Second Circuit Rules Stanley Kauffmann’s Estate Owns Copyrights to Film Reviews and Can Continue Copyright Infringement Suit
On August 1, 2019, the United States Court of Appeals for the Second Circuit (Second Circuit) held that film critic Stanley Kauffmann’s 44 film reviews written for The New Republic (TNR) were not works made for hire, and Kauffmann’s estate owned the copyrights to such reviews. As a result, Kauffmann’s estate could continue its copyright infringement lawsuit against the Rochester Institute of Technology (RIT) (Estate of Stanley Kauffmann v. Rochester Institute of Technology, 932 F.3d 74 (2d. Cir. 2019)).
Facts
Over 55 years, Stanley Kauffmann contributed numerous film reviews to TNR, though TNR never employed him. During this time, Kauffmann and TNR each took actions that lay claim to their respective copyright ownership in the film reviews. For example, Kauffmann granted third-party licenses to republish TNR reviews without TNR’s objection, while TNR transferred to Kauffmann copyrights to his articles appearing in TNR between 1978 and 1979 and Kauffmann also asked TNR for permission to reprint his film reviews in an anthology.
TNR never formalized whether Kaufmann’s articles were works made for hire, except for a 2004 letter agreement. The agreement stated, in part, that “Our agreement with you has always been an oral understanding….We have…always understood in doing business with you that, in light of our regular monthly compensation with you, all articles you have written for The New Republic have been ‘works made for hire’ as that term is defined under US Copyright laws.”
After Kauffmann passed away in 2013, The Rochester Institute of Technology (RIT) published an anthology, The Millennial Critic: Stanley Kauffmann on Film: 1999-2009, which included the 44 film reviews that TNR published. In 2015, Kauffmann’s estate discovered RIT’s anthology and sued RIT for copyright infringement.
District Court Opinion
RIT sought summary judgment claiming that as per the 2004 agreement Kauffmann wrote his film reviews as works made for hire and did not own the copyrights to them. Kauffmann’s estate cross-motioned for partial summary judgment on the issue of liability.
The United States District Court for the Western District of New York (W.D.N.Y.) granted RIT’s motion for summary judgment and denied the Kauffmann estate’s cross-motion, stating that the 2004 agreement memorialized a preexisting oral agreement dating back to 1958 when Kauffmann began writing for TNR. The W.D.N.Y. stated that Kauffmann’s estate could not maintain its copyright infringement action against RIT. Kauffmann’s estate appealed to the Second Circuit (Estate of Stanley Kauffmann v. Rochester Institute of Technology, 2018 WL 4846674 (W.D.N.Y 2018)).
Second Circuit Opinion
A “work made for hire” is either (1) “a work prepared for 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…if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire” (17 U.S.C. § 101(2)). The Second Circuit stated that the case hinged on the legal effect of the 2004 agreement, since the parties agreed that Kauffmann was not an employee of TNR, and the film reviews were not ordered for use in a collective work. The agreement was executed in 2004, five years after the 44 reviews were written. Although the Seventh and Third Circuits held that an agreement to establish a work made for hire must be executed before the work is created, the Second Circuit stated that in some instances a series of writings executed after the work is created is sufficient to establish the writing requirement of 17 U.S.C. § 101(2), specifically where there is “unanimous intent among all concerned that the work for hire doctrine would apply, notwithstanding that some of the paperwork remained not fully executed” Playboy Enterprises v. Dumas, 53 F.3d 549 (2d. Cir. 1995).
The Second Circuit relied on Playboy in which Playboy issued checks to a painter after he submitted each painting to Playboy. The checks contained legends with the words “BY ENDORSEMENT, PAYEE acknowledges payment in full for services rendered on a work-made-for-hire basis in connection with the work named on the face of the check” (Id. at 552-53). As a result, the Second Circuit deemed those writings sufficient to demonstrate the painter’s pre-creation consent to a work-made-for-hire relationship (Id. at 560).
However, the Second Circuit held that Kauffmann’s 2004 agreement did not satisfy the writing requirement under Section 101(2) because there weren’t any circumstances that approached the situation in Playboy, where a series of writings were executed by check endorsements right after payment for each painting.
In addition, to hold that the agreement retroactively rendered Kauffmann’s film reviews works made for hire would endorse a “fiction” of two separate authors (i.e., one between 1999 and 2004 before the agreement was executed and another thereafter). It would also render certain aspects of copyright law uncertain, such as duration, renewal rights, and termination.
Accordingly, the Second Circuit held that Kauffmann was and remains the author of his 44 film reviews, and his estate is entitled to proceed against RIT for copyright infringement.