`
`No. 21-711
`In the Supreme Court of the United States
`
`
`MARKHAM CONCEPTS, INC., ET AL., PETITIONERS,
`
`
`v.
`
`
`HASBRO, INC., ET AL.
`
`
`
`
`ON PETITION FOR A WRIT OF CERTIORARI
`TO THE UNITED STATES COURT OF APPEALS
`FOR THE FIRST CIRCUIT
`
`
`BRIEF FOR RESPONDENT REUBEN KLAMER
`IN OPPOSITION
`
`
`
`PETER K. STRIS
` Counsel of Record
`DOUGLAS D. GEYSER
`JOHN STOKES
`STRIS & MAHER LLP
`777 S. Figueroa Street
`Suite 3850
`Los Angeles, CA 90017
`(213) 995-6800
`pstris@stris.com
`
`
`ERICA J. VAN LOON
`JOSHUA J. POLLACK
`NIXON PEABODY LLP
`300 S. Grand Avenue
`Suite 4100
`Los Angeles, CA 90071
`
`PATRICIA L. GLASER
`THOMAS P. BURKE JR.
`GLASER WEIL FINK HOWARD
` AVCHEN & SHAPIRO LLP
`10250 Constellation Blvd.
`19th Floor
`Los Angeles, CA 90067
`
`
`
`Counsel for Respondent Reuben Klamer
`
`
`
`
`
`
`
`
`QUESTION PRESENTED
`The Copyright Act of 1909 provided that “the word
`‘author’ shall include an employer in the case of works
`made for hire.” Pub. L. No. 60-349, § 62, 35 Stat. 1075,
`1088. It did not further define “employer” or “works made
`for hire.” That provision still governs works created be-
`fore 1978.
`This case addresses how to apply the provision where
`one party commissioned an independent contractor to
`create a work. Here the First Circuit held that a work for
`hire includes a commissioned work if the work was cre-
`ated at the commissioning party’s “instance and expense,”
`in which case the commissioning party is the “author.”
`That interpretation of the 1909 Act followed holdings of
`courts around the country, including every circuit to apply
`the 1909 Act over the last five decades.
`Petitioners contend that all those courts erred. They
`say that by using the word “employer” in 1909, Congress
`meant to cover only works created within the scope of an
`employer-employee relationship.
`The question presented is:
`Whether the First, Second, Fifth, Seventh, and Ninth
`Circuits have all erroneously held, consistently over the
`past 50-plus years, that the term “author” in the Copy-
`right Act of 1909 is not limited to a party whose employee
`created the work within the scope of his or her employ-
`ment.
`
`
`
`
`
`
`(I)
`
`
`
`II
`
`
`
`TABLE OF CONTENTS
`Question presented .............................................................. I
`
`Introduction .......................................................................... 1
`
`Statement .............................................................................. 5
`
`A. Statutory background ...................................... 5
`
`B. Facts and procedural history ........................ 10
`
`Reasons for denying the petition ...................................... 14
`
`I. Like every other circuit, the decision below
`held that the instance-and-expense test
`governs whether a commissioned work is
`a work for hire under the 1909 Act ..................... 14
`
`II. That settled interpretation of the 1909 Act
`is correct and does not conflict with Reid .......... 16
`
`III. The question presented is of limited and
`diminishing importance ........................................ 27
`
`IV. Significant reliance interests militate against
`disturbing settled law ........................................... 30
`
`Conclusion ........................................................................... 31
`
`
`
`
`
`
`
`
`III
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`Aldon Accessories Ltd. v. Spiegel, Inc.,
`738 F.2d 548 (2d Cir. 1984) .......................................... 15
`
`Altman v. New Haven Union Co.,
`254 F. 113 (D. Conn. 1918) ............................................. 7
`
`Brattleboro Publ’g Co. v. Winmill
`Publ’g Corp.,
`369 F.2d 565 (2d Cir. 1966) ...................................... 8, 21
`
`Brevet Press, Inc. v. Fenn,
`No. CIV. 06-4056-KES, 2007 WL
`9773251 (D.S.D. Sept. 17, 2007) .................................. 15
`
`Brumley v. Albert E. Brumley &
`Sons, Inc.,
`822 F.3d 926 (6th Cir. 2016) ........................................ 29
`
`Brumley v. Albert E. Brumley &
`Sons, Inc.,
`No. 3:08-CV-1193, 2010 WL 1439972
`(M.D. Tenn. Apr. 9, 2010) ............................................ 14
`
`Clingman v. Beaver,
`544 U.S. 581 (2005) ....................................................... 25
`
`Community for Creative Non-Violence v.
