
USCA1 Opinion

	




          April 15, 1993                            UNITED STATES COURT OF APPEALS                                FOR THE FIRST CIRCUIT                                        _____          No. 91-1415                                     JOHN FORWARD                                 Plaintiff, Appellant                                          v.                              GEORGE THOROGOOD, et al.,                                Defendants, Appellees.                                     ___________                                     ERRATA SHEET               The opinion of  this Court  issued on January  29, 1993,  is          amended as follows:               On page  4, footnote 1,  line 1:   delete the  comma between          "Nimmer on Copyright" and the " " sign.           ___________________               On  page 5, line 3:   delete the  comma between "Nimmer" and                                                                ______          the " " sign.               On page 9,  line 5:  delete  the comma between "Nimmer"  and                                                               ______          the " " sign.          January 29, 1993                            UNITED STATES COURT OF APPEALS                                FOR THE FIRST CIRCUIT                                 ____________________        No. 91-1415                                    JOHN FORWARD,                                 Plaintiff-Appellant,                                          v.                              GEORGE THOROGOOD, et al.,                                Defendants-Appellees.                                 ____________________                     APPEAL FROM THE UNITED STATES DISTRICT COURT                          FOR THE DISTRICT OF MASSACHUSETTS                     [Hon. Joseph L. Tauro, U.S. District Judge]                                            ___________________                                 ____________________                                        Before                            Cyr and Boudin, Circuit Judges,                                            ______________                             and Hornby,* District Judge.                                          ______________                                 ____________________            Richard J. Shea  with whom Kenneth  M. Goldberg was  on brief  for            _______________            ____________________        appellant.            Gordon P. Katz with whom  Kim E. Perry and Jay M. Fialkov were  on            ______________            ____________     ______________        brief for appellee.                                 ____________________                                 ____________________        * of the District of Maine, sitting by designation.                 BOUDIN, Circuit Judge.   This is an appeal from  a final                         _____________            judgment  determining  the  copyright  ownership  of  certain            unpublished  tape  recordings  of  the  musical  group George            Thorogood  and the  Destroyers  (the "Band").   The  district            court ruled that the Band held the copyright to the tapes and            enjoined appellant John Forward from making commercial use of            the recordings.  We affirm.                 The basic facts  can be  briefly stated.   Forward is  a            music aficionado and record collector with a special interest            in  blues and country music.  In 1975, Forward was working as            a  bus driver  when  he  first  met  Thorogood  at  a  Boston            nightclub  where  the  Band  was  performing.    Forward  was            immediately  taken  with  the  Band's  act  and  struck  up a            friendship  with Thorogood.   Thorogood  and his  fellow band            members,  a drummer  and  a guitar  player, had  been playing            together at East Coast colleges and clubs since 1973.                 Upon learning that the Band had yet to release its first            album, Forward  began a campaign  to persuade his  friends at            Rounder Records to  sign the  Band to  a recording  contract.            Rounder  Records  is  a small,  Boston-based  record  company            specializing  in blues  and  folk music.    As part  of  this            effort, Forward arranged and  paid for two recording sessions            for  the Band in  1976.  The  purpose of the  sessions was to            create  a "demo"  tape  that would  capture Rounder  Records'            interest.  At  Forward's invitation, one of the principals of                                         -2-                                         -2-            Rounder Records attended the Band's second recording session.            Other   than  requesting  specific   songs  to  be  recorded,            Forward's  contribution  to  the  sessions  was  limited   to            arranging and paying for them.                  Rounder Records was impressed by  what it heard; the day            after the second session,  it arranged to sign the Band  to a            contract.   The Band agreed that Forward could keep the tapes            for  his  own  enjoyment,  and  they  have  remained  in  his            possession ever since.   In 1977, the Band's first  album was            released  under  the  Rounder  Records label.    Forward  was            singled   out   for   "special   thanks"   in   the   album's            acknowledgements.  Since then,  Thorogood and  the Destroyers            have  released a  number of  records and  gone on  to achieve            success as a blues/rock band.                  The  dispute between  the parties  arose in  early 1988,            when Forward told  the Band that he intended to sell the 1976            tapes to a record  company for commercial release.   The Band            objected, fearing  that release of  the tapes would  harm its            reputation;  they   were,  the   district  court  found,   of            "relatively   primitive  quality"  compared   to  the  Band's            published work.  On  July 5, 1988, Forward filed  suit in the            district court,  seeking a declaratory judgment  that he held            the  common law  copyright to  the tapes.   