[1228] [1229] Philip H. Stillman and Stephen S. Lux, Flynn, Sheridan, Tabb & Stillman, Del Mar, California, for the plaintiff-appellant.

Bruce Isaacs, Karen Brodkin & Jason A. Forge, Wyman, Isaacs, Blumenthal, & Lynne, Los Angeles, California, for the defendants-appellees.

Bruce P. Vann, Kelly, Lytton, Mintz & Vann, Los Angeles, California, for the defendants-appellees.

Before: CANBY, NOONAN, and KLEINFELD, Circuit Judges.

KLEINFELD, Circuit Judge:

This is a copyright case involving a claim of coauthorship of the movie Malcolm X. We reject the "joint work" claim but remand for further proceedings on a quantum meruit claim.

I. FACTS

In 1991, Warner Brothers contracted with Spike Lee and his production companies to make the movie Malcolm X, to be based on the book, The Autobiography of Malcolm X. Lee co-wrote the screenplay, directed, and co-produced the movie, which starred Denzel Washington as Malcolm X. Washington asked Jefri Aalmuhammed to assist him in his preparation for the starring role because Aalmuhammed knew a great deal about Malcolm X and Islam. Aalmuhammed, a devout Muslim, was particularly knowledgeable about the life of Malcolm X, having previously written, directed, and produced a documentary film about Malcolm X.

Aalmuhammed joined Washington on the movie set. The movie was filmed in the New York metropolitan area and Egypt. Aalmuhammed presented evidence that his involvement in making the movie was very extensive. He reviewed the shooting script for Spike Lee and Denzel [1230] Washington and suggested extensive script revisions. Some of his script revisions were included in the released version of the film; others were filmed but not included in the released version. Most of the revisions Aalmuhammed made were to ensure the religious and historical accuracy and authenticity of scenes depicting Malcolm X's religious conversion and pilgrimage to Mecca.

Aalmuhammed submitted evidence that he directed Denzel Washington and other actors while on the set, created at least two entire scenes with new characters, translated Arabic into English for subtitles, supplied his own voice for voice-overs, selected the proper prayers and religious practices for the characters, and edited parts of the movie during post production. Washington testified in his deposition that Aalmuhammed's contribution to the movie was "great" because he "helped to rewrite, to make more authentic." Once production ended, Aalmuhammed met with numerous Islamic organizations to persuade them that the movie was an accurate depiction of Malcolm X's life.

Aalmuhammed never had a written contract with Warner Brothers, Lee, or Lee's production companies, but he expected Lee to compensate him for his work. He did not intend to work and bear his expenses in New York and Egypt gratuitously. Aalmuhammed ultimately received a check for $25,000 from Lee, which he cashed, and a check for $100,000 from Washington, which he did not cash.

During the summer before Malcolm X's November 1992 release, Aalmuhammed asked for a writing credit as a co-writer of the film, but was turned down. When the film was released, it credited Aalmuhammed only as an "Islamic Technical Consultant," far down the list. In November 1995, Aalmuhammed applied for a copyright with the U.S. Copyright Office, claiming he was a co-creator, co-writer, and co-director of the movie. The Copyright Office issued him a "Certificate of Registration," but advised him in a letter that his "claims conflict with previous registrations" of the film.

On November 17, 1995, Aalmuhammed filed a complaint against Spike Lee, his production companies, and Warner Brothers, (collectively "Lee"), as well as Largo International, N.V., and Largo Entertainment, Inc. (collectively "Largo"), and Victor Company of Japan and JVC Entertainment, Inc. (collectively "Victor"). The suit sought declaratory relief and an accounting under the Copyright Act. In addition, the complaint alleged breach of implied contract, quantum meruit, and unjust enrichment, and federal (Lanham Act) and state unfair competition claims. The district court dismissed some of the claims under Rule 12(b)(6) and the rest on summary judgment.

II. ANALYSIS

A. Copyright claim

Aalmuhammed claimed that the movie Malcolm X was a "joint work" of which he was an author, thus making him a co-owner of the copyright.^[2] He sought a declaratory judgment to that effect, and an accounting for profits. He is not claiming copyright merely in what he wrote or contributed, but rather in the whole work, as a co-author of a "joint work."^[3] The district court granted defendants summary judgment against Mr. Aalmuhammed's copyright claims. We review de novo.^[4]

Defendants argue that Aalmuhammed's claim that he is one of the authors of a joint work is barred by the applicable statute of limitations. A claim of authorship of a joint work must be brought within three years of when it accrues.^[5] Because creation rather than infringement [1231] is the gravamen of an authorship claim, the claim accrues on account of creation, not subsequent infringement, and is barred three years from "plain and express repudiation" of authorship.^[6]

The movie credits plainly and expressly repudiated authorship, by listing Aalmuhammed far below the more prominent names, as an "Islamic technical consultant." That repudiation, though, was less than three years before the lawsuit was filed. The record leaves open a genuine issue of fact as to whether authorship was repudiated before that. Aalmuhammed testified in his deposition that he discussed with an executive producer at Warner Brothers his claim to credit as one of the screenwriters more than three years before he filed suit. Defendants argue that this discussion was an express repudiation that bars the claim. It was not. Aalmuhammed testified that the producer told him "there is nothing I can do for you," but "[h]e said we would discuss it further at some point." A trier of fact could construe that communication as leaving the question of authorship open for further discussion. That leaves a genuine issue of fact as to whether the claim is barred by limitations, so we must determine whether there is a genuine issue of fact as to whether Aalmuhammed was an author of a "joint work."

Aalmuhammed argues that he established a genuine issue of fact as to whether he was an author of a "joint work," Malcolm X. The Copyright Act does not define "author," but it does define "joint work":

A "joint work" is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.^[7]

"When interpreting a statute, we look first to the language."^[8] The statutory language establishes that for a work to be a "joint work" there must be (1) a copyrightable work, (2) two or more "authors," and (3) the authors must intend their contributions be merged into inseparable or interdependent parts of a unitary whole. A "joint work" in this circuit "requires each author to make an independently copyrightable contribution" to the disputed work.^[9]Malcolm X is a copyrightable work, and it is undisputed that the movie was intended by everyone involved with it to be a unitary whole. It is also undisputed that Aalmuhammed made substantial and valuable contributions to the movie, including technical help, such as speaking Arabic to the persons in charge of the mosque in Egypt, scholarly and creative help, such as teaching the actors how to pray properly as Muslims, and script changes to add verisimilitude to the religious aspects of the movie. Speaking Arabic to persons in charge of the mosque, however, does not result in a copyrightable contribution to the motion picture. Coaching of actors, to be copyrightable, must be turned into an expression in a form subject to copyright.^[10] The same may be said for many of Aalmuhammed's other activities. Aalmuhammed has, however, submitted evidence that he rewrote several specific passages of dialogue that appeared in Malcolm X, and that he wrote scenes relating to Malcolm X's Hajj pilgrimage that were enacted in the movie. If Aalmuhammed's evidence is accepted, as it must be on summary judgment, these items would have been independently copyrightable. [1232] Aalmuhammed, therefore, has presented a genuine issue of fact as to whether he made a copyrightable contribution. All persons involved intended that Aalmuhammed's contributions would be merged into interdependent parts of the movie as a unitary whole. Aalmuhammed maintains that he has shown a genuine issue of fact for each element of a "joint work."

But there is another element to a "joint work." A "joint work" includes "two or more authors."^[11] Aalmuhammed established that he contributed substantially to the film, but not that he was one of its "authors." We hold that authorship is required under the statutory definition of a joint work, and that authorship is not the same thing as making a valuable and copyrightable contribution. We recognize that a contributor of an expression may be deemed to be the "author" of that expression for purposes of determining whether it is independently copyrightable. The issue we deal with is a different and larger one: is the contributor an author of the joint work within the meaning of 17 U.S.C. § 101.

By statutory definition, a "joint work" requires "two or more authors."^[12] The word "author" is taken from the traditional activity of one person sitting at a desk with a pen and writing something for publication. It is relatively easy to apply the word "author" to a novel. It is also easy to apply the word to two people who work together in a fairly traditional pen-and-ink way, like, perhaps, Gilbert and Sullivan. In the song, "I Am the Very Model of a Modern Major General," Gilbert's words and Sullivan's tune are inseparable, and anyone who has heard the song knows that it owes its existence to both men, Sir William Gilbert and Sir Arthur Sullivan, as its creative originator. But as the number of contributors grows and the work itself becomes less the product of one or two individuals who create it without much help, the word is harder to apply.

Who, in the absence of contract, can be considered an author of a movie? The word is traditionally used to mean the originator or the person who causes something to come into being, or even the first cause, as when Chaucer refers to the "Author of Nature." For a movie, that might be the producer who raises the money. Eisenstein thought the author of a movie was the editor. The "auteur" theory suggests that it might be the director, at least if the director is able to impose his artistic judgments on the film. Traditionally, by analogy to books, the author was regarded as the person who writes the screenplay, but often a movie reflects the work of many screenwriters. Grenier suggests that the person with creative control tends to be the person in whose name the money is raised, perhaps a star, perhaps the director, perhaps the producer, with control gravitating to the star as the financial investment in scenes already shot grows.^[13] Where the visual aspect of the movie is especially important, the chief cinematographer might be regarded as the author. And for, say, a Disney animated movie like "The Jungle Book," it might perhaps be the animators and the composers of the music.

The Supreme Court dealt with the problem of defining "author" in new media in Burrow-Giles Lithographic Co. v. Sarony.^[14] The question there was, who is the author of a photograph: the person who sets it up and snaps the shutter, or the person who makes the lithograph from it. Oscar Wilde, the person whose picture was at issue, doubtless offered some creative advice as well. The Court decided that the photographer was the author, quoting various English authorities: "the person who has superintended the arrangement, who has actually formed the picture by [1233] putting the persons in position, and arranging the place where the people are to be—the man who is the effective cause of that"; "`author' involves originating, making, producing, as the inventive or master mind, the thing which is to be protected"; "the man who really represents, creates, or gives effect to the idea, fancy, or imagination."<sup>[15]</sup> The Court said that an "author," in the sense that the Founding Fathers used the term in the Constitution,<sup>[16]</sup> was "`he to whom anything owes its origin; originator; maker; one who completes a work of science or literature.'"^[17]

Answering a different question, what is a copyrightable "work," as opposed to who is the "author," the Supreme Court held in Feist Publications that "some minimal level of creativity" or "originality" suffices.^[18] But that measure of a "work" would be too broad and indeterminate to be useful if applied to determine who are "authors" of a movie. So many people might qualify as an "author" if the question were limited to whether they made a substantial creative contribution that that test would not distinguish one from another. Everyone from the producer and director to casting director, costumer, hairstylist, and "best boy" gets listed in the movie credits because all of their creative contributions really do matter. It is striking in Malcolm X how much the person who controlled the hue of the lighting contributed, yet no one would use the word "author" to denote that individual's relationship to the movie. A creative contribution does not suffice to establish authorship of the movie.