`Reid,
`490 U.S. 730 (1989) .............................................. passim
`
`
`
`
`
`
`IV
`
`Dastar Corp. v. Random House, Inc.,
`548 U.S. 919 (2006) ......................................................... 3
`
`Dielman v. White,
`102 F. 892 (D. Mass. 1900) ............................. 5, 8, 20, 21
`
`Estate of Hogarth v. Edgar Rice
`Burroughs, Inc.,
`No. 00-Civ.- 9569 (DLC), 2002 WL
`398696 (S.D.N.Y. Mar. 15, 2002) ................................. 22
`
`Estate of Hogarth v. Edgar Rice
`Burroughs, Inc.,
`342 F.3d 149 (2d Cir. 2003) ................................ 7, 10, 14
`
`Estate of Hogarth v. Edgar Rice
`Burroughs, Inc.,
`541 U.S. 937 (2004) ......................................................... 3
`
`Forward v. Thorogood,
`985 F.2d 604 (1st Cir. 1993) ......................... 8, 13, 14, 29
`
`Grant v. Kellogg Co.,
`58 F. Supp. 48 (S.D.N.Y. 1944) ............................... 8, 21
`
`The Indrani,
`101 F. 596 (4th Cir. 1900) ............................................. 18
`
`Larsen v. Home Tel. Co. of Detroit,
`129 N.W. 894 (Mich. 1911) ........................................... 19
`
`Lawrence v. Dana,
`15 F. Cas. 26 (D. Mass. 1869) .................................. 5, 20
`
`Lin-Brook Builders Hardware v. Gertler,
`352 F.2d 298 (9th Cir. 1965) .................................... 8, 21
`
`
`
`
`
`
`V
`
`Lumiere v. Robertson-Cole Distributing
`Corp.,
`280 F. 550 (2d Cir. 1922) .............................................. 21
`
`M.G.B. Homes, Inc. v. Ameron
`Homes, Inc.,
`903 F.2d 1486 (11th Cir. 1990) .......................... 2, 15, 16
`
`Martha Graham School & Dance Found.,
`Inc. v. Martha Graham Ctr. of
`Contemporary Dance, Inc.,
`380 F.3d 624 (2d Cir. 2004) ............................................ 6
`
`Martha Graham School & Dance Found.,
`Inc. v. Spitzer,
`544 U.S. 1060 (2005) ....................................................... 3
`
`Marvel Characters, Inc. v. Kirby,
`726 F.3d 119 (2d Cir. 2013) ...................................... 8, 29
`
`McHarge v. M.M. Newcomer & Co.,
`100 S.W. 700 (Tenn. 1907) ........................................... 19
`
`Middleton v. P. Sanford Ross, Inc.,
`213 F. 6 (5th Cir. 1914)................................................. 18
`
`Murray v. Gelderman,
`566 F.2d 1307 (5th Cir. 1978) ........................................ 8
`
`N.Y. Times Co. v. Tasini,
`533 U.S. 483 (2001) ...................................................... 22
`
`New Prime, Inc. v. Oliveira,
`139 S. Ct. 532 (2019) ............................................ passim
`
`Peregrine v. Lauren Corp.,
`601 F. Supp. 828 (D. Colo. 1985) ................................. 15
`
`
`
`
`
`
`VI
`
`Philadelphia Orchestra Ass’n v. Walt
`Disney Co.,
`821 F. Supp. 341 (E.D. Pa. 1993) ................................ 15
`
`Piche v. Warner Bros., Inc.,
`No. CV-06-963 FMC (Ex), 2006 WL
`8449116 (C.D. Cal. May 16, 2006) ............................... 29
`
`Picture Music, Inc. v. Bourne, Inc.,
`457 F.2d 1213 (2d Cir. 1972) .......................................... 8
`
`Picture Music, Inc. v. Bourne, Inc.,
`409 U.S. 997 (1972) ......................................................... 3
`
`Pierson v. Chicago, R.I. & P. Ry. Co.,
`170 F. 271 (8th Cir. 1909) ............................................. 18
`
`Robbins v. City of Chicago,
`71 U.S. 657 (1866) ......................................................... 18
`
`Schmidlin v. Alta Planning Mill Co.,
`150 P. 983 (Cal. 1915) ................................................... 19
`
`Shapiro, Bernstein & Co. v. Jerry Vogel
`Music Co.,
`115 F. Supp. 754 (S.D.N.Y. 1953) ................................. 6
`
`Sid Bernstein Presents, LLC v. Apple
