18‐2404‐cv
The Estate of Stanley Kauffmann v. Rochester Institute of Technology


                           UNITED STATES COURT OF APPEALS

                                 FOR THE SECOND CIRCUIT

                                        August Term 2018

              Argued: May 7, 2019                 Decided: August 1, 2019

                                     Docket No. 18‐2404‐cv

              ‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐
              THE ESTATE OF STANLEY KAUFFMANN,

              Plaintiff‐Appellant,

              v.

              ROCHESTER INSTITUTE OF TECHNOLOGY,

                             Defendant‐Third‐Party‐Plaintiff‐Appellee,

              v.

              ROBERT J. CARDULLO,

                       Third‐Party‐Defendant.
              ‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐

              Before: NEWMAN, JACOBS, and DRONEY, Circuit Judges.

             Appeal from the August 7, 2018, judgment of the District Court
       for the Western District of New York (Charles J. Siragusa, District
       Judge), granting summary judgment in favor of Rochester Institute of
       Technology and denying the motion by the Estate of Stanley

                                              1
      Kauffmann for partial summary judgment. Judgment reversed, and
      case remanded for further proceedings.

                                 Kenneth P. Norwick, Norwick & Schad,
                                      New York, NY for Plaintiff‐Appellant
                                      The Estate of Stanley Kauffmann.

                                 Mary P. Moore, Bond, Schoeneck & King,
                                      PLLC, Rochester, NY (Joseph S.
                                      Nacca, Bond, Schoeneck & King,
                                      PLLC, Rochester, NY; Jeremy P.
                                      Oczek, Bond, Schoeneck & King,
                                      PLLC, Buffalo, NY, on the brief) for
                                      Defendant‐Appellee       Rochester
                                      Institute of Technology.

                                 (Andrew     Grimm,      Digital   Justice
                                      Foundation, Omaha, NE, Gregory
                                      Keenan, Digital Justice Foundation,
                                      Floral Park, NY for amicus curiae
                                      Digital Justice Foundation, Inc., in
                                      support of neither party and
                                      reversal.)


      JON O. NEWMAN, Circuit Judge:

      This appeal concerns the ownership of copyrights in 44 articles written by

the film critic Stanley Kauffmann, which first appeared in The New Republic

magazine (“TNR” or “the magazine”) and have now been republished in an

anthology of Kauffmann’s reviews. The issue is whether each article is a “work

made for hire” within the meaning of the definition section of the Copyright Act

of 1976, 17 U.S.C. § 101. Because the parties in this litigation, a purported licensee

and Kauffmann’s estate, agree that Kauffman was not an employee of the

                                          2
magazine, the more precise issue is whether a letter agreement, signed by

Kauffmann and the magazine’s literary editor five years after the year in which

the articles were written, satisfies the definition’s alternate criterion that “the

parties expressly agree in a written instrument signed by them that the work shall

be considered a work made for hire.” Id.

      This issue arises on an appeal by Kauffmann’s estate (“the Estate”),

Kauffmann’s successor in interest, from the August 7, 2018, judgment of the

Western District of New York (Charles J. Siragusa, District Judge), dismissing, on

motion for summary judgment, the Estate’s complaint against the Rochester

Institute of Technology (“RIT”) for copyright infringement based on RIT’s

publication of an anthology of Kauffmann’s articles. RIT, asserting the defense that

the Estate does not own the copyrights, contends that Kauffmann’s articles were

works for hire and that TNR for that reason was the “author” of the works, 17

U.S.C. § 201(b), and therefore had “[o]wnership” of the copyrights in them, id.

§ 201(a), absent any transfer.

      We conclude that Kauffmann’s articles were not works for hire because the

letter agreement was signed long after the works were created, and no special

circumstances even arguably warrant applying the written agreement.

Accordingly, we reverse the judgment of the District Court and remand for further

proceedings.

                                      Background

      Over the course of 55 years, Stanley Kauffmann, who, the parties to this

appeal agree, was never employed by TNR, contributed numerous film reviews

and other articles to the magazine. During that time, Kauffmann and TNR took
                                         3
some actions consistent with an understanding that Kauffmann was the author of,

and owned the copyrights in, his articles. For example, Kauffmann granted many

third‐party licenses to republish his TNR articles without objection from TNR.

However, Kauffmann and TNR took other actions consistent with an

understanding that TNR was the author and original owner of the copyrights. For

example, TNR transferred to Kauffmann the copyrights in all of his articles

appearing in TNR in 1978 and 1979, and Kauffmann at least once solicited

permission from TNR to reprint his TNR film reviews in an anthology.

       With one important exception, Kauffmann and TNR never formalized any

understanding about whether Kauffmann’s articles were “works made for hire.”

The exception is a 2004 letter agreement from TNR to Kauffmann (“the 2004

Agreement”), which is critical to this appeal. It provided in relevant part: “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 arrangement with you, all articles you have written for The New

Republic have been ‘works made for hire,’ as that term is defined under the US

Copyright laws.” Letter from Leon Wieseltier to Stanley Kauffmann (Mar. 22,

2004). The agreement was signed on behalf of TNR by Wieseltier, then TNR’s

literary editor, and shows a check mark on the line marked “Agreed:” above

Kauffmann’s signature.