Determination  of            copyright  ownership  is  governed   by  the  common  law  of            copyright because the tapes are unpublished and were recorded                                         -3-                                         -3-            in 1976, prior to the January 1, 1978, effective  date of the            Copyright  Act of 1976,  17 U.S.C.    101 et seq.1   The Band                                                      ______            responded with a counterclaim for declaratory and  injunctive            relief.                 In  the district  court,  Forward advanced  a number  of            theories  in support  of  his claim  to copyright  ownership.            After a five-day  bench trial, the  district court filed  its            findings of fact and conclusions of law,  ruling that Forward            did  not  hold the  copyright under  any  of the  theories he            advanced.  Forward v.  Thorogood, 758 F. Supp. 782  (D. Mass.                       _______     _________            1991).   The court  entered judgment for  the Band, declaring            Thorogood and other  Band members to be  the copyright owners            and   permanently   enjoining   Forward   from   commercially            exploiting the tapes.  Forward now appeals.                 On this appeal, Forward's first theory in support of his            claim of copyright  ownership is based  on his ownership  and            possession of the tapes.  According to  Forward, ownership of            a  copyrightable  work  carries  with  it  ownership  of  the            copyright.    Alternatively,  he  argues  that  the  evidence            mandated  a   finding  that  the  copyright   was  implicitly                                            ____________________                 1See  M. Nimmer  & D.  Nimmer, 1  Nimmer on  Copyright                    ___                              ____________________            2.10[A] n.18, at 2-147  (1992) ("Nimmer").  See also  Roth v.                                             ______     ________  ____            Pritikin,  710  F.2d 934,  938  (2d  Cir.) (1976  Act,  which            ________            preempts the common law  of copyright as of January  1, 1978,            determines  the rights but not the  identity of the copyright            owners  of works created  prior to that  date), cert. denied,                                                            ____________            464 U.S. 961 (1983).                                         -4-                                         -4-            transferred to  him along with  the demo tapes.   We  find no            merit in either claim.                 The creator  of a work  is, at least  presumptively, its            author and the owner of the copyright, Community for Creative                                                   ______________________            Non-Violence  v.  Reid,  490  U.S.  730,  737  (1989).    The            ____________      ____            performer of a musical work is the author, as it were, of the            performance.    1 Nimmer    2.10[A](2)(a),  at   2-149.   The                              ______            courts, in applying  the common  law of copyright,  did in  a            number  of cases  infer  from  an  unconditional  sale  of  a            manuscript or  painting an intent to  transfer the copyright.            3  Nimmer    10.09[B],  at  10-76.1.    This doctrine,  often               ______            criticized  and  subject  to various  judicial  and statutory            exclusions, id., is the  source of Forward's principal claim.                        __            The difficulty  for Forward is  that even under  the doctrine            this physical  transfer merely created a  presumption and the            ultimate question was one of intent.  Id.                                                  __                 In this  case, the district court  found that "[n]either            the band nor  any of its members ever  conveyed, or agreed to            convey, their copyright interest  in the  tapes  to Forward."            758 F. Supp. at 784.  Rather the Band allowed Forward to keep            the  tapes solely for his personal enjoyment.  Id.  Forward's                                                           __            disregard  of this  central finding is  premised on  a highly            artificial attempt to claim "constructive possession"  of the            tapes  from the outset and then to argue that any reservation            by the Band at the end of the sessions was an invalid attempt                                         -5-                                         -5-            to  reconvey or qualify his  copyright.  The  reality is that            the Band never  surrendered the copyright in the  first place            and the transfer of the tapes' ownership to Forward was not a            sharply defined  event distinct  from the reservation  of the            Band's rights.                 Forward  argues that  the  district  court's finding  is            mistaken, pointing  in particular  to a  1979 check for  $500            made  out to him from Rounder Records  on behalf of the Band.            A  notation indicates  that  the check  was  for an  "advance            option"  on  the tapes,  and  Forward argues  that  the check            constitutes  an  "unambiguous admission"  that  he owned  the            copyright.   The Band  counters that, shortly  before Forward            was given the check, another  demo tape made by the  Band had            been  sold by a  third party to  a record company.   The Band            claims that, to prevent  another such misadventure, it sought            an  option on the physical  tapes held by  Forward.  Although            Forward contests  this explanation, the  district court heard            the evidence, chose reasonably between conflicting inferences            as to the  import of the  check, and that is  the end of  the            matter.  See Anderson v. City of Bessemer City, 470 U.S. 564,                     ___ ________    _____________________            573-74 (1985); Fed. R. Civ. P. 52(a).                 