`Corps Ltd.,
`No. 16-Civ.-7084(GBD), 2017 WL
`4640149 (S.D.N.Y. July 26, 2017) ................................ 29
`
`Siegel v. Time Warner Inc.,
`496 F. Supp. 2d 1111 (C.D. Cal. 2007) ........................ 29
`
`
`
`
`
`
`VII
`
`Sony Corp. of Am. v. Universal City
`Studios, Inc.,
`464 U.S. 417 (1984) ....................................................... 22
`
`St. Paul Water Co. v. Ware,
`83 U.S. 566 (1872) ......................................................... 18
`
`Stern v. Lavender,
`319 F. Supp. 3d 650 (S.D.N.Y. 2018) .......................... 29
`
`Tex. Dep’t of Housing & Community
`Affairs v. Inclusive Communities
`Project, Inc.,
`576 U.S. 519 (2015) ....................................................... 22
`
`TufAmerica, Inc. v. Codigo Music LLC,
`162 F. Supp. 3d 295 (S.D.N.Y. 2016) .......................... 29
`
`Twentieth Century Fox Film Corp. v.
`Entm’t Distrib.,
`429 F.3d 869 (9th Cir. 2005) .............................. 8, 10, 14
`
`United States v. Paramount Pictures,
`334 U.S. 131 (1948) ....................................................... 22
`
`Yardley v. Houghton Mifflin Co.,
`108 F.2d 28 (2d Cir. 1939) .......................................... 7, 8
`
`Statutes and Rules
`
`17 U.S.C. 101 ......................................................................... 9
`
`17 U.S.C. 101(1) .................................................................. 23
`
`17 U.S.C. 304 ....................................................................... 27
`
`17 U.S.C. 304(c) ................................................ 12, 13, 27, 28
`
`
`
`
`
`
`VIII
`
`17 U.S.C. 304(c)(1) .............................................................. 13
`
`17 U.S.C. 304(c)(2) .............................................................. 13
`
`17 U.S.C. 304(c)(3) .................................................... 4, 13, 27
`
`17 U.S.C. 304(c)(4) ................................................................ 4
`
`17 U.S.C. 304(c)(4)(A) ........................................................ 28
`
`17 U.S.C. 304(d) .................................................................. 28
`
`17 U.S.C. 601 ................................................................... 4, 27
`
`17 U.S.C. 601(b)(1) ............................................................. 27
`
`Copyright Amendments Act of 1992, Pub.
`L. No. 102-307, 106 Stat. 264 ....................................... 22
`
`Pub. L. No. 60-349, 35 Stat. 1075 (1909) ...................... 6, 16
`
`Pub. L. No. 111-295, 124 Stat. 3180 (2010) .................. 4, 27
`
`S. Ct. Rule 10 ...................................................................... 30
`
`S. Ct. Rule 35 ........................................................................ 1
`
`Sonny Bono Copyright Term Extension
`Act of 1998, Pub. L. No. 105-298, 112
`Stat. 2827 ....................................................................... 22
`
`Work Made for Hire and Copyright
`Corrections Act of 2000, Pub. L. No.
`106-379, 114 Stat. 1444 ................................................. 22
`
`
`
`
`
`
`IX
`
`Other Authorities
`
`Barbara A. Ringer, 86th Cong., Copyright
`Law Revision Study No. 31: Renewal
`Of Copyright (Comm. Print 1961)
`(1960) ............................................................. 7, 20, 21, 25
`
`Black’s Law Dictionary (2d ed. 1910) ............................. 20
`
`Borge Varmer, 86th Cong., Copyright Law
`Revision Study No. 13: Works Made
`for Hire and on Commission (Comm.
`Print 1960) (1958) ................................................ passim
`
`13 Cal. Jurisprudence: A Complete
`Statement of the Law and Practice of
`the State of California (William M.