Burrow-Giles, in defining "author," requires more than a minimal creative or original contribution to the work.^[19]Burrow-Giles is still good law, and was recently reaffirmed in Feist Publications.^[20]Burrow-Giles and Feist Publications answer two distinct questions; who is an author, and what is a copyrightable work.^[21]Burrow-Giles defines author as the person to whom the work owes its origin and who superintended the whole work, the "master mind."^[22] In a movie this definition, in the absence of a contract to the contrary, would generally limit authorship to someone at the top of the screen credits, sometimes the producer, sometimes the director, possibly the star, or the screenwriter—someone who has artistic control. After all, in Burrow-Giles the lithographer made a substantial copyrightable creative contribution, and so did the person who posed, Oscar Wilde, but the Court held that the photographer was the author.^[23]

The Second and Seventh Circuits have likewise concluded that contribution of independently copyrightable material to a work intended to be an inseparable whole will not suffice to establish authorship of a joint work.^[24] Although the Second and Seventh Circuits do not base their decisions on the word "authors" in the statute, [1234] the practical results they reach are consistent with ours. These circuits have held that a person claiming to be an author of a joint work must prove that both parties intended each other to be joint authors.^[25] In determining whether the parties have the intent to be joint authors, the Second Circuit looks at who has decision making authority, how the parties bill themselves, and other evidence.^[26]

In Thomson v. Larson, an off-Broadway playwright had created a modern version of La Boheme, and had been adamant throughout its creation on being the sole author.^[27] He hired a drama professor for "dramaturgical assistance and research," agreeing to credit her as "dramaturg" but not author, but saying nothing about "joint work" or copyright.^[28] The playwright tragically died immediately after the final dress rehearsal, just before his play became the tremendous Broadway hit, Rent.^[29] The dramaturg then sued his estate for a declaratory judgment that she was an author of Rent as a "joint work," and for an accounting.^[30] The Second Circuit noted that the dramaturg had no decision making authority, had neither sought nor was billed as a co-author, and that the defendant entered into contracts as the sole author.^[31] On this reasoning, the Second Circuit held that there was no intent to be joint authors by the putative parties and therefore it was not a joint work.^[32]

Considering Burrow-Giles, the recent cases on joint works^[33] (especially the thoughtful opinion in Thomson v. Larson^[34] ), and the Gilbert and Sullivan example, several factors suggest themselves as among the criteria for joint authorship, in the absence of contract. First, an author "superintend[s]"^[35] the work by exercising control.^[36] This will likely be a person "who has actually formed the picture by putting the persons in position, and arranging the place where the people are to be-the man who is the effective cause of that,"^[37] or "the inventive or master mind" who "creates, or gives effect to the idea."^[38] Second, putative coauthors make objective manifestations of a shared intent to be coauthors, as by denoting the authorship of The Pirates of Penzance as "Gilbert and Sullivan."^[39] We say objective manifestations because, were the mutual intent to be determined by subjective intent, it could become an instrument of fraud, were one coauthor to hide from the other an intention to take sole credit for the work. Third, the audience appeal of the work turns on both contributions and "the share of each in its success cannot be appraised."^[40] Control in many cases will be the most important factor. [1235] The best objective manifestation of a shared intent, of course, is a contract saying that the parties intend to be or not to be co-authors. In the absence of a contract, the inquiry must of necessity focus on the facts. The factors articulated in this decision and the Second and Seventh Circuit decisions cannot be reduced to a rigid formula, because the creative relationships to which they apply vary too much. Different people do creative work together in different ways, and even among the same people working together the relationship may change over time as the work proceeds.

Aalmuhammed did not at any time have superintendence of the work.^[41] Warner Brothers and Spike Lee controlled it. Aalmuhammed was not the person "who has actually formed the picture by putting the persons in position, and arranging the place ...."^[42] Spike Lee was, so far as we can tell from the record. Aalmuhammed, like Larson's dramaturg, could make extremely helpful recommendations, but Spike Lee was not bound to accept any of them, and the work would not benefit in the slightest unless Spike Lee chose to accept them. Aalmuhammed lacked control over the work, and absence of control is strong evidence of the absence of co-authorship.

Also, neither Aalmuhammed, nor Spike Lee, nor Warner Brothers, made any objective manifestations of an intent to be coauthors. Warner Brothers required Spike Lee to sign a "work for hire" agreement, so that even Lee would not be a co-author and co-owner with Warner Brothers. It would be illogical to conclude that Warner Brothers, while not wanting to permit Lee to own the copyright, intended to share ownership with individuals like Aalmuhammed who worked under Lee's control, especially ones who at the time had made known no claim to the role of co-author. No one, including Aalmuhammed, made any indication to anyone prior to litigation that Aalmuhammed was intended to be a co-author and co-owner.

Aalmuhammed offered no evidence that he was the "inventive or master mind" of the movie. He was the author of another less widely known documentary about Malcolm X, but was not the master of this one. What Aalmuhammed's evidence showed, and all it showed, was that, subject to Spike Lee's authority to accept them, he made very valuable contributions to the movie. That is not enough for co-authorship of a joint work.

The Constitution establishes the social policy that our construction of the statutory term "authors" carries out. The Founding Fathers gave Congress the power to give authors copyrights in order "[t]o promote the progress of Science and useful arts."^[43] Progress would be retarded rather than promoted, if an author could not consult with others and adopt their useful suggestions without sacrificing sole ownership of the work. Too open a definition of author would compel authors to insulate themselves and maintain ignorance of the contributions others might make. Spike Lee could not consult a scholarly Muslim to make a movie about a religious conversion to Islam, and the arts would be the poorer for that.

The broader construction that Aalmuhammed proposes would extend joint authorship to many "overreaching contributors,"^[44] like the dramaturg in Thomson, and deny sole authors "exclusive authorship status simply because another person render[ed] some form of assistance."^[45] Claimjumping by research assistants, editors, and former spouses, lovers and friends would endanger authors who talked with people about what they were [1236] doing, if creative copyrightable contribution were all that authorship required.

Aalmuhammed also argues that issuance of a copyright registration certificate to him establishes a prima facie case for ownership. A prima facie case could not in any event prevent summary judgment in the presence of all the evidence rebutting his claim of ownership. "The presumptive validity of the certificate may be rebutted and defeated on summary judgment."^[46] The Copyright Office stated in its response to Aalmuhammed's application for copyright (during the pendency of this litigation) that his claims "conflict with previous registration claims," and therefore the Copyright Office had "several questions" for him. One of the questions dealt with the "intent" of "other authors," i.e., Warner Brothers. The evidence discussed above establishes without genuine issue that the answers to these questions were that Warner Brothers did not intend to share ownership with Aalmuhammed.

Because the record before the district court established no genuine issue of fact as to Aalmuhammed's co-authorship of Malcolm X as a joint work, the district court correctly granted summary judgment dismissing his claims for declaratory judgment and an accounting resting on co-authorship.

B. Quantum meruit

Aalmuhammed alleged in his complaint that defendants accepted his services, knowing that they were not being provided gratuitously, yet paid him neither the fair value of his services nor even his full expenses. He wrote script material, particularly for the important Islamic religious scenes, arranged with the Egyptians in charge of the mosque for the movie to be shot inside (Aalmuhammed is a Muslim and was the only Arabic-speaking person in the production crew), taught the actors how to pray as Muslims and directed the prayer scenes, and talked to Islamic authorities after the movie was made to assure their support when it was exhibited. These services were very important. The movie would be a dark tale of hate, but for the redemptive, uplifting Islamic religious scenes.

All the services were performed in New York and in Egypt (where the Hajj scenes were shot). Aalmuhammed's fifth, sixth and seventh claims articulated this claim variously as quasicontract, quantum meruit, and unjust enrichment. These claims are different from Aalmuhammed's claim to authorship of a joint work. Even though he was not an author, it is undisputed that he made a substantial contribution to the film. It may be that the producer or director, seeing that Aalmuhammed was performing valuable and substantial services and expending substantial amounts for travel and lodging, in the apparent expectation of reimbursement, had a duty to sign him up as an employee or independent contractor, obtain his acknowledgment that he was working gratuitously or perhaps for Denzel Washington, or eject him from the set.^[47] We need not decide that, because the question on review is limited to which state's statute of limitations applies.

The defendants moved to dismiss these claims for failure to state a claim under Rule 12(b)(6), on the ground that the claims were barred by California's two year statute of limitations. Aalmuhammed argued that New York's six year statute of limitations applied. The district court granted the motion to dismiss, applying California's shorter statute.

The parties agree that the district court correctly used law of the forum, California, [1237] as the source of its rule for choice of law. The applicable rule required, in this case, that "the court must apply the law of the state whose interest would be more impaired if its law were not applied."^[48]

Defendants argue that only California had an interest in the application of its statute of limitations, not New York. Their theory is that the defendant corporations have their principal places of business in California, Aalmuhammed resided in neither state (he lives in Florida, though he spent the months of shooting time in New York and Egypt), and Aalmuhammed filed his lawsuit in California.

The defense argument is unpersuasive. The question is which state's interest would suffer more by the application of the other's law.^[49] The strength of the interest is also a factor, however.^[50] California's interest in protecting its residents from stale claims arising from work done outside the state is a weak one: "[t]he residence of the parties is not the determining factor in a choice of law analysis."^[51] New York's interest in governing the remedies available to parties working in new York is far more significant.^[52] New York's connection with Aalmuhammed's claim is considerably more substantial, immediate and concrete than California's. We conclude that New York would suffer more damage to its interest if California law were applied than would California if New York law were applied.

Because New York has the stronger interest and would suffer more damage than California if its law were not applied, New York's six year statute of limitations governs. The claims were brought within six years of when they accrued. We therefore vacate the dismissal of Aalmuhammed's implied contract, quantum meruit, and unjust enrichment claims and remand them for further proceedings.

C. Unfair competition

Aalmuhammed claimed that defendants passed off his scriptwriting, directing and other work as that of other persons, in violation of the Lanham Act^[53] and the California statute prohibiting unfair competition.^[54] The dismissal was under Rule 12(b)(6), for failure to state a claim upon which relief can be granted, so we review de novo,^[55] on the basis of allegations in the complaint.^[56]

We have held that, at least in some circumstances, failure to give appropriate credit for a film is "reverse palming off" actionable under the Lanham Act.^[57] And we have held that "actions pursuant to California Business and Professions Code § 17200 are substantially congruent to claims made under the Lanham Act."^[58] Defendants argue that not enough of Aalmuhammed's proposed script was used verbatim to amount to a violation. But this argument goes to the evidence, not the complaint, so it cannot sustain the 12(b)(6) dismissal. The complaint alleged that Aalmuhammed "substantially rewrote and expanded the dialogue for various entire [1238] scenes" and otherwise alleged extensive and substantial use of his work in the final movie. We need not determine whether Aalmuhammed established a genuine issue of fact regarding unfair competition, because the claim never got as far as summary judgment in the district court. We reverse the dismissal of these two claims.

D. Conduct abroad

The district court dismissed Aalmuhammed's claims against the Largo defendants under Rule 12(b)(6) for failure to state a claim. The dismissal was based on our decision in Subafilms, that acts of copyright infringement that occur wholly outside of the United States are not actionable under the U.S. Copyright Act.^[59]

The complaint does not say whether the Largo defendants' conduct occurred outside the United States. Defendants argue that it does, by referring to them as "the film's foreign distributors." But it also says that their principal place of business is in California. These allegations leave room for proof that the conduct that the Largo defendants engaged in took place within California, even though it had consequences abroad. We cannot tell from the complaint whether foreign distributors do their work in foreign countries, or do it by fax, phone, and email from California. We therefore reverse the dismissal based on extraterritoriality of the claims against the Largo defendants.

AFFIRMED in part, REVERSED and REMANDED in part. Each party to bear its own costs.

[1] The panel unanimously finds this case suitable for decision without oral argument. See Fed. R.App. P. 34(a)(2). This dispute was originally submitted and argued on May 5, 1998 as 97-55403. However, on October 29, 1998, that appeal was dismissed for want of jurisdiction. The District Court had entered a judgment that stated "The Court may amend or amplify this order with a more specific statement of the grounds for its decision." National Distrib. Agency v. Nationwide Mutual Ins. Co., 117 F.3d 432 (9th Cir.1997), held that the identical language prevented review because "the court left open the possibility that the court might change its ruling," so no final judgment was entered. On December 10, 1998, the District Court amended its order by removing that one sentence, thus making its order final. The parties then appealed the District Court's decision again. On April 19, 1999, this court granted appellant's motion to submit the case without oral argument, to take judicial notice of the briefs and excerpts filed in 97-55403, and to allow filing of letter briefs supplementing the earlier briefs.