Forward's  second theory of copyright ownership involves            the  "works  for hire"  doctrine.    Under this  doctrine,  a            judicially developed  notion later codified  in the Copyright            Act of 1909, 17 U.S.C.   1 et seq., an employer is deemed the                                       ______                                         -6-                                         -6-            "author"  and  copyright  holder  of  a work  created  by  an            employee  acting within  the scope  of employment.   Although            initially  confined  to  the   traditional  employer-employee            relationship, the  doctrine  has  been  expanded  to  include            commissioned  works created by  independent contractors, with            courts treating the contractor as an employee and  creating a            presumption of copyright ownership in the commissioning party            at  whose "instance  and expense"  the work  was done.   See,                                                                     ____            e.g.,  Murray v.  Gelderman, 566  F.2d. 1307, 1310  (5th Cir.            ___    ______     _________            1978);  Brattleboro  Publishing  Co.  v.  Winmill  Publishing                    ____________________________      ___________________            Corp., 369  F.2d  565,  567-68  (2d  Cir.  1966).2    Forward            _____            maintains  that  the  tapes,  created at  his  "instance  and            expense,"  are  commissioned  works  to which  he  holds  the            copyright.                 The district court rejected this claim, finding that the            evidence did not support  it.  The court said  that, although            Forward booked  and  paid for  the  studio time,  he  neither            employed  nor  commissioned  the  band  members  nor  did  he            compensate or agree to compensate them.  758 F. Supp. at 784.            While  the lack  of compensation  may  not be  decisive, see,                                                                     ____            e.g., Community  for Creative  Non-Violence, 490 U.S.  at 734            ___   _____________________________________                                            ____________________                 2    The  Copyright Act  of 1976  altered the  works for            hire  doctrine so  that  only certain  types of  commissioned            works qualify as works for hire, and then only if the parties            have  agreed in writing  to treat it as  such.  See Community                                                            ___ _________            for Creative  Non-Violence,  490  U.S.  at 738.    The  Act's            __________________________            provisions on works for hire operate prospectively and do not            govern this case.                                         -7-                                         -7-            (donated commissioned  work), the  evidence as a  whole amply            supports the trial judge's conclusion.  Nothing suggests that            the tapes were prepared  for the use and benefit  of Forward.            Rather, the purpose  was to  provide demo tapes  to entice  a            recording company.  Forward was a fan and friend who fostered            this effort,  not the  Archbishop of  Saltzburg commissioning            works by Mozart.                 Finally, Forward argues that he  is at least a  co-owner            of  the copyright as a "joint author" of the tape recordings.            The doctrine  of joint authorship, recognized  at common law,            is incorporated in  the current  Copyright Act of  1976.   17            U.S.C.    201(a).  In  appraising this claim,  our concern is            with Forward's  musical or artistic contribution  rather than            his encouragement to the Band or his logistical support.                   The district  court found that "Forward  made no musical            or  artistic  contribution"  to  the  tapes, explaining  that            Forward  did not  serve as  the engineer  at the  sessions or            direct the manner  in which  the songs were  played or  sung.            758 F. Supp. at 784.  The trial judge noted  that Forward did            request that  certain  songs be  played  but "the  band  then            played  those songs  in  precisely the  same  manner that  it            always played them."   Id.  The district court's  concise and                                   __            unqualified findings are fully supported by the evidence                 Forward  has only one legal prop  for his contrary claim            and it is a weak one.   In the House Report on the  Copyright                                         -8-                                         -8-            Act of 1976,  the committee  observed that  the copyright  in            sound  recordings "will usually,  though not  always, involve            `authorship' both  . . .  [by the  artist and by]  the record            producer  responsible for  setting up the  recording session,            capturing  and  electronically  processing  the  sounds,  and            compiling  and   editing  them   to  make  the   final  sound            recording."  H.  Rep. No.  94-1476, 94th Cong.,  2d Sess.  56            (1976).  It is apparent from this passage that the "producer"            envisaged by the committee is one who engages in artistically            supervising  and editing  the  production.   See generally  1                                                         _____________            Nimmer   2.10[A](2)(b), at  2-150 to 2-151.  That  is exactly            ______            what Forward did not do in this case.                   The Band has sought an award of attorney's fees expended            in this  court, arguing  that Forward's appeal  is frivolous.            We think that  the appeal comes  very close to  the line  but            does not quite step over it and therefore deny the motion.                 Affirmed.                   ________                                         -9-                                         -9-