`McKinney ed., 1923) ..................................................... 19
`
`Catherine L. Fisk, Authors at Work: The
`Origins of the Work-for-Hire Doctrine,
`15 Yale J.L. & Human. 1 (2003) .......................... 5, 6, 26
`
`General Discussion of the Nature of the
`Relationship of Employer and
`Independent Contractor, 19 A.L.R. 226
`(1922) ............................................................................. 19
`
`3 James A.H. Murray, A New English
`Dictionary of Historical Principles
`(1897) ............................................................................. 20
`
`Pet., No. 05-1259, Dastar Corp. v. Random
`House, Inc. (U.S. filed Mar. 28, 2006) ........................ 16
`
`Restatement (First) of Agency (1933) ............................. 19
`
`
`
`
`
`
`X
`
`Restatement (First) of Torts (1934) ................................. 19
`
`Richard R. Carlson, Why the Law Still
`Can’t Tell an Employee When It Sees
`One And How It Ought to Stop Trying,
`22 Berkeley J. Emp. & Lab. L. 295
`(2001) ............................................................................... 5
`
`1 Seymour D. Thompson, Commentaries
`on the Law of Negligence (1901) ................................. 19
`
`U.S. Copyright Office, Notices of
`Termination,
`https://www.copyright.gov/recordation/
`termination.html ........................................................... 28
`
`U.S. Copyright Office, Section 304(c),
`https://www.copyright.gov/comp3/docs/
`termination-table-section304c.pdf .............................. 28
`
`Webster’s New International Dictionary
`(1911) ............................................................................. 19
`
`
`
`
`
`
`
`
`In the Supreme Court of the United States
`
`
`
`No. 21-711
`
`MARKHAM CONCEPTS, INC., ET AL., PETITIONERS,
`
`v.
`
`
`HASBRO, INC., ET AL.
`
`
`ON PETITION FOR A WRIT OF CERTIORARI
`TO THE UNITED STATES COURT OF APPEALS
`FOR THE FIRST CIRCUIT
`
`
`BRIEF FOR RESPONDENT REUBEN KLAMER
`IN OPPOSITION1
`
`
`INTRODUCTION
`For over 50 years, courts have uniformly determined
`copyright authorship of commissioned works under the
`1909 Copyright Act using the instance-and-expense test.
`For over 50 years, those works have been bought and sold,
`licensed and assigned, with the understanding that the in-
`stance-and-expense test governed copyright rights in
`those works.
`
`
`1 Reuben Klamer was a defendant-appellee below but passed away
`after the First Circuit issued its opinion. The authorized representa-
`tives of Mr. Klamer’s estate have a pending motion under Supreme
`Court Rule 35.1 to substitute the Reuben B. Klamer Living Trust as
`a party.
`
`
`
`(1)
`
`
`
`2
`
`Petitioners want this Court to overturn decades of
`precedent and hold that authorship is actually determined
`only by examining whether the work was created by an
`employee within the scope of employment. In other
`words, petitioners want to wreak havoc on 50 years of set-
`tled expectations in business transactions.
`The Court should deny that request. Petitioners offer
`no persuasive reason to upset those reliance interests.
`They serve up a non-existent circuit split, an illusory con-
`flict with a 30-year-old decision of this Court, and exag-
`gerations about the ongoing relevance of a statute that
`hasn’t controlled a new work since 1977.
`As to the circuit split, there simply isn’t one. Petition-
`ers attempt to undermine the uniform, national rule with
`what they call an alternative holding by the Eleventh Cir-
`cuit that Community for Creative Non-Violence v. Reid,
`490 U.S. 730 (1989), overruled the instance-and-expense
`test under the 1909 Act. See Pet. 23-24 (discussing M.G.B.
`Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1490-
`1491 (11th Cir. 1990)). But M.G.B. Homes was a case un-
`der the 1976 Copyright Act, so any comments on the 1909
`Act were dicta. And petitioners omit the key part of this
`supposed holding, which makes clear the Eleventh Circuit
`wasn’t talking about the 1909 Act at all. See 903 F.2d at
`1490-1491 (stating that Reid “defined the ‘work for hire’
`doctrine under the 1976 Act”) (emphasis added). In the
`thirty years since M.G.B. Homes was decided, it does not
`appear that any court has ever adopted petitioners’
`unique view of its dicta. Put simply, there is already na-
`tionwide uniformity under the 1909 Act.