[2] 17 U.S.C. §§ 101, 201(a).

[3] Cf. Thomson v. Larson, 147 F.3d 195, 206 (2nd Cir.1998).

[4] See Covey v. Hollydale Mobilehome Estates, 116 F.3d 830, 834 (9th Cir.1997), amended by, 125 F.3d 1281 (1997).

[5] See 17 U.S.C. § 507(b); Zuill v. Shanahan, 80 F.3d 1366, 1371 (9th Cir.1996), cert. denied, 519 U.S. 1090, 117 S.Ct. 763, 136 L.Ed.2d 710 (1997).

[6] Zuill, 80 F.3d at 1371.

[7] 17 U.S.C. § 101.

[8] Richardson v. United States, 526 U.S. 813, 119 S.Ct. 1707, 1710, 143 L.Ed.2d 985 (1999).

[9] Ashton-Tate Corp. v. Ross, 916 F.2d 516, 521 (9th Cir.1990).

[10] See Ashton-Tate Corp. v. Ross, 916 F.2d 516, 521 (9th Cir.1990).

[11] 17 U.S.C. § 101.

[12] 17 U.S.C. § 101.

[13] See Richard Grenier, Capturing the Culture, 206-07 (1991).

[14] Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 61, 4 S.Ct. 279, 28 L.Ed. 349 (1884).

[15] Id. at 61, 4 S.Ct. 279 (quoting Nottage v. Jackson, 11 Q.B.D. 627 (1883)).

[16] U.S. Const. Art. 1, § 8, cl. 8.

[17] Burrow-Giles, 111 U.S. at 58, 4 S.Ct. 279 (quoting Worcester).

[18] Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 345, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991).

[19] Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58, 4 S.Ct. 279, 28 L.Ed. 349 (1883).

[20] Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 346, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991).

[21] See Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 4 S.Ct. 279, 28 L.Ed. 349 (1884); Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991).

[22] Burrow-Giles, 111 U.S. at 61, 4 S.Ct. 279 (quoting Nottage v. Jackson, 11 Q.B.D. 627 (1883)).

[23] Id. at 61, 4 S.Ct. 279.

[24] Thomson v. Larson, 147 F.3d 195, (2nd Cir. 1998); Erickson v. Trinity Theatre, Inc., 13 F.3d 1061 (7th Cir.1994); Childress v. Taylor, 945 F.2d 500 (2d Cir.1991).

[25] Thomson, 147 F.3d at 202-05.

[26] Id.

[27] Id. at 197.

[28] Id.

[29] Id. at 198.

[30] Id.

[31] Id. at 202-04.

[32] Id. at 202-24.

[33] See Thomson v. Larson, 147 F.3d 195, (2nd Cir.1998); Erickson v. Trinity Theatre, Inc., 13 F.3d 1061 (7th Cir.1994); Childress v. Taylor, 945 F.2d 500 (2nd Cir.1991).

[34] Thomson v. Larson, 147 F.3d 195 (2nd Cir.1998).

[35] Burrow-Giles v. Sarony, 111 U.S. at 61, 4 S.Ct. 279 (quoting Nottage v. Jackson, 11 Q.B. div. 627 (1883)).

[36] Thomson, 147 F.3d at 202.

[37] Burrow-Giles v. Sarony, 111 U.S. at 61, 4 S.Ct. 279 (quoting Nottage v. Jackson, 11 Q.B. Div. 627 (1883)).

[38] Id.

[39] Cf. Thomson v. Larson, 147 F.3d 195, 202 (2nd Cir.1998).

[40] Edward B. Marks Music Corp. v. Jerry Vogel Music Co., Inc., 140 F.2d 266, 267 (2nd Cir. 1944) (Hand, J.) modified by, 140 F.2d 268 (1944).

[41] See Burrow-Giles v. Sarony, 111 U.S. 53, 61, 4 S.Ct. 279, 28 L.Ed. 349 (1883).

[42] Id.

[43] U.S. Const. Art. 1, § 8, cl. 8.

[44] Thomson, 147 F.3d at 200 (internal quotations omitted).

[45] Id. at 202 (citing Childress v. Taylor, 945 F.2d 500, 504 (1991)).

[46] S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1086 (9th Cir.1989).

[47] See 2 George E. Palmer, Law of Restitution § 10.11, at 463 (1978) ("When the plaintiff voluntarily submits an idea to the defendant which the defendant uses to his economic advantage, without any express agreement to pay the plaintiff for such use, ... the plaintiff will be able [in some circumstances] to recover the reasonable value of the use of the idea in a contract action.").

[48] Waggoner v. Snow, Becker, Kroll, Klaris & Krauss, 991 F.2d 1501, 1507 (9th Cir.1993) (citing Ledesma v. Jack Stewart Produce, Inc., 816 F.2d 482, 484 (9th Cir.1987)).

[49] Waggoner v. Snow, Becker, Kroll, Klaris & Krauss, 991 F.2d 1501, 1507 (9th Cir.1993) (citing Ledesma v. Jack Stewart Produce, Inc., 816 F.2d 482, 484 (9th Cir.1987)).

[50] Id.

[51] Id.

[52] See Rosenthal v. Fonda, 862 F.2d 1398, 1403 (9th Cir.1988).

[53] 15 U.S.C. §§ 1117, 1125.

[54] Cal. Bus. & Prof.Code § 17203.

[55] See Cohen v. Stratosphere Corp., 115 F.3d 695, 700 (9th Cir.1997).

[56] See Campanelli v. Bockrath, 100 F.3d 1476, 1479 (9th Cir.1996).

[57] Smith v. Montoro, 648 F.2d 602, 607 (9th Cir.1981); See also Lamothe v. Atlantic Recording Corp., 847 F.2d 1403, 1406-07 (9th Cir.1988).

[58] Cleary v. News Corp., 30 F.3d 1255, 1262-63 (9th Cir.1994).

[59] See Subafilms, Ltd. v. MGM-Pathe Communications, 24 F.3d 1088, 1095-96 (9th Cir. 1994) (en banc).

97 Civ. 9248 (HB)

ALEXANDER LINDSAY, Plaintiff
-against-
The Wrecked and Abandoned Vessel R.M.S. TITANIC, HER ENGINES, TACKLE, EQUIPMENT, FURNISHINGS, Located Within One Nautical Mile of a Point Located at 41°, 43'32" North Latitude and 49°, 56'49" West, and ARTIFACTS, and VIDEO Located at 17 Battery Place, New York, NY, in rem, and R.M.S. TITANIC, INC.,TITANIC VENTURES LIMITED PARTNERSHIP, OCEANIC RESEARCH AND EXPLORATION LIMITED, SUAREZ CORPORATION INDUSTRIES, INC., and DISCOVERY COMMUNICATIONS, INC., d.b.a. THE DISCOVERY CHANNEL, in personam, Defendants.^[1]

United States District Court Southern District of New York.
October 13, 1999.

OPINION & ORDER

HAROLD BAER, JR., District Judge:

The plaintiff, Alexander Lindsay, commenced this lawsuit in 1997, seeking damages based upon his share of the revenues generated by the salvage operations conducted at the wreck site of the famous sunken vessel, the R.M.S. Titanic. Defendants R.M.S. Titanic, Inc. ("RMST") and Suarez Corporation Inc. ("SCI") answered and asserted counterclaims against the plaintiff for copyright infringement. The plaintiffs' amended complaint joined defendant Discovery Communications, Inc. ("DCI") and added claims of copyright infringement against RMST, SCI and DCI. Pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure, the defendants now move [2] to dismiss the plaintiffs copyright claims alleged in the amended complaint.^[2] The plaintiff crossmoves for summary judgment as to both his salvage and copyright claims. For the reasons discussed below, the defendants' motions are DENIED in part and GRANTED in part, and the Court reserves decision on the plaintiffs motion.

I. BACKGROUND

The plaintiff, a citizen of the United Kingdom and resident of the State of New York, is an independent documentary film maker engaged in the business of creating, producing, directing, and filming documentaries: (Amended Complaint ("Am. Compl.") ¶ 4.) Defendant R.M.S. Titanic, Inc. ("RMST") is a publicly traded U.S. corporation, organized under the laws of the State of Florida, which conducts business within and has its office and principal place of business in New York City. (Am. Compl. ¶ 8.) Defendant George Tulloch ("Tulloch") is a shareholder, president and member of the board of directors of RMST. (Am. Compl. ¶ 7.) Defendant Titanic Ventures Limited Partnership ("TVLP") is a limited partnership organized under the laws of Connecticut and currently doing business in the State of New York.^[3] (Am. Compl. ¶ 9.) Defendant Oceanic Research and [3] Exploration Limited ("OREL") is a Delaware corporation and general partner of TVLP. Defendant Tullqch is also the president and sole shareholder of OREL (defendants RMST, Tulloc, TVLP and OREL collectively as "RMST"). Defendant Suarez Corporation, Inc. ("SCI") is an Ohio corporation doing business in the State of New York. Defendant Discovery Communications, Inc. ("DCI") is a Maryland corporation doing business as "The Discovery Channel", and is engaged in the business of making, financing and distributing documentary films. (Am. Compl. ¶ 13.)

In 1993, RMST was awarded exclusive status as salvor-in-possession of the Titanic wreck site and is therefore authorized to carry on salvage operations at the vessel's wreck site. (Am. Compl. ¶¶ 8, 20.) As a condition of obtaining these rights, RMST allegedly agreed to maintain all the artifacts it recovered during the salvage operations for historical verification, scientific education, and public awareness. (Am. Compl. ¶ 22.)

In 1994, the plaintiff, under contract with a British television company, filmed and directed the British documentary film, "Explorers of the Titanic," a chronicle of RMST's third salvage expedition of the Titanic. (Am. Compl. ¶ 25.) To film this documentary, Lindsay sailed with RMST and the salvage expedition crew to the wreck site and remained at sea for approximately one month. (Am. Compl. ¶ 27.) The plaintiff alleges that during and after filming this documentary in 1994, he conceived a new film project for the Titanic wreck using high illumination lighting equipment. (Am. Compl. ¶ 28.)

The plaintiff later discussed his idea with defendant George Tulloch and, according to the plaintiff, the two agreed to work together on the venture. (Am. Compl. ¶¶ 29.) In March 1995, the plaintiff traveled to New York and developed a comprehensive business plan for the new film project entitled, ''Titanic: A Memorial Tribute." (Am. Compl ¶ 30.) Tulloch allegedly informed the [4] plaintiff that he would agree to the plan — which purported to include provisions for compensating Lindsay for his work on the project — but that Tulloch would have to obtain approval from the RMST Board of Directors. (Am. Compl. ¶ 31.) The plaintiff agreed to join RMST to raise money not only for the film project, but for other aspects of the 1996 salvage operation as well. (Am. Compl. ¶ 32.)

Lindsay moved into an office at RMST in and around April 1995. Around this time, tulloch repeatedly told Lindsay that he would obtain approval from RMSTs Board of Directors for a contract for the plaintiff based upon the terms of Lindsay's film plan. (Am. Compl. ¶ 33.) The contract was to include terms of Lindsay's compensation, including sharing in the profits derived from any film, video and still photographs obtained from the 1996 salvage operation. (Am. Compl. ¶ 36.) This contract was never executed.