      After Kauffmann’s death in 2013, RIT published an anthology of

Kauffmann’s film reviews including 44 that had originally been published in TNR

in 1999 (“the articles” or “the works”). The anthology, titled The Millennial Critic:

Stanley Kauffmann on Film: 1999‐2009, was edited by third‐party defendant Robert

                                         4
J. “Bert” Cardullo. He is not a party to this appeal. Cardullo, a serial plagiarist of

writings by Kauffmann and others, misrepresented to RIT that Kauffmann’s will

had granted him sole authority to prepare an anthology of Kauffmann’s film

reviews. He went so far as to forge a letter purporting to be from counsel for the

Estate. In emails to counsel in this litigation, Cardullo admitted that he was “fully

guilty of all the charges against [him] and that RIT Press was duped by [him] in

this affair.”1 Email from Robert Cardullo to Jeremy Oczek (Mar. 3, 2017).

       Kauffmann’s estate is the successor owner of Kauffmann’s copyrights and

the appellant in this appeal. In 2015, the Estate discovered the anthology and sued

RIT for copyright infringement. Relying on the 2004 Agreement, which was

unearthed from TNR’s files during discovery, RIT sought summary judgment. It

contended that the Estate did not own the copyrights because Kauffmann had

created the articles in the anthology as works for hire and TNR, not Kauffmann,

was therefore the “author” of the articles. The Estate cross‐moved for partial

summary judgment on the issue of liability.

       The District Court granted RIT’s motion for summary judgment and denied

the Estate’s cross‐motion, ruling that the 2004 Agreement “unambiguous[ly]”

“memorialize[d] in writing a preexisting oral contract, evidently dating back to

when Kauffmann started writing for The New Republic in 1958,” that Kauffmann’s

contributions to the magazine – including the 44 articles at issue in the litigation –

were created as works for hire. See Estate of Kauffmann v. Rochester Institute of



       1 Cardullo, who was served in Finland, never appeared in this action, and the District
Court entered a default judgment against him, making him liable to RIT for attorney’s fees of
$178,096.64.

                                             5
Technology, No. 17‐CV‐6061, 2018 WL 3731445, at *3 (W.D.N.Y. Aug. 6, 2018). In

the District Court’s view, Kauffmann never owned copyrights in the articles and

therefore the Estate, his successor in interest, could not maintain an infringement

action based upon their inclusion in RIT’s anthology.

                                         Discussion

       “To prove a claim of copyright infringement, a plaintiff must show . . .

ownership of a valid copyright . . . .” Urbont v. Sony Music Entertainment, 831 F.3d

80, 88 (2d Cir. 2016). The owner of a copyright in a work is the “author” of the

work, 17 U.S.C. § 201(a), absent any transfer. The author of the work is the creator

of the work, unless it is a “work made for hire.” Id. § 201(b). Section 201(b)

provides:

              “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.”

Id. A “work made for hire” is either:

             “(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 . . . if the parties expressly agree in a
       written instrument signed by them that the work shall be considered
       a work made for hire.”
Id. § 101(2).
       Because the parties to this litigation agree that Kauffmann was not an

employee of TNR and that the articles were ordered for use in a collective work,


                                           6
whether Kauffmann was, and whether Kauffmann’s estate now is, the owner of

copyrights in the 44 articles at issue in this litigation turns on the legal effect of the

2004 Agreement.

       The 2004 Agreement was executed five years after the year in which the 44

articles were written. Although the Seventh and Ninth Circuits have ruled that an

agreement sufficient to establish a work as a “work for hire” must be executed

before creation of the work, see Schiller & Schmidt, Inc. v. Nordisco Corp., 969 F.2d

410, 412‐13 (7th Cir. 1992); Gladwell Government Services, Inc. v. County of Marin, 265

F. App’x 624, 626 (9th Cir. 2008),2 our Circuit has ruled that in some circumstances

a series of writings executed after creation of the works at issue can satisfy the

writing requirement of section 101(2), see Playboy Enterprises, Inc. v. Dumas, 53 F.3d

549, 558‐59 (2d Cir. 1995). Such writings, we said, must “confirm[] a prior

agreement, either explicit or implicit, made before the creation of the work.” Id. at

559.3 That statement is best understood as qualified by the particular

circumstances of the execution of the writings in that litigation.

       Playboy concerned paintings that Patrick Nagel contributed to the well‐

known magazine. The relevant writings deemed to have created a work‐for‐hire

relationship were either of two versions of legends stamped on the back of checks

made out to Nagel as payment for paintings that were reproduced in the

magazine. See id. at 552‐53. Playboy issued a check for a particular painting after it

had received the work from Nagel. See Playboy Enterprises, Inc. v. Dumas, 831 F.