`Petitioners’ asserted conflict with Reid has also been
`rejected by multiple courts. For good reason. Reid inter-
`preted the 1976 Act, not the 1909 Act. Petitioners claim
`that “[t]he textual question” under the two acts is “mate-
`rially identical.” Pet. 19. This is a remarkable declaration.
`
`
`
`
`
`
`3
`
`The key word in the 1909 Act for petitioners’ argument—
`“employer”—does not even appear in the 1976 Act’s defi-
`nition. Reid expressly rested its decision on the 1976 Act’s
`usage of the terms “employee” and “scope of employ-
`ment,” as well as that act’s explicit distinction between
`commissioned works and employee-created works.
`Petitioners contend there is no difference between the
`meanings of “employer” in 1909 and “employee” and
`“scope of employment” in 1976, but this Court rejected an
`actually materially identical argument in New Prime, Inc.
`v. Oliveira, 139 S. Ct. 532 (2019): Even if “today[] the term
`‘contracts of employment’ might call to mind only agree-
`ments between employers and employees, . . . this modern
`intuition isn’t easily squared with evidence of the term’s
`meaning at the time of the [Federal Arbitration] Act’s
`adoption in 1925.” Id. at 539; see id. at 542.
`Petitioners ignore the textual difference between the
`1909 and 1976 Acts and the decades separating their en-
`actment. Those differences also eviscerate petitioners’
`view of Reid. Had Reid interpreted the 1909 Act, it would
`have examined the type of evidence New Prime did. Reid
`did not do so, however, for the simple reason that the 1909
`Act’s interpretation was not at issue. What Congress
`thought in 1909 would not answer what Congress thought
`in 1976.
`Three times this Court has been asked to use Reid to
`overrule the instance-and-expense test under the 1909
`Act, and three times this Court has declined. See Dastar
`Corp. v. Random House, Inc., 548 U.S. 919 (2006); Mar-
`tha Graham School & Dance Found., Inc. v. Spitzer, 544
`U.S. 1060 (2005); Estate of Hogarth v. Edgar Rice Bur-
`roughs, Inc., 541 U.S. 937 (2004); see also Picture Music,
`Inc. v. Bourne, Inc., 409 U.S. 997 (1972) (denying petition
`from Professor Nimmer). This should be the fourth.
`
`
`
`
`
`
`4
`
` Indeed, petitioners vastly overstate the importance
`of the question presented. This issue rarely arises, and its
`significance fades every year. Petitioners try to bolster its
`importance by worrying about “incentivizing artistic ex-
`pression” and the effects on “owners’ renewal rights, ter-
`mination rights, and right to import certain goods bearing
`the copyright.” Pet. 27-28. Each of those factors is over-
`blown.
`Nobody has created a work under the 1909 Act since
`1977; this case is simply irrelevant to artists’ incentives.
`Likewise, the statutory provision on importation expired
`in 1986 and has since been repealed. See 17 U.S.C. 601;
`Pub. L. No. 111-295, § 4(a), 124 Stat. 3180 (2010).
`Petitioners focus their pitch on termination rights, but
`here, too, they hope the Court does not look too closely at
`the statutory scheme. The termination window has al-
`ready closed for works created before 1963, and that win-
`dow shrinks with each passing year. See 17 U.S.C.
`304(c)(3)-(4). The last day to serve notice of termination is
`the end of 2036. Of those works that are still eligible for
`termination, most were created after the instance-and-ex-
`pense test took hold. To date, only a handful of cases have
`addressed work-for-hire disputes in the context of termi-
`nation rights. And the issue will become only less im-
`portant as time passes. It does not warrant space on the
`Court’s docket.
`That leaves petitioners with the extended renewal
`term for works under the 1909 Act. But that is just an-
`other way to say that the Court should send parties
`scrambling to reevaluate decades of transactions made
`with the understanding that authorship is governed by
`the instance-and-expense test. If any branch of govern-
`ment should impose those costs, it is Congress. The peti-
`tion should be denied.
`
`
`
`
`
`
`5
`
`STATEMENT
`A. Statutory Background
`1. In the 1800s, courts struggled to determine who
`owned the copyright of a work created by a worker for
`someone else. Catherine L. Fisk, Authors at Work: The
`Origins of the Work-for-Hire Doctrine, 15 Yale J.L. &
`Human. 1, 47 (2003) (“By the last two decades of the nine-
`teenth century, the law of employee copyrights was highly
`uncertain and the results of cases were quite unpredicta-
`ble.”). Generally, courts “examine[d] the ‘contract express
`or implied’ between the parties” regarding ownership.