As part of his pre-production efforts, the plaintiff created various storyboards for the film, a series of drawings which incorporated images of the Titanic by identifying specific camera angles and shooting sequences "that reflect[ed] Plaintiff's [sic] creative inspiration and force behind his concept for shooting the Subject Work." (Am. Compl. ¶ 38.) The plaintiff also alleges that he, along with members of his film team, designed the huge underwater light towers that were later used to make the film. (Am. Compl. ¶ 43.) Lindsay also "personally constructed the light towers" and thereafter "for approximately 3-4 weeks directed, produced, and acted as the cinematographer of the Subject Work; underwater video taping of the Titanic wreck site, and otherwise participated in the 1996 salvage operation." (Am. Compl. ¶¶ 45-46.) He also directed the filming of the wreck site from on board the salvage vessel "Ocean Voyager" after leading daily planning sessions with the crew of the Nautile, the submarine used to transport the film equipment and photographers to the underwater wreck site. (Am. Compl. ¶ 47.) The purpose of these sessions was to provide the [5] photographers with "detailed instructions for positioning and utilizing the light towers." Id.)

The plaintiff now alleges that he was never fully compensated for his services and that, inter alia, the defendants are now "unlawfully profiting from the exploitation of the" film project at issue. (Am. Compl. ¶¶ 57-60.)

The plaintiff originally brought this action under the Court's admiralty jurisdiction to enforce his salvage claims against defendants RMS Titanic, Inc., Titanic Ventures Limited Partners, Oceanic Research and Exploration Limited (collectively as "RMST"), and Suarez Corporation.

These defendants moved to dismiss the plaintiffs salvage claims. By order dated September 2, 1998, I denied the motion to dismiss, having found that the plaintiff had met his burden of pleading all the necessary elements for bringing a salvage claim. See Lindsay v. Titanic, No. 97 Civ. 9248, 1998 WL 557591 (S.D.N.Y. Sept. 2, 1998).

RMST and SCI then answered the complaint and included counterclaims for copyright infringement arising from the plaintiff's use of certain video footage taken from the wreck during the 1996 expedition. By order dated April 9, 1999, I granted the plaintiffs motion to amend his complaint to add copyright infringement claims against RMST and SCI and to join Discovery Communications, Inc. ("DCI") d/b/a The Discovery Channel, for copyright infringement of what appears to be the same footage at issue in the defendants' counterclaims.

The plaintiffs amended complaint now includes 13 causes of action, including those based on copyright infringement, salvage claims, and state law causes of action for fraud, breach of contract, and conversion. The defendants now move pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure to dismiss Lindsay's copyright claims, and the plaintiff cross-moves for summary judgment on his copyright and salvage claims.

[6] II. DISCUSSION

A. Standards for Motion to Dismiss

Dismissal of a complaint pursuant to Rule 12(b)(6) is permitted "only where itappears beyond doubt that the plaintiff can prove no set of facts in support of the claim which would entitle him to relief." Scotto v. Almenas, 143 F.3d 105, 109-10 (2d Cir. 1998). "The task of the court in ruling on a Rule 12(b)(6) motion is 'merely to assess the legal feasibility of the complaint not to assay the weight of the evidence which might be offered in support thereof.'" Cooper v. Parsky, 140 F.3d 433, 440 (2d Cir. 1998) (quoting Ryder Energy Distribution Com. v. Merrill Lynch Commodities, Inc., 748 F.2d 774, 779 (2d Cir. 1984)). In deciding a 12(b)(6) motion, the Court must accept as true all material facts alleged in the complaint and draw all reasonable inferences in the nonmovant's favor. See Thomas v. City of New York, 143 F.3d 31, 36 (2d Cir. 1998).

B. Copyright Claims

Pleading Requirements

To withstand a motion to dismiss, a complaint based on copyright infringement must allege: (1) which specific original works are the subject of the copyright claim; (2) that the plaintiff owns the copyrights in those works; (3) that the copyrights have been registered in accordance with the statute; and (4) "by what acts during what time" the defendant infringed the copyright. Kelly v. L.L. Cool J., 145 F.R.D. 32, 35 (1992), aff'd, 23 F.3d 398 (2d Cir.), cert. denied, 513 U.S. 950 (1994).

Although the complaint is not a model of clarity, it meets for the most part, these standards. With regard to the first element, the complaint refers to the plaintiffs copyright interest in the "Subject Work," and — as the defendants point out — makes several different references to what [7] exactly this work constitutes (See Am. Compl. ¶¶ 28, 76, 78.)^[4] However, piecing together these various allegations, and drawing all reasonable inferences in the plaintiff's favor, it becomes clear for purposes of this motion that the "Subject Work" consists of the illuminated underwater footage that was filmed utilizing the large light towers that Lindsay helped design and construct. (See Am. Compl. ¶ 46.) Regarding the second and third elements, the plaintiff alleges that he owns these works, (Am. Compl. ¶ 55), and that they were accepted and registered with the U.S. Register of Copyrights. (Am. Compl. ¶ 78.)

As to the fourth element — how and when the defendants infringed the copyright — the plaintiff has satisfied his burden as to all the defendants except SCI. With respect to RMST, the complaint alleges that RMST "unlawfully enter[ed] into the exclusive license agreement with DCI," (Am. Compl. ¶ 62), "enered [sic] into contracts conveying video clips and still images . . . to various Titanic artifacts exhibitions throughout the world," and "RMST displays images from the Subject Work on its INTERNET web site." (Am. Compl. ¶ 63.) The complaint alleges that DCI incorporated portions of the illuminated footage into three separate documentaries that aired on certain dates in 1997. (Am. Compl.¶ 64.)

The plaintiffs' contentions against SCI, however, do not fare as well. Lindsay alleges that SCI "used plaintiff's name and likeness" to promote a 1996 cruise expedition to observe the salvage operations. (Am. Compl. ¶ 42.) In addition, the amended complaint charges that "SCI did knowingly and willfully infringe upon Plaintiff's copyright . . . by unlawfully purchasing and/or otherwise obtaining copies of the Subject Work" and has and will "exploit and profit from the Subject Work." [8] (Am. Compl. ¶ 73.) I find that these vague and conclusory allegations are, as a matter of law, insufficient withstand the instant motion. Kelly, 145 F.R.D. at 36, n.3 ("Rule 8 requires that the particular infringing acts be set out with some specificity. Broad, sweeping allegations of infringement do not comply with Rule 8."). Accordingly, the plaintiffs third cause of action as against SCI is hereby dismissed.

2. Authorship

The defendants first argue that the plaintiff cannot have any protectable right in the illuminated footage since he did not dive to the ship and thus did not himself actually photograph the wreckage. This argument, however, does not hold water.

The Copyright Act of 1976 provides that copyright ownership "vests initially in the author or authors of the work." 17 U.S.C. §201(a). Generally speaking, the author of a work is the person "who actually creates the work, that is, the person who translates an idea into a fixed, tangible expression entitled to copyright protection." Community for Creative Non-Violence v. Reid, 490 U.S. 730, 737 (1989) (citing 17 U.S.C. §102). In the context of film footage and photography, it makes intuitive sense that the "author" of a work is the individual or individuals who took the pictures, i.e. the photographer. However, the concept is broader than as argued by the defendants.

For over 100 years, the Supreme Court has recognized that photographs may receive copyright protection in ''so far as they are representatives of original intellectual conceptions of the author" Burrow-Giles Lithographic Co. v. Sarony, 111 U.S . 53, 58 (1884). An individual claiming to be an author for copyright purposes must show "the existence of those facts of originality, of intellectual production, of thought, and conception." Feist Publications. Inc. v. Rural Telephone Service Company Inc., 499 U.S. 340, 346-347 (1991) (citing Burrow-Giles, 111 U.S. at 59-60). [9] Some elements of originality in a photograph includes "posing the subjects, lighting, angle, selection of film and camera, evoking the desired expression, and almost any variant involved." Rogers v. Koons, 960 F.2d 301, 307 (2d Cir.), cert. denied, 506 U.S. 934 (1992). Taken as true, the plaintiffs allegations meet this standard. Lindsay's alleged storyboards and the specific directions he provided to the film crew regarding the use of the lightowers and the angles from which to shoot the wreck all indicate that the final footage would indeed be the product of Lindsay's "original intellectual conceptions."

The fact that Lindsay did not literally perform the filming, i.e. by diving to the wreck and operating the cameras, will not defeat his claims of having "authored" the illuminated footage. The plaintiff alleges that as part of his pre-production efforts, he created so-called "storyboards," a series of drawings which incorporated images of the Titanic by identifying specific camera angles and shooting sequences. (Am. Compl. ¶ 38.) During the expedition itself, Lindsay claims to have been "the director, producer and cinematographer" of the underwater footage. (Am. Compl. ¶ 46.) As part of this role, Lindsay alleges that he directed daily planning sessions with the film crew to provide them with "detailed instructions for positioning and utilizing the light towers." (Am. Compl. ¶ 47.) Moreover, the plaintiff actually "directed the filming" of the Titanic from on board the Ocean Voyager, the salvage vessel that held the crew and equipment. (Am. Compl. ¶ 47) Finally, Lindsay screened the footage at the end of each day to "confirm that he had obtained the images he wanted." (Am. Compl. ¶ 48.)

All else being equal, where a plaintiff alleges that he exercised such a high degree of control over a film operation — including the type and amount of lighting used, the specific camera angles to be employed, and other detail-intensive artistic elements of a film — such that the final product [10] duplicates his conceptions and visions of what the film should look like, the plaintiff may be said "author" within the meaning of the Copyright Act.

Indeed, the instant case is analogous to Andrien v. Southern Ocean County Chamber of Commerce, 927 F.2d 132 (3d Cir. 1991). There, the Third Circuit recognized that "a party can be considered an author when his or her expression of an idea is transposed by mechanical or rote transcription into tangible form under the authority of the party." Id. at 135. The plaintiff in Andrien had received a copyright for a map of Long Beach Island, New Jersey which was created from a compilation of pre-existing maps and the plaintiffs personal survey of the island. To transform his concepts and the information he had gathered into the final map, the plaintiff hired a printing company to print the map in final form. The plaintiff testified that the maps were made by the printer "with me at her elbow practically" and that he spent time each day at the print shop during the weeks the map was made, directing the map's preparation in specific detail. In reversing the lower court's granting of summary judgment against the plaintiff, the court noted that the printers had not "intellectually modified or technically enhanced the concept articulated by Andrien," nor did they "change the substance of Andrien's original expression." Id. at 135. See also Lakedreams v. Taylor 932 F.2d 1103, 1108 (5th Cir. 1991) (noting that authors may be entitled to copyright protection even if they do not ''perform with their own hands the mechanical tasks of putting the material into the form distributed to the public"). It is too early to tell whether the allegations of the plaintiff here satisfy the copyright laws, but crediting his story as I must, dismissal is unwarranted at this stage of the litigation.

The defendants argue that Geshwind v. Garrick, 734 F.Supp. 644 (S.D.N.Y. 1990), vacated in part, 738 F.Supp. 792 (S.D.N.Y. 1990), affd, 927 F.2d 594 (2d Cir.), cert. denied, 502 U.S. 811-[11]-1991), mandates dismissal. That case, however, is inapposite. The plaintiff there, a producer of computer graphics animation and special effects, had contracted to produce a 15-second animation piece. The plaintiff hired Digital, a computer graphics company to, in essence, produce the animated piece. The court in Geshwind found that Digital, by its employee, was the "author" within the meaning of the Copyright Act. In ruling that the plaintiff was not an "author," Judge Patterson found that the plaintiff there had made only minimal contributions to the final product and had only some, if any, of his "suggestions" incorporated into the final product. Id. at 650. This is in stark contrast to the case at bar where Lindsay alleges that his contributions — not suggestions — were anything but minimal, and he describes himself as the driving force behind the final film product at issue here.