       2 Two commentators agree. See 4 Goldstein on Copyright § 4.3.2.2 (3d ed. 2019); 2 Patry on
Copyright § 5:49 (2019).
       3 One commentator agrees. See 1 Nimmer on Copyright § 5.03[B][2][b] (2019).


                                               7
Supp. 295, 300 (S.D.N.Y. 1993). Both versions of the legends included 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 this check.” Playboy, 53 F.3d at 552‐53.

      As in the pending case, the parties in Playboy agreed that Nagel was not an

employee of the magazine. See 53 F.3d at 558. In determining whether the legends

sufficed to satisfy the writing requirement of section 101(2), Judge Oakes’ opinion

said that our Court agreed with the Seventh Circuit “that the writing requirement

was created, in part, to make the ownership of intellectual property rights clear

and definite.” Id. at 559. The Supreme Court, he noted, had observed that “one of

Congress’s goals in creating the work‐for‐hire provisions of the 1976 Act was to

‘ensur[e] predictability through advance planning.’” Id. (quoting Community for

Creative Non‐Violence v. Reid, 490 U.S. 730, 750 (1989). “Congress’s goal of

‘predictability’” he wrote, “would be thwarted if a hiring party and an

independent contractor could enter into a work‐for‐hire agreement years after a

work was created.” Id.

      Rejecting an absolute rule that the requisite writing always had to be

executed before the work was created, he deemed “convincing” the argument that

such a requirement could “itself create uncertainty.” Id. Significantly, Judge Oakes

indicated the sort of circumstance where a subsequent writing would be

acceptable: “‘unanimous intent among all concerned that the work for hire

doctrine would apply, notwithstanding that some of the paperwork remained not

fully executed until after creation of the subject work.’” Id. (quoting 1 Nimmer

§ 5.03[B][2][b] (1994)). Then, considering the specific circumstances before him, he


                                           8
acknowledged that “[w]hile Nagel’s endorsement of Playboy’s first check bearing

[one version of the legend] may not evidence [Nagel’s] pre‐creation consent to a

work‐for‐hire relationship, Nagel’s subsequent pre‐creation consent to such a

relationship may be inferred from his continued endorsements.” Id. at 560.

       In the pending case, the agreement alleged to satisfy the writing

requirement was not executed until five years after the year in which the articles

were written, and there are no circumstances even approaching the Playboy

scenario of a series of writings executed by check endorsements right after

payment for each work. It is not “‘paperwork [that] remained not fully executed

until after creation of the subject work.’” Id. at 559 (quoting 1 Nimmer § 5.03[B][2][b]

(1994)). The 2004 Agreement does not satisfy the writing requirement of section

101(2).4

       To give the 2004 Agreement the significance adopted by the District Court

would risk endorsing a fiction of “two separate authors,” specifically rejected in

Playboy, 53 F.3d at 559, one during the five‐year interval before the Agreement was

executed and another thereafter. It would also render uncertain several aspects of

the copyright in each article, such as its duration, renewal rights, and termination

rights. See 17 U.S.C. §§ 203(a), 302(c), 304(a); see also 4 Goldstein on Copyright

§ 4.3.2.2.5 None of these consequences is eliminated by the fact that the 2004

Agreement recites a prior oral understanding between TNR and Kauffmann.


       4  Because we conclude that the 2004 Agreement does not satisfy the section 101(2) writing
requirement, we do not reach the issue, raised by amicus, of whether the District Court properly
relied on the parol evidence rule to exclude extrinsic evidence of Kauffmann’s and TNR’s pre‐
creation intent.
        5 In the four District Court decisions (all outside our Circuit) that have relied on Playboy

to uphold work‐for‐hire agreements executed after creation of a work, an alleged work‐for‐hire

                                                 9
                                           Conclusion

       Kauffmann was and remains the author of the 44 articles, and his Estate, as

his successor, is the owner of the copyrights in them. The Estate is entitled to

proceed on its suit for infringement.

       The judgment of the District Court is reversed, and the case is remanded for

further proceedings.




employer sued an alleged third‐party infringer. See Kid Stuff Marketing, Inc. v. Creative Consumer
Concepts, Inc., 223 F. Supp. 3d 1168, 1180‐81 (D. Kan. 2016); Campinha‐Bacote v. Rearden, No. 3:10‐
CV‐00139‐JDR, 2011 WL 1343343, at *3 (D. Alaska Apr. 8, 2011); Looney Ricks Kiss Architects, Inc.
v. Bryan, No. CIV.A. 07‐572, 2010 WL 4068885, at *6 (W.D. La. Oct. 14, 2010); TMTV, Corp. v. Mass
Productions, Inc., 345 F. Supp. 2d 196, 206 (D.P.R. 2004), aff’d on other grounds, 645 F.3d at 469‐70.
The four District Courts all lacked the benefit of any claim of authorship or ownership by the
creator of the work or, as in the pending case, the creator’s successor in interest. Such a claim
might well have persuaded those courts to adopt the limited reading of Playboy we apply here.
And in the course of the litigation of all four cases, the creator of the work at issue actually
supported the claim of work for hire.

                                                 10
