employee as the "actual" author or to his widow or children, etc. As stated by the lower court in the Bryan case: the words "proprietor of such copyright" (in sec. 24) plainly mean the proprietor at the time of renewal, and not at the time of the original copyright. Judge Learned Hand, who wrote the opinion of the Circuit Court of Appeals in the Bryan case, considered the meaning of "a work made for hire." He said: The turning point is whether the song *** was “a work made for hire." They argue that the phrase does not include works of which employees are the real authors but only those to which they made some ancillary contribution to the employer who is the chief author ***. But not only do the words suggest no such distinction, but the kind of contribution by the employee to which the phrase would then be limited would not support the issue of an original copyright to the employee; he would not be an "author," at most he would be a "co-author" ***. The "work" intended is clearly any "work" which, but for the employment, the employee could have himself copyrighted; not a work in which his right would have given him only joint interest in the copyright. Thus, participation by the employer is not required in order to apply the statutory rules of works made for hire, and such participation alone does not make a person an employer for hire. Other cases have held the same; see for example, Fred Fisher Music Co., Inc. v. Leo Feist, Inc. (55 F. Supp. 359 (S.D.N.Y. 1944)), and In re Journal-News Corp. (104 F. Supp. 843 (S.D.N.Y. 1951)). Collier Engineer Co. v. United Correspondence School Co., 94 Fed. 152 (C.C.S.D.N.Y. 1899); Atwill v. Ferrett, 2 Blatchf. 39, Fed. Cas. No. 640 (C.C.S.D.N.Y. 1846). The court conceivably might have held that the renewals involved were valid but held in trust for the employer's successor in title. Such a ruling would be consistent with a number of decisions on copyright registration, see for example U.S. Ozone Co. v. U.S. Ozone Co. of America, supra. |