3. Joint-Authorship

In the alternative, the defendants argue that Lindsay is, at best, a joint author of the underwater footage with RMST. This contention is based on the notion that Christian Petron, the main photographer of the film, was at least a joint-author of the footage with the plaintiff. Since Petron's participation was accomplished under the auspices of a work for hire agreement with RMST, the defendants' argument continues, any rights to authorship Petron may have received via his filming were conferred upon RMST. As a joint author with the plaintiff then, RMST cannot be liable for copyright infringement since each co-author acquires an undivided interest in the entire work and has the right to use the work as he or she pleases. Thomson v. Larson, 147 F .3d 195; 199 (2d Cir. 1998); Weissman v. Freeman, 868 F.2d 1313, 1318 (2d Cir.) ("[A]n action for infringement between joint owners will not lie because an individual cannot infringe his own copyright."), cert. denied, 493 U.S. 883 (1989). Similarly, any copyright claim against DCI would fail since RMST, as a joint author, has the right to license the joint work to third parties. Thomson, 147 F.3d at 199.

[12] A "joint work" under the Copyright Act is one "prepared by two or more authors with the Intention that their contributions be merged into inseparable or interdependent parts of a unitary whole." 17 U.S.C. §101. To prove co-authorship status, it must be shown by the individual claiming co-authorship status that each of the putative co-authors (1) fully intended to be co-authors, and (2) made independently copyrightable contributions to the work. Thomson, 147 F.3d at 200 (citing Childress v. Taylor, 945 F.2d 500, 507-508 (2d Cir. 1991)).

Drawing all inferences in favor of Lindsay, I conclude that no such status existed in the case at bar. With regard to the intent prong of the analysis, "[a]n important indicator of authorship is a contributor's decision making authority over what changes are made and what is included in a work." Id. at 202-3 (citing Erickson v. Trinity Theatre. Inc., 13 F.3d 1061, 1071-72 (7th Cir. 1994) (actor's suggestions of text did not support a claim of co-authorship where the sole author determined whether and where such suggestions were included in the work)). In other words, where one contributor retains a so-called "veto" authority over what is included in a work, such control is a strong indicator that he or she does not intend to be co-authors with the other contributor. According to the pleadings, the plaintiff exercised virtually total control over the content of the film as "the director, producer and cinematographer" of the production. (Am. Compl. ¶ 46.) Additionally, he briefed the photographers with regards to, inter alia, the specific camera angles they were to employ, (Am. Compl. ¶ 47), and Lindsay screened the film each day to make sure the proper footage was obtained. (Am. Compl. ¶ 48.) Based on these allegations, and implicit in the notion that the film crew was simply "following directions,"^[5] Lindsay retained what appeared to be exclusive authority [13] over what was included in the footage. Assuming as I must at this stage of the litigation that this is true, it can hardly be said that the plaintiff intended Petron — or any other contributor — to be a coauthor. Accordingly, the claims by RMST that it — by virtue of Petron's role as a photographer under a work-for-hire agreement — was a joint-author within the meaning of the Copyright Act must fail.

4. Accounting

Lindsay's fifth cause of action seeks an accounting by DCI, SCI, and RMST of moneys these defendants received from their unauthorized use of the copyrighted footage at issue. Regardless of whether this Court — or a jury — ultimately finds that Lindsay and RMST are joint authors, with respect to DCI, the plaintiffs complaint here sinks under its own weight.

The duty to provide an accounting from profits obtained runs only between co-owners of a copyright. Margo v. Weiss, No. 96 Civ. 3842, 1998 WL 2558, at *9 (S.D.N.Y. Jan. 5, 1998) ("[T]he duty to account for profits presupposes a relationship as co-owners of the copyright. . . ."); cf. Thomson, 147 F.3d at 199 ("[E]ach joint author has the right to use or to license the work as he or she wishes, subject only to the obligation to account to the other joint owner for any profits that are made.") (emphasis added); Kaplan v. Vincent, 937 F.Supp. 307, 316 (S.D.N.Y. 1996) ("[E]ach author maintains the right to use or license the work, subject only to an accounting to the other co-owner.") (emphasis added). Because DCI is only a licensee of a putative joint owner of the copyright at issue here, Lindsay's claim for an accounting fails as a matter of law and must be [14] dismissed.^[6]

III. CONCLUSION

For the reasons discussed above, the defendants' motions are DENIED in part and GRANTED in part such that the plaintiffs cause of action for copyright infringement against SCI is dismissed, as is Lindsay's cause of action for an accounting with respect to DCI and SCI only. The plaintiffs remaining copyright-based claims^[7] and other causes of action have survived this motion.^[8] The current pre-trial scheduling order remains in place, and the case is on the January 2000 trailing trial calendar.

SO ORDERED.

Dated: October 12, 1999

New York, New York

[1] Prior to the issuance of this opinion, the plaintiff dismissed from the case defendant Ben Suarez, in his individual capacity as president of Suarez Corporation, Inc., pursuant to Rule 41(a)(1) of the Fed. R. Civ. P.

[2] Although the Court has reviewed the voluminous supplementary submissions provided with and after the filing of these motions, I am excluding this virtual sea of materials and decline to convert the defendants' motions to dismiss to motions for summary judgment. Accordingly, I base my ruling on these motions solely on the pleadings. See Amaker v. Weiner, 179 F.3d 48, 51-52 (2d Cir. 1999) (finding that the inclusion of affidavits or exhibits with a motion to dismiss does not require conversion to a motion for summary judgment provided the court does not rely on such submissions in deciding the motion to dismiss). In any event, a cursory review of the documents submitted with these motions reveals that the factual waters of this case are sufficiently muddied so as to warrant denial of summary judgment at this juncture as well.

[3] In May 1993, RMST acquired all the assets and assumed the liabilities of TVLP, a limited partnership that was formed in 1987 for purposes of exploring the Titanic wreck site. (Am. Compl. ¶ 19.)

[4] Lindsay defines the "Subject Work" as: "a new film project for the Titanic wreck using high illumination lighting equipment" (Am. Compl. ¶ 28); "the documentary film Titanic: In a New Light" (Am. Compl., 76); and "the illuminated underwater video footage." (Am. Compl. ¶ 78.)

[5] Along these lines, Lindsay's alleged control over the filming rendered the film crew's role to one of no more than "rote or mechanical transcription that [did] not require intellectual modification," Andrien, 927 F.2d at 135, a contribution that would not be independently copyrightable. Id.; Thomson, 147 F.3d at 200. RMST's claims of joint-authorship would thus fail on this prong as well.

[6] Because the plaintiff fails to state a cognizable copyright claim against defendant SCI, as discussed herein, count five is also dismissed as to defendant SCI.

[7] These causes of action are as follows: declaration of copyright ownership; copyright infringement by RMST; copyright infringement by DCI; and an accounting, with respect to RMST only.

[8] These causes of action, not at issue in the instant motions to dismiss, inculude: breach of contract; breach of implied covenant of good faith; quantum meruit; conversion; "money lent"; fraud; fraudulent misrepresentation; declaration of co-salvor status; and common law fraud and deceit.

CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE DISTRICT OF COLUMBIA CIRCUIT

[732] Robert Alan Garrett argued the cause for petitioners. With him on the briefs were Terri A. Southwick and L. Barrett Boss.

Joshua Kaufman argued the cause for respondent. With him on the brief was Jeffrey B. O'Toole.

Lawrence S. Robbins argued the cause for the Register of Copyrights as amicus curiae urging affirmance. With him on the brief were Acting Solicitor General Bryson, Deputy Solicitor General Merrill, and Ralph Oman.^[*]

JUSTICE MARSHALL delivered the opinion of the Court.

In this case, an artist and the organization that hired him to produce a sculpture contest the ownership of the copyright in that work. To resolve this dispute, we must construe the "work made for hire" provisions of the Copyright Act of 1976 (Act or 1976 Act), 17 U. S. C. §§ 101 and 201(b), and in particular, the provision in § 101, which defines as a "work made for hire" a "work prepared by an employee within the scope of his or her employment" (hereinafter § 101(1)).

[733] I

Petitioners are the Community for Creative Non-Violence (CCNV), a nonprofit unincorporated association dedicated to eliminating homelessness in America, and Mitch Snyder, a member and trustee of CCNV. In the fall of 1985, CCNV decided to participate in the annual Christmastime Pageant of Peace in Washington, D. C., by sponsoring a display to dramatize the plight of the homeless. As the District Court recounted:

"Snyder and fellow CCNV members conceived the idea for the nature of the display: a sculpture of a modern Nativity scene in which, in lieu of the traditional Holy Family, the two adult figures and the infant would appear as contemporary homeless people huddled on a streetside steam grate. The family was to be black (most of the homeless in Washington being black); the figures were to be life-sized, and the steam grate would be positioned atop a platform 'pedestal,' or base, within which special-effects equipment would be enclosed to emit simulated 'steam' through the grid to swirl about the figures. They also settled upon a title for the work — 'Third World America' — and a legend for the pedestal: 'and still there is no room at the inn.'" 652 F. Supp. 1453, 1454 (DC 1987).

Snyder made inquiries to locate an artist to produce the sculpture. He was referred to respondent James Earl Reid, a Baltimore, Maryland, sculptor. In the course of two telephone calls, Reid agreed to sculpt the three human figures. CCNV agreed to make the steam grate and pedestal for the statue. Reid proposed that the work be cast in bronze, at a total cost of approximately $100,000 and taking six to eight months to complete. Snyder rejected that proposal because CCNV did not have sufficient funds, and because the statue had to be completed by December 12 to be included in the pageant. Reid then suggested, and Snyder agreed, that the [734] sculpture would be made of a material known as "Design Cast 62," a synthetic substance that could meet CCNV's monetary and time constraints, could be tinted to resemble bronze, and could withstand the elements. The parties agreed that the project would cost no more than $15,000, not including Reid's services, which he offered to donate. The parties did not sign a written agreement. Neither party mentioned copyright.

After Reid received an advance of $3,000, he made several sketches of figures in various poses. At Snyder's request, Reid sent CCNV a sketch of a proposed sculpture showing the family in a crechelike setting: the mother seated, cradling a baby in her lap; the father standing behind her, bending over her shoulder to touch the baby's foot. Reid testified that Snyder asked for the sketch to use in raising funds for the sculpture. Snyder testified that it was also for his approval. Reid sought a black family to serve as a model for the sculpture. Upon Snyder's suggestion, Reid visited a family living at CCNV's Washington shelter but decided that only their newly born child was a suitable model. While Reid was in Washington, Snyder took him to see homeless people living on the streets. Snyder pointed out that they tended to recline on steam grates, rather than sit or stand, in order to warm their bodies. From that time on, Reid's sketches contained only reclining figures.

Throughout November and the first two weeks of December 1985, Reid worked exclusively on the statue, assisted at various times by a dozen different people who were paid with funds provided in installments by CCNV. On a number of occasions, CCNV members visited Reid to check on his progress and to coordinate CCNV's construction of the base. CCNV rejected Reid's proposal to use suitcases or shopping bags to hold the family's personal belongings, insisting instead on a shopping cart. Reid and CCNV members did not discuss copyright ownership on any of these visits.