`Ibid. Around 1900, the default rule tended to vest owner-
`ship in the employer. Id. at 55, 59-60. That included in
`some circumstances commissioned works by artists who
`today would be independent contractors. See id. at 59-61;
`Dielman v. White, 102 F. 892, 894 (D. Mass. 1900); Law-
`rence v. Dana, 15 F. Cas. 26, 50-51 (D. Mass. 1869).
`Whatever the outcome of the cases, these early deci-
`sions “never mentioned” any “distinction between em-
`ployees and independent contractors.” Fisk, supra, at 46.
`That is likely because back then this distinction mattered
`primarily in addressing tort liability. See Richard R. Carl-
`son, Why the Law Still Can’t Tell an Employee When It
`Sees One And How It Ought to Stop Trying, 22 Berkeley
`J. Emp. & Lab. L. 295, 301-307 (2001); cf. New Prime, 139
`S. Ct. at 539-540.
`It is therefore demonstrably incorrect that the em-
`ployer-default rule arose only for works created “by an
`employee within the course of employment.” Pet. 5.
`2. Congress enacted the Copyright Act of 1909 against
`that backdrop. To define “author,” the conferees tried out
`various formulations that reflected the caselaw’s uncer-
`tainty. Fisk, supra, at 63-67; Borge Varmer, 86th Cong.,
`Copyright Law Revision Study No. 13: Works Made for
`
`
`
`
`
`
`6
`
`Hire and on Commission 128 (Comm. Print 1960) (1958).
`Among the possibilities:
`•Identifying specific persons who could claim a copy-
`right, including a “publisher of a composite or collective
`work . . . which has been produced at his instance and ex-
`pense,” and the “employer” of a person “for valuable con-
`sideration to make a portrait,” Fisk, supra, at 64;
`•Making an exception for “the person at whose ex-
`pense such works were made,” id. at 65; and
`•Including “[a]n employer, in the case of a work pro-
`duced by an employee during the hours for which his sal-
`ary is paid, subject to any agreement to the contrary,” and
`“[a]ny person who employs a photographer to make a pho-
`tographic portrait,” Varmer, supra, at 128.
`Congress ultimately enacted broader, open-ended lan-
`guage: “the word ‘author’ shall include an employer in the
`case of works made for hire.” 35 Stat. at 1088. Because it
`did not elaborate on that definition, “the task of shaping
`these terms fell to the courts.” Reid, 490 U.S. at 744.
`The early cases that explicitly invoked the work-for-
`hire doctrine happened to involve salaried employees who
`created works within the scope of employment. Varmer,
`supra, at 130. One case “held that a work made by an em-
`ployee as an extra assignment for extra pay was not a
`work made for hire.” Ibid. (citing Shapiro, Bernstein &
`Co. v. Jerry Vogel Music Co., 115 F. Supp. 754 (S.D.N.Y.
`1953)). That case did not resolve whether the employer of
`an independent contractor could sometimes be an author.
`Cf. Martha Graham School & Dance Found., Inc. v. Mar-
`tha Graham Ctr. of Contemporary Dance, Inc., 380 F.3d
`624, 635 (2d Cir. 2004).
`Other early cases under the 1909 Act considered
`works commissioned from artists who were not employ-
`ees. These cases generally placed the “‘property’” or
`“‘right to copyright’” in the commissioning party. Varmer,
`
`
`
`
`
`
`7
`
`supra, at 130 (quoting Altman v. New Haven Union Co.,
`254 F. 113, 118 (D. Conn. 1918), and Yardley v. Houghton
`Mifflin Co., 108 F.2d 28, 31 (2d Cir. 1939)).2
`Two studies prepared during the 1976 copyright law
`revision appear to view these cases as applying “the em-
`ployer-for-hire rule in the case of commissioned works.”
`Varmer, supra, at 142; see Barbara A. Ringer, 86th Cong.,
`Copyright Law Revision Study No. 31: Renewal of Copy-
`right 142 (Comm. Print 1961) (1960) (“‘work made for hire’
`probably applies to some commissioned works”) (citing
`Varmer). In any event, by 1958 there was a “paucity of
`reported litigation over the ownership of commissioned
`works.” Varmer, supra, at 142.