[735] On December 24, 1985, 12 days after the agreed-upon date, Reid delivered the completed statue to Washington. There it was joined to the steam grate and pedestal prepared by CCNV and placed on display near the site of the pageant. Snyder paid Reid the final installment of the $15,000. The statue remained on display for a month. In late January 1986, CCNV members returned it to Reid's studio in Baltimore for minor repairs. Several weeks later, Snyder began making plans to take the statue on a tour of several cities to raise money for the homeless. Reid objected, contending that the Design Cast 62 material was not strong enough to withstand the ambitious itinerary. He urged CCNV to cast the statue in bronze at a cost of $35,000, or to create a master mold at a cost of $5,000. Snyder declined to spend more of CCNV's money on the project.

In March 1986, Snyder asked Reid to return the sculpture. Reid refused. He then filed a certificate of copyright registration for "Third World America" in his name and announced plans to take the sculpture on a more modest tour than the one CCNV had proposed. Snyder, acting in his capacity as CCNV's trustee, immediately filed a competing certificate of copyright registration.

Snyder and CCNV then commenced this action against Reid and his photographer, Ronald Purtee,^[1] seeking return of the sculpture and a determination of copyright ownership. The District Court granted a preliminary injunction, ordering the sculpture's return. After a 2-day bench trial, the District Court declared that "Third World America" was a "work made for hire" under § 101 of the Copyright Act and that Snyder, as trustee for CCNV, was the exclusive owner of the copyright in the sculpture. 652 F. Supp., at 1457. The court reasoned that Reid had been an "employee" of CCNV within the meaning of § 101(1) because CCNV was the motivating force in the statue's production. Snyder and [736] other CCNV members, the court explained, "conceived the idea of a contemporary Nativity scene to contrast with the national celebration of the season," and "directed enough of [Reid's] effort to assure that, in the end, he had produced what they, not he, wanted." Id., at 1456.

The Court of Appeals for the District of Columbia Circuit reversed and remanded, holding that Reid owned the copyright because "Third World America" was not a work for hire. 270 U. S. App. D. C. 26, 35, 846 F. 2d 1485, 1494 (1988). Adopting what it termed the "literal interpretation" of the Act as articulated by the Fifth Circuit in Easter Seal Society for Crippled Children & Adults of Louisiana, Inc. v. Playboy Enterprises, 815 F. 2d 323, 329 (1987), cert. denied, 485 U. S. 981 (1988), the court read § 101 as creating "a simple dichotomy in fact between employees and independent contractors." 270 U. S. App. D. C., at 33, 846 F. 2d, at 1492. Because, under agency law, Reid was an independent contractor, the court concluded that the work was not "prepared by an employee" under § 101(1). Id., at 35, 846 F. 2d, at 1494. Nor was the sculpture a "work made for hire" under the second subsection of § 101 (hereinafter § 101(2)): sculpture is not one of the nine categories of works enumerated in that subsection, and the parties had not agreed in writing that the sculpture would be a work for hire. Ibid. The court suggested that the sculpture nevertheless may have been jointly authored by CCNV and Reid, id., at 36, 846 F. 2d, at 1495, and remanded for a determination whether the sculpture is indeed a joint work under the Act, id., at 39-40, 846 F. 2d, at 1498-1499.

We granted certiorari to resolve a conflict among the Courts of Appeals over the proper construction of the "work made for hire" provisions of the Act.^[2] 488 U. S. 940 (1988). We now affirm.

[737] II

A

The Copyright Act of 1976 provides that copyright ownership "vests initially in the author or authors of the work." 17 U. S. C. § 201(a). As a general rule, the author is the party who actually creates the work, that is, the person who translates an idea into a fixed, tangible expression entitled to copyright protection. § 102. The Act carves out an important exception, however, for "works made for hire."^[3] If the work is for hire, "the employer or other person for whom the work was prepared is considered the author" and owns the copyright, unless there is a written agreement to the contrary. § 201(b). Classifying a work as "made for hire" determines not only the initial ownership of its copyright, but also the copyright's duration, § 302(c), and the owners' renewal rights, § 304(a), termination rights, § 203(a), and right to import certain goods bearing the copyright, § 601(b)(1). See 1 M. Nimmer & D. Nimmer, Nimmer on Copyright § 5.03 [A], pp. 5-10 (1988). The contours of the work for hire doctrine therefore carry profound significance for freelance creators — including artists, writers, photographers, designers, composers, and computer programmers — and for the publishing, advertising, music, and other industries which commission their works.^[4]

[738] Section 101 of the 1976 Act provides that a work is "for hire" under two sets of circumstances:

"(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 motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire."^[5]

Petitioners do not claim that the statue satisfies the terms of § 101(2). Quite clearly, it does not. Sculpture does not fit within any of the nine categories of "specially ordered or commissioned" works enumerated in that subsection, and no written agreement between the parties establishes "Third World America" as a work for hire.

The dispositive inquiry in this case therefore is whether "Third World America" is "a work prepared by an employee within the scope of his or her employment" under § 101(1). The Act does not define these terms. In the absence of such guidance, four interpretations have emerged. The first holds that a work is prepared by an employee whenever the hiring party^[6] retains the right to control the product. See Peregrine v. Lauren Corp., 601 F. Supp. 828, 829 (Colo. 1985); Clarkstown v. Reeder, 566 F. Supp. 137, 142 (SDNY [739] 1983). Petitioners take this view. Brief for Petitioners 15; Tr. of Oral Arg. 12. A second, and closely related, view is that a work is prepared by an employee under § 101(1) when the hiring party has actually wielded control with respect to the creation of a particular work. This approach was formulated by the Court of Appeals for the Second Circuit, Aldon Accessories Ltd. v. Spiegel, Inc., 738 F. 2d 548, cert. denied, 469 U. S. 982 (1984), and adopted by the Fourth Circuit, Brunswick Beacon, Inc. v. Schock-Hopchas Publishing Co., 810 F. 2d 410 (1987), the Seventh Circuit, Evans Newton, Inc. v. Chicago Systems Software, 793 F. 2d 889, cert. denied, 479 U. S. 949 (1986), and, at times, by petitioners, Brief for Petitioners 17. A third view is that the term "employee" within § 101(1) carries its common-law agency law meaning. This view was endorsed by the Fifth Circuit in Easter Seal Society for Crippled Children & Adults of Louisiana, Inc. v. Playboy Enterprises, 815 F. 2d 323 (1987), and by the Court of Appeals below. Finally, respondent and numerous amici curiae contend that the term "employee" only refers to "formal, salaried" employees. See, e. g., Brief for Respondent 23-24; Brief for Register of Copyrights as Amicus Curiae 7. The Court of Appeals for the Ninth Circuit recently adopted this view. See Dumas v. Gommerman, 865 F. 2d 1093 (1989).

The starting point for our interpretation of a statute is always its language. Consumer Product Safety Comm'n v. GTE Sylvania, Inc., 447 U. S. 102, 108 (1980). The Act nowhere defines the terms "employee" or "scope of employment." It is, however, well established that "[w]here Congress uses terms that have accumulated settled meaning under . . . the common law, a court must infer, unless the statute otherwise dictates, that Congress means to incorporate the established meaning of these terms." NLRB v. Amax Coal Co., 453 U. S. 322, 329 (1981); see also Perrin v. United States, 444 U. S. 37, 42 (1979). In the past, when Congress has used the term "employee" without defining it, [740] we have concluded that Congress intended to describe the conventional master-servant relationship as understood by common-law agency doctrine. See, e. g., Kelley v. Southern Pacific Co., 419 U. S. 318, 322-323 (1974); Baker v. Texas & Pacific R. Co., 359 U. S. 227, 228 (1959) (per curiam); Robinson v. Baltimore & Ohio R. Co., 237 U. S. 84, 94 (1915). Nothing in the text of the work for hire provisions indicates that Congress used the words "employee" and "employment" to describe anything other than " 'the conventional relation of employer and employe.' " Kelley, supra, at 323, quoting Robinson, supra, at 94; cf. NLRB v. Hearst Publications, Inc., 322 U. S. 111, 124-132 (1944) (rejecting agency law conception of employee for purposes of the National Labor Relations Act where structure and context of statute indicated broader definition). On the contrary, Congress' intent to incorporate the agency law definition is suggested by § 101(1)'s use of the term, "scope of employment," a widely used term of art in agency law. See Restatement (Second) of Agency § 228 (1958) (hereinafter Restatement).

In past cases of statutory interpretation, when we have concluded that Congress intended terms such as "employee," "employer," and "scope of employment" to be understood in light of agency law, we have relied on the general common law of agency, rather than on the law of any particular State, to give meaning to these terms. See, e. g., Kelley, 419 U. S., at 323-324, and n. 5; id., at 332 (Stewart, J., concurring in judgment); Ward v. Atlantic Coast Line R. Co., 362 U. S. 396, 400 (1960); Baker, supra, at 228. This practice reflects the fact that "federal statutes are generally intended to have uniform nationwide application." Mississippi Band of Choctaw Indians v. Holyfield, ante, at 43. Establishment of a federal rule of agency, rather than reliance on state agency law, is particularly appropriate here given the Act's express objective of creating national, uniform copyright law by broadly pre-empting state statutory and common-law copyright regulation. See 17 U. S. C. § 301(a). We thus [741] agree with the Court of Appeals that the term "employee" should be understood in light of the general common law of agency.

In contrast, neither test proposed by petitioners is consistent with the text of the Act. The exclusive focus of the right to control the product test on the relationship between the hiring party and the product clashes with the language of § 101(1), which focuses on the relationship between the hired and hiring parties. The right to control the product test also would distort the meaning of the ensuing subsection, § 101(2). Section 101 plainly creates two distinct ways in which a work can be deemed for hire: one for works prepared by employees, the other for those specially ordered or commissioned works which fall within one of the nine enumerated categories and are the subject of a written agreement. The right to control the product test ignores this dichotomy by transforming into a work for hire under § 101(1) any "specially ordered or commissioned" work that is subject to the supervision and control of the hiring party. Because a party who hires a "specially ordered or commissioned" work by definition has a right to specify the characteristics of the product desired, at the time the commission is accepted, and frequently until it is completed, the right to control the product test would mean that many works that could satisfy § 101(2) would already have been deemed works for hire under § 101(1). Petitioners' interpretation is particularly hard to square with § 101(2)'s enumeration of the nine specific categories of specially ordered or commissioned works eligible to be works for hire, e. g., "a contribution to a collective work," "a part of a motion picture," and "answer material for a test." The unifying feature of these works is that they are usually prepared at the instance, direction, and risk of a publisher or producer.^[7] By their very nature, therefore, these types of [742] works would be works by an employee under petitioners' right to control the product test.

The actual control test, articulated by the Second Circuit in Aldon Accessories, fares only marginally better when measured against the language and structure of § 101. Under this test, independent contractors who are so controlled and supervised in the creation of a particular work are deemed "employees" under § 101(1). Thus work for hire status under § 101(1) depends on a hiring party's actual control of, rather than right to control, the product. Aldon Accessories, 738 F. 2d, at 552. Under the actual control test, a work for hire could arise under § 101(2), but not under § 101(1), where a party commissions, but does not actually control, a product which falls into one of the nine enumerated categories. Nonetheless, we agree with the Court of Appeals for the Fifth Circuit that "[t]here is simply no way to milk the 'actual control' test of Aldon Accessories from the language of the statute." Easter Seal Society, 815 F. 2d, at 334. Section 101 clearly delineates between works prepared by an employee and commissioned works. Sound though other distinctions might be as a matter of copyright policy, there is no statutory support for an additional dichotomy between commissioned works that are actually controlled and supervised by the hiring party and those that are not.

We therefore conclude that the language and structure of § 101 of the Act do not support either the right to control the product or the actual control approaches.^[8] The structure of [743] § 101 indicates that a work for hire can arise through one of two mutually exclusive means, one for employees and one for independent contractors, and ordinary cannons of statutory interpretation indicate that the classification of a particular hired party should be made with reference to agency law.

This reading of the undefined statutory terms finds considerable support in the Act's legislative history. Cf. Diamond v. Chakrabarty, 447 U. S. 303, 315 (1980). The Act, which almost completely revised existing copyright law, was the product of two decades of negotiation by representatives of creators and copyright-using industries, supervised by the Copyright Office and, to a lesser extent, by Congress. See Mills Music, Inc. v. Snyder, 469 U. S. 153, 159 (1985); Litman, Copyright, Compromise, and Legislative History, 72 Cornell L. Rev. 857, 862 (1987). Despite the lengthy history of negotiation and compromise which ultimately produced the Act, two things remained constant. First, interested parties and Congress at all times viewed works by employees and commissioned works by independent contractors as separate entities. Second, in using the term "employee," the parties and Congress meant to refer to a hired party in a conventional employment relationship. These factors militate in favor of the reading we have found appropriate.

In 1955, when Congress decided to overhaul copyright law, the existing work for hire provision was § 62 of the 1909 Copyright Act, 17 U. S. C. § 26 (1976 ed.) (1909 Act). It provided that "the word 'author' shall include an employer in [744] the case of works made for hire."^[9] Because the 1909 Act did not define "employer" or "works made for hire," the task of shaping these terms fell to the courts. They concluded that the work for hire doctrine codified in § 62 referred only to works made by employees in the regular course of their employment. As for commissioned works, the courts generally presumed that the commissioned party had impliedly agreed to convey the copyright, along with the work itself, to the hiring party. See, e. g., Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., 221 F. 2d 569, 570, rev'd, 223 F. 2d 252 (CA2 1955); Yardley v. Houghton Mifflin Co., 108 F. 2d 28, 31 (CA2 1939), cert. denied, 309 U. S. 686 (1940).^[10]

In 1961, the Copyright Office's first legislative proposal retained the distinction between works by employees and works by independent contractors. See Report of the Register of Copyrights on the General Revision of the U. S. Copyright Law, 87th Cong., 1st Sess., Copyright Law Revision 86-87 (H. R. Judiciary Comm. Print 1961). After numerous meetings with representatives of the affected parties, the Copyright Office issued a preliminary draft bill in 1963. Adopting the Register's recommendation, it defined "work [745] made for hire" as "a work prepared by an employee within the scope of the duties of his employment, but not including a work made on special order or commission." Preliminary Draft for Revised U. S. Copyright Law and Discussions and Comments on the Draft, 88th Cong., 2d Sess., Copyright Law Revision, Part 3, p. 15, n. 11 (H. R. Judiciary Comm. Print 1964) (hereinafter Preliminary Draft).

In response to objections by book publishers that the preliminary draft bill limited the work for hire doctrine to "employees,"^[11] the 1964 revision bill expanded the scope of the work for hire classification to reach, for the first time, commissioned works. The bill's language, proposed initially by representatives of the publishing industry, retained the definition of work for hire insofar as it referred to "employees," but added a separate clause covering commissioned works, without regard to the subject matter, "if the parties so agree in writing." S. 3008, H. R. 11947, H. R. 12354, 88th Cong., 2d Sess., § 54 (1964), reproduced in 1964 Revision Bill with Discussions and Comments, 89th Cong., 1st Sess., Copyright Law Revision, pt. 5, p. 31 (H. R. Judiciary Comm. Print 1965). Those representing authors objected that the added provision would allow publishers to use their superior bargaining position to force authors to sign work for hire agreements, [746] thereby relinquishing all copyright rights as a condition of getting their books published. See Supplementary Report, at 67.

In 1965, the competing interests reached a historic compromise, which was embodied in a joint memorandum submitted to Congress and the Copyright Office,^[12] incorporated into the 1965 revision bill, and ultimately enacted in the same form and nearly the same terms 11 years later, as § 101 of the 1976 Act. The compromise retained as subsection (1) the language referring to "a work prepared by an employee within the scope of his employment." However, in exchange for concessions from publishers on provisions relating to the termination of transfer rights, the authors consented to a second subsection which classified four categories of commissioned works as works for hire if the parties expressly so agreed in writing: works for use "as a contribution to a collective work, as a part of a motion picture, as a translation, or as supplementary work." S. 1006, H. R. 4347, H. R. 5680, H. R. 6835, 89th Cong., 1st Sess., § 101 (1965). The interested parties selected these categories because they concluded that these commissioned works, although not prepared by employees and thus not covered by the first subsection, nevertheless should be treated as works for hire because they were ordinarily prepared "at the instance, direction, and risk of a publisher or producer." Supplementary Report, at 67. The Supplementary Report emphasized that only the "four special cases specifically mentioned" could qualify as works made for hire; "[o]ther works made on special order or commission would not come within the definition." Id., at 67-68.

[747] In 1966, the House Committee on the Judiciary endorsed this compromise in the first legislative Report on the revision bills. See H. R. Rep. No. 2237, 89th Cong., 2d Sess., 114, 116 (1966). Retaining the distinction between works by employees and commissioned works, the House Committee focused instead on "how to draw a statutory line between those works written on special order or commission that should be considered as works made for hire, and those that should not." Id., at 115. The House Committee added four other enumerated categories of commissioned works that could be treated as works for hire: compilations, instructional texts, tests, and atlases. Id., at 116. With the single addition of "answer material for a test," the 1976 Act, as enacted, contained the same definition of works made for hire as did the 1966 revision bill, and had the same structure and nearly the same terms as the 1966 bill.^[13] Indeed, much of the language of the 1976 House and Senate Reports was borrowed from the Reports accompanying the earlier drafts. See, e. g., H. R. Rep. No. 94-1476, p. 121 (1976); S. Rep. No. 94-473, p. 105 (1975).

Thus, the legislative history of the Act is significant for several reasons. First, the enactment of the 1965 compromise with only minor modifications demonstrates that Congress intended to provide two mutually exclusive ways for works to acquire work for hire status: one for employees and [748] the other for independent contractors. Second, the legislative history underscores the clear import of the statutory language: only enumerated categories of commissioned works may be accorded work for hire status. The hiring party's right to control the product simply is not determinative. See Note, The Creative Commissioner: Commissioned Works Under the Copyright Act of 1976, 62 N. Y. U. L. Rev. 373, 388 (1987). Indeed, importing a test based on a hiring party's right to control, or actual control of, a product would unravel the " 'carefully worked out compromise aimed at balancing legitimate interests on both sides.' " H. R. Rep. No. 2237, supra, at 114, quoting Supplemental Report, at 66.^[14]

We do not find convincing petitioners' contrary interpretation of the history of the Act. They contend that Congress, in enacting the Act, meant to incorporate a line of cases decided under the 1909 Act holding that an employment relationship exists sufficient to give the hiring party copyright ownership whenever that party has the right to control or supervise the artist's work. See, e. g., Siegel v. National Periodical Publications, Inc., 508 F. 2d 909, 914 (CA2 1974); Picture Music, Inc. v. Bourne, Inc., 457 F. 2d 1213, 1216 (CA2), cert. denied, 409 U. S. 997 (1972); Scherr v. Universal Match Corp., 417 F. 2d 497, 500 (CA2 1969), cert. denied, 397 U. S. 936 (1970); Brattleboro Publishing Co. v. Winmill Publishing Corp., 369 F. 2d 565, 567-568 (CA2 1966). In support of this position, petitioners note: "Nowhere in the 1976 Act or in the Act's legislative history does Congress state that it intended to jettison the control standard or otherwise to reject the pre-Act judicial approach to identifying a [749] work for hire employment relationship." Brief for Petitioners 20, citing Aldon Accessories, 738 F. 2d, at 552.

We are unpersuaded. Ordinarily, "Congress' silence is just that — silence." Alaska Airlines, Inc. v. Brock, 480 U. S. 678, 686 (1987). Petitioners' reliance on legislative silence is particularly misplaced here because the text and structure of § 101 counsel otherwise. See Bourjaily v. United States, 483 U. S. 171, 178 (1987); Harrison v. PPG Industries, Inc., 446 U. S. 578, 592 (1980).^[15] Furthermore, the structure of the work for hire provisions was fully developed in 1965, and the text was agreed upon in essentially final form by 1966. At that time, however, the courts had applied the work for hire doctrine under the 1909 Act exclusively to traditional employees. Indeed, it was not until after the 1965 compromise was forged and adopted by Congress^[16] that a federal court for the first time applied the work for hire doctrine to commissioned works. See, e. g., Brattleboro Publishing Co., supra, at 567-568. Congress certainly could not have "jettisoned" a line of cases that had not yet been decided.

Finally, petitioners' construction of the work for hire provisions would impede Congress' paramount goal in revising the 1976 Act of enhancing predictability and certainty of copyright ownership. See H. R. Rep. No. 94-1476, supra, at 129. In a "copyright marketplace," the parties negotiate with an expectation that one of them will own the copyright in the completed work. Dumas, 865 F. 2d, at 1104-1105, [750] n. 18. With that expectation, the parties at the outset can settle on relevant contractual terms, such as the price for the work and the ownership of reproduction rights.

To the extent that petitioners endorse an actual control test,^[17] CCNV's construction of the work for hire provisions prevents such planning. Because that test turns on whether the hiring party has closely monitored the production process, the parties would not know until late in the process, if not until the work is completed, whether a work will ultimately fall within § 101(1). Under petitioners' approach, therefore, parties would have to predict in advance whether the hiring party will sufficiently control a given work to make it the author. "If they guess incorrectly, their reliance on 'work for hire' or an assignment may give them a copyright interest that they did not bargain for." Easter Seal Society, 815 F. 2d, at 333; accord, Dumas, supra, at 1103. This understanding of the work for hire provisions clearly thwarts Congress' goal of ensuring predictability through advance planning. Moreover, petitioners' interpretation "leaves the door open for hiring parties, who have failed to get a full assignment of copyright rights from independent contractors falling outside the subdivision (2) guidelines, to unilaterally obtain work-made-for-hire rights years after the work has been completed as long as they directed or supervised the work, a standard that is hard not to meet when one is a hiring party." Hamilton, Commissioned Works as Works Made for Hire Under the 1976 Copyright Act: Misinterpretation and Injustice, 135 U. Pa. L. Rev. 1281, 1304 (1987).

In sum, we must reject petitioners' argument. Transforming a commissioned work into a work by an employee on the basis of the hiring party's right to control, or actual control of, the work is inconsistent with the language, structure, and legislative history of the work for hire provisions. To [751] determine whether a work is for hire under the Act, a court first should ascertain, using principles of general common law of agency, whether the work was prepared by an employee or an independent contractor. After making this determination, the court can apply the appropriate subsection of § 101.

B

We turn, finally, to an application of § 101 to Reid's production of "Third World America." In determining whether a hired party is an employee under the general common law of agency, we consider the hiring party's right to control the manner and means by which the product is accomplished.^[18] Among the other factors relevant to this inquiry are the skill required;^[19] the source of the instrumentalities and tools;^[20] the location of the work;^[21] the duration of the relationship between the parties;^[22] whether the hiring party has the right to assign additional projects to the hired party;^[23] the extent of the hired party's discretion over when and how long to work;^[24] the method of payment;^[25] the hired party's role in hiring and [752] paying assistants;^[26] whether the work is part of the regular business of the hiring party;^[27] whether the hiring party is in business;^[28] the provision of employee benefits;^[29] and the tax treatment of the hired party.^[30] See Restatement § 220(2) (setting forth a nonexhaustive list of factors relevant to determining whether a hired party is an employee).^[31] No one of these factors is determinative. See Ward, 362 U. S., at 400; Hilton Int'l Co. v. NLRB, 690 F. 2d 318, 321 (CA2 1982).