`Between 1924 and 1940, several bills were proposed to
`revise the definition of “author.” Id. at 131-135; see, e.g.,
`id. at 134 (“‘Author’ includes an employer in the case of
`any work created by an employee within the scope of his
`employment, and such employer shall be the owner of the
`copyright in such work in the absence of agreement to the
`contrary; but this provision shall not apply to works cre-
`ated under special commission where there is no relation
`of employer and employee, unless the parties agree oth-
`erwise.”). Some proposals “might arguably have been in-
`tended to reverse the employer-for-hire rule in the case of
`commissioned works.” Id. at 142. None was enacted.
`3. In 1965, the Ninth Circuit became the first circuit to
`expressly state the “instance and expense” test: “[W]hen
`one person engages another, whether as employee or as
`
`
`2 Although the Second Circuit later interpreted Yardley as finding
`an implied assignment from the artist to the commissioning party, it
`also noted that Yardley was ambiguous on the point. See Estate of
`Hogarth v. Edgar Rice Burroughs, Inc., 342 F.3d 149, 158-159 (2d
`Cir. 2003).
`
`
`
`
`
`
`8
`
`an independent contractor, to produce a work of an artis-
`tic nature, that in the absence of an express contractual
`reservation of the copyright in the artist, the presumption
`arises that the mutual intent of the parties is that the title
`to the copyright shall be in the person at whose instance
`and expense the work is done.” Lin-Brook Builders
`Hardware v. Gertler, 352 F.2d 298, 300 (9th Cir. 1965) (cit-
`ing Yardley, 108 F.2d 28; Grant v. Kellogg Co., 58 F. Supp.
`48 (S.D.N.Y. 1944); Dielman, 102 F. 892).
`Other circuits soon followed suit. See Picture Music,
`Inc. v. Bourne, Inc., 457 F.2d 1213, 1216 (2d Cir. 1972),
`cert. denied, 409 U.S. 997 (1972); Brattleboro Publ’g Co. v.
`Winmill Publ’g Corp., 369 F.2d 565, 567-568 (2d Cir.
`1966); Murray v. Gelderman, 566 F.2d 1307, 1310 (5th
`Cir. 1978); Forward v. Thorogood, 985 F.2d 604, 606 (1st
`Cir. 1993).
`The “instance” prong asks “whether ‘the motivating
`factor in producing the work was the employer who in-
`duced the creation.’” Twentieth Century Fox Film Corp.
`v. Entm’t Distrib., 429 F.3d 869, 879 (9th Cir. 2005) (cita-
`tion omitted), abrogated on other grounds by Rimini St.,
`Inc. v. Oracle USA, Inc., 139 S. Ct. 873 (2019). The key is
`“the extent to which the hiring party provided the impetus
`for, participated in, or had the power to supervise the cre-
`ation of the work.” Marvel Characters, Inc. v. Kirby, 726
`F.3d 119, 139 (2d Cir. 2013). Merely incidental control
`does not suffice. Ibid.
`The “expense” prong examines “the parties’ relative
`investment of resources in the work and the related finan-
`cial risk.” Pet. App. 16a. The purpose of this “requirement
`is to ‘reward[] with ownership the party that bears the
`risk with respect to the work’s success.’” Ibid. (quoting
`Marvel, 726 F.3d at 140) (alteration in original).
`Petitioners have not cited any case controlled by the
`1909 Act that has rejected the instance-and-expense test.
`
`
`
`
`
`
`9
`
`4. In 1976, Congress “almost completely revised exist-
`ing copyright law,” including the provision on works for
`hire. Reid, 490 U.S. at 743. It deleted the definition of “au-
`thor” as broadly “includ[ing] an employer in the case of
`works made for hire.” It added instead a two-pronged def-
`inition of a “work made for hire”:
`A “work made for hire” is—
`(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, as a part of a mo-
`tion picture or other audiovisual work, as a translation,
`as a supplementary work, as a compilation, as an in-
`structional text, as a test, as answer material for a test,
`or as an atlas, if the parties expressly agree in a writ-
`ten instrument signed by them that the work shall be
`considered a work made for hire.
`17 U.S.C. 101. Whereas the 1909 Act used the word “em-
`ployer” alone, the 1976 Act uses the terms “employee”
`and “scope of employment.” And whereas the 1909 Act did
`not separately mention commissioned works, the 1976 Act
`distinguishes works created by an employee from works
`created on commission. Section 101’s formulation resulted
`from “a historic compromise” between the interested par-
`ties. Reid, 490 U.S. at 746.
`In Reid, this Court resolved a four-way split about
`how to interpret the first prong of the new work-for-hire
`definition. Seizing on the terms of art “employee” and
`“scope of employment” and the legislative history, the
`Court held that courts should use “principles of general
`common law of agency” to determine “whether the work
`was prepared by an employee or an independent contrac-
`tor.” 490 U.S. at 750-751. While the Court gave “a brief
`historical account” of early decisions under the 1909 Act,
`
`
`
`
`
`
`10
`
`it did not address the meaning of “author” or “employer”
`in that statute. Hogarth, 342 F.3d at 162.
`Courts have repeatedly rejected arguments that Reid
`overruled the instance-and-expense test under the 1909
`Act. See Pet. App. 14a-15a (citing Twentieth Century Fox,
`429 F.3d at 878; Hogarth, 342 F.3d at 162-163). Petitioners
`do not even purport to cite any decision that held other-
`wise in a case governed by the 1909 Act.
`It is thus undisputed that for decades parties have
`dealt with works created under the 1909 Act with the ex-
`pectation that the instance-and-expense test governs au-
`thorship.
`B. Facts And Procedural History
`1. In 1959, Milton Bradley Company’s president asked
`Reuben Klamer, a toy developer with extensive industry
`contacts, to develop a product idea to commemorate the
`company’s 1960 centennial. Pet. App. 2a-3a, 25a. Klamer
`agreed, and searched for inspiration in Milton Bradley’s
`archive. He found a copy of the “Checkered Game of Life,”
`created by Milton Bradley himself in 1860. Klamer devel-
`oped the concept to update the Checkered Game of Life
`to reflect contemporary American society and values. Id.
`at 3a, 26a.
`Klamer needed help refining his concept and “trans-
`lating it into a prototype he could actually sell to Milton
`Bradley.” Id. at 26a. He engaged one of his contacts, Bill
`Markham, who headed a firm named California Product
`Development (“CPD”). CPD employed two artists at the
`time, Grace Chambers and Leonard Israel, whose pres-
`ence at CPD convinced Klamer to hire Markham’s firm.
`Ibid.
`Chambers and Israel testified that labor was divided.
`Klamer and Markham contributed “the big ideas,” and
`
`
`
`
`
`
`11
`
`Klamer visited CPD “once or twice a week during devel-
`opment to give real-time edits to Chambers and Israel.”
`Id. at 27a-28a.
`Chambers and Israel both testified that they, not
`Markham or Klamer, built the prototype. Chambers
`constructed most of the prototype’s game board, while
`“[t]he art for the prototype’s box cover was Israel’s
`handiwork.” Id. at 28a-29a. “As with the board, Markham
`had ‘nothing to do’ with the physical creation of the box
`cover.” Id. at 29a. He was often handling other matters
`while “the prototype was taking physical form.” Ibid. The
`prototype’s rules “were a collective, iterative effort.” Ibid.
`Chambers and Israel considered Klamer “the final arbiter
`of the prototype’s look and feel.” Id. at 39a.
`In August 1959, Klamer presented the prototype to
`Milton Bradley executives. Id. at 29a. Also present was
`radio and television personality Art Linkletter, who had
`co-founded with Klamer a company called Link Research
`Corporation (“Link”) to develop consumer products and
`market them using Linkletter’s fame. Part of Klamer’s
`pitch was that Linkletter could help market the game. The
`pitch worked, and Klamer mailed the prototype to Milton
`Bradley. Id. at 4a, 29a-30a.
`Two agreements regarding rights to the game fol-
`lowed. The first was a license agreement between Link
`and Milton Bradley. It gave Milton Bradley the exclusive
`right to make and sell the game, which Link had
`“designed and constructed.” Id. at 30a. It also allowed
`Milton Bradley to use Linkletter’s name and image in pro-
`motions. In exchange, Link received a 6% royalty on game
`sales and a non-refundable $5,000 advance. “Absent
`termination or breach, the agreement was to last as long
`as Milton Bradley marketed the [g]ame.” Ibid.
`The second was an assignment agreement between
`Lin
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