Examining the circumstances of this case in light of these factors, we agree with the Court of Appeals that Reid was not an employee of CCNV but an independent contractor. 270 U. S. App. D. C., at 35, n. 11, 846 F. 2d, at 1494, n. 11. True, CCNV members directed enough of Reid's work to ensure that he produced a sculpture that met their specifications. 652 F. Supp., at 1456. But the extent of control the hiring party exercises over the details of the product is not dispositive. Indeed, all the other circumstances weigh heavily against finding an employment relationship. Reid is a sculptor, a skilled occupation. Reid supplied his own tools. He worked in his own studio in Baltimore, making daily supervision of his activities from Washington practicably impossible. Reid was retained for less than two months, a relatively [753] short period of time. During and after this time, CCNV had no right to assign additional projects to Reid. Apart from the deadline for completing the sculpture, Reid had absolute freedom to decide when and how long to work. CCNV paid Reid $15,000, a sum dependent on "completion of a specific job, a method by which independent contractors are often compensated." Holt v. Winpisinger, 258 U. S. App. D. C. 343, 351, 811 F. 2d 1532, 1540 (1987). Reid had total discretion in hiring and paying assistants. "Creating sculptures was hardly 'regular business' for CCNV." 270 U. S. App. D. C., at 35, n. 11, 846 F. 2d, at 1494, n. 11. Indeed, CCNV is not a business at all. Finally, CCNV did not pay payroll or Social Security taxes, provide any employee benefits, or contribute to unemployment insurance or workers' compensation funds.

Because Reid was an independent contractor, whether "Third World America" is a work for hire depends on whether it satisfies the terms of § 101(2). This petitioners concede it cannot do. Thus, CCNV is not the author of "Third World America" by virtue of the work for hire provisions of the Act. However, as the Court of Appeals made clear, CCNV nevertheless may be a joint author of the sculpture if, on remand, the District Court determines that CCNV and Reid prepared the work "with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole." 17 U. S. C. § 101.^[32] In that case, CCNV and Reid would be co-owners of the copyright in the work. See § 201(a).

For the aforestated reasons, we affirm the judgment of the Court of Appeals for the District of Columbia Circuit.

It is so ordered.

[*] Briefs of amici curiae urging reversal were filed for the Computer and Business Equipment Manufacturers Association et al. by Richard Dannay and Morton David Goldberg; for Intellectual Property Owners, Inc., by Donald W. Banner and Herbert C. Wamsley; and for Magazine Publishers of America, Inc., by Slade R. Metcalf and Victor A. Kovner.

Briefs of amici curiae urging affirmance were filed for the American Society of Magazine Photographers et al. by Charles D. Ossola; for The Professional Photographers of America, Inc., by David Ladd, David E. Leibowitz, Bruce G. Joseph, and Thomas W. Kirby; and for Volunteer Lawyers for the Arts, Inc., et al. by Irwin Karp.

Arthur J. Levine and William L. LaFuze filed a brief for the American Intellectual Property Law Association as amicus curiae.

[1] Purtee was named as a defendant but never appeared or claimed any interest in the statue.

[2] Compare Easter Seal Society for Crippled Children & Adults of Louisiana, Inc. v. Playboy Enterprises, 815 F. 2d 323 (CA5 1987), (agency law determines who is an employee under § 101), cert. denied, 485 U. S. 981 (1988), with Brunswick Beacon, Inc. v. Schock-Hopchas Publishing Co., 810 F. 2d 410 (CA4 1987) (supervision and control standard determines who is an employee under § 101); Evans Newton, Inc. v. Chicago Systems Software, 793 F. 2d 889 (CA7) (same), cert. denied, 479 U. S. 949 (1986); and Aldon Accessories Ltd. v. Spiegel, Inc., 738 F. 2d 548 (CA2) (same), cert. denied, 469 U. S. 982 (1984). See also Dumas v. Gommerman, 865 F. 2d 1093 (CA9 1989) (a multifactor formal, salaried employee test determines who is an employee under § 101).

[3] We use the phrase "work for hire" interchangeably with the more cumbersome statutory phrase "work made for hire."

[4] As of 1955, approximately 40 percent of all copyright registrations were for works for hire, according to a Copyright Office study. See Varmer, Works Made for Hire and On Commission, in Studies Prepared for the Subcommittee on Patents, Trademarks, and Copyrights of the Senate Committee on the Judiciary, Study No. 13, 86th Cong., 2d Sess., 139, n. 49 (Comm. Print 1960) (hereinafter Varmer, Works Made for Hire). The Copyright Office does not keep more recent statistics on the number of work for hire registrations.

[5] Section 101 of the Act defines each of the nine categories of "specially ordered or commissioned" works.

[6] By "hiring party," we mean to refer to the party who claims ownership of the copyright by virtue of the work for hire doctrine.

[7] See Supplementary Report of the Register of Copyrights on the General Revision of the U. S. Copyright Law: 1965 Revision Bill, 89th Cong., 1st Sess., Copyright Law Revision, pt. 6, pp. 66-67 (H. R. Judiciary Comm. Print 1965) (hereinafter Supplementary Report); Hardy, Copyright Law's Concept of Employment — What Congress Really Intended, 35 J. Copr. Soc. USA 210, 244-245 (1988).

[8] We also reject the suggestion of respondent and amici that the § 101(1) term "employee" refers only to formal, salaried employees. While there is some support for such a definition in the legislative history, see Varmer, Works Made for Hire 130; n. 11, infra, the language of § 101(1) cannot support it. The Act does not say "formal" or "salaried" employee, but simply "employee." Moreover, respondent and those amici who endorse a formal, salaried employee test do not agree upon the content of this test. Compare, e. g., Brief for Respondent 37 (hired party who is on payroll is an employee within § 101(1) with Tr. of Oral Arg. 31 (hired party who receives a salary or commissions regularly is an employee within § 101(1)); and Brief for Volunteer Lawyers for the Arts, Inc., et al. as Amici Curiae 4 (hired party who receives a salary and is treated as an employee for Social Security and tax purposes is an employee within § 101(1)). Even the one Court of Appeals to adopt what it termed a formal, salaried employee test in fact embraced an approach incorporating numerous factors drawn from the agency law definition of employee which we endorse. See Dumas, 865 F. 2d, at 1104.

[9] The concept of works made for hire first arose in controversies over copyright ownership involving works produced by persons whom all parties agreed were employees. See, e. g., Colliery Engineer Co. v. United Correspondence Schools Co., 94 F. 152 (CC SDNY 1899); Little v. Gould, 15 F. Cas. 612 (No. 8,395) (CC NDNY 1852). This Court first took note of the work for hire doctrine in Bleistein v. Donaldson Lithographing Co., 188 U. S. 239, 248 (1903), where we found that an employer owned the copyright to advertisements that had been created by an employee in the course of his employment. Bleistein did not, however, purport to define "employee."

[10] See Varmer, Works Made for Hire 130; Fidlow, The "Works Made for Hire" Doctrine and the Employee/Independent Contractor Dichotomy: The Need for Congressional Clarification, 10 Hastings Comm. Ent. L. J. 591, 600-601 (1988). Indeed, the Varmer study, which was commissioned by Congress as part of the revision process, itself contained separate subsections labeled "Works Made for Hire" and "Works Made on Commission." It nowhere indicated that the two categories might overlap or that commissioned works could be made by an employee.

[11] See, e. g., Preliminary Draft, at 259 (statement of Horace S. Manges, Joint Committee of the American Book Publishers Council and the American Textbook Publishers Institute) ("There would be a necessity of putting people on the payroll whom the employers wouldn't want to put on the payroll, and where the employees would prefer to work as independent contractors"); id., at 272 (statement of Saul N. Rittenberg, MGM) ("[T]he present draft has given more emphasis to formalism than necessary. If I commission a work from a man, ordering a work specially for my purposes, and I pay for it, what difference does it make whether I put him under an employment contract or establish an independent contractor relationship?"); id., at 260 (statement of John R. Peterson, American Bar Association) ("I don't think there is any valid philosophical or economic difference between the situation in which you have a man on a continuing basis of orders which justifies placing him on your payroll, and the situation in which you give him a particular order for a particular job").

[12] The parties to the joint memorandum included representatives of the major competing interests involved in the copyright revision process: publishers and authors, composers, and lyricists. See Copyright Law Revision: Hearings on H. R. 4347, 5680, 6831, 6835 before Subcommittee No. 3 of the House Committee on the Judiciary, 89th Cong., 1st Sess., pt. 1, p. 134 (1965).

[13] An attempt to add "photographic or other portrait[s]," S. Rep. No. 94-473, p. 4 (1975), to the list of commissioned works eligible for work for hire status failed after the Register of Copyrights objected:

"The addition of portraits to the list of commissioned works that can be made into 'works made for hire' by agreement of the parties is difficult to justify. Artists and photographers are among the most vulnerable and poorly protected of all the beneficiaries of the copyright law, and it seems clear that, like serious composers and choreographers, they were not intended to be treated as 'employees' under the carefully negotiated definition in section 101." Second Supplementary Report of the Register of Copyrights on the General Revision of the U. S. Copyright Law: 1975 Revision Bill, Chapter XI, pp. 12-13.

[14] Strict adherence to the language and structure of the Act is particularly appropriate where, as here, a statute is the result of a series of carefully crafted compromises. See Rodriguez v. Compass Shipping Co., 451 U. S. 596, 617 (1981); United States v. Sisson, 399 U. S. 267, 291, 298 (1970).

[15] In framing other provisions of the Act, Congress indicated when it intended to incorporate existing case law. See, e. g., H. R. Rep. No. 94-1476, p. 121 (1976) ("There is . . . no need for a specific statutory provision concerning the rights and duties of the coowners [sic] of a work; court-made law on this point is left undisturbed"); S. Rep. No. 94-473, supra, at 104 (same).

[16] Over the course of the copyright revision process, Congress frequently endorsed a negotiated compromise which years later in 1976 it formally enacted with only minor revisions. See Mills Music, Inc. v. Snyder, 469 U. S. 153, 160-161 (1985).

[17] Petitioners concede that, as a practical matter, it is often difficult to demonstrate the existence of a right to control without evidence of the actual exercise of that right. See Murray v. Gelderman, 566 F. 2d 1307, 1310-1311 (CA5 1978).

[18] See, e. g., Hilton Int'l Co. v. NLRB, 690 F. 2d 318, 320 (CA2 1982); NLRB v. Maine Caterers, Inc., 654 F. 2d 131, 133 (CA1 1981), cert denied, 455 U. S. 940 (1982); Restatement § 220(1).

[19] See, e. g., Bartels v. Birmingham, 332 U. S. 126, 132 (1947); Hilton Int'l Co., supra, at 320; NLRB v. A. Duie Pyle, Inc., 606 F. 2d 379, 382 (CA3 1979); Restatement § 220(2)(d).

[20] See, e. g., NLRB v. United Ins. Co. of America, 390 U. S. 254, 258 (1968); United States v. Silk, 331 U. S. 704, 717, 718 (1947); Dumas, 865 F. 2d, at 1105; Restatement § 220(2)(e).

[21] See, e. g., United Ins. Co., supra, at 258; Dumas, supra, at 1105; Darden v. Nationwide Mutual Ins. Co., 796 F. 2d 701, 705 (CA4 1986); Restatement § 220(2)(e).

[22] See, e. g., United Ins. Co., supra, at 259; Bartels, supra, at 132; Restatement § 220(2)(f).

[23] See, e. g., Dumas, supra, at 1105.

[24] See, e. g., United Ins. Co., supra, at 258; Short v. Central States, Southeast & Southwest Areas Pension Fund, 729 F. 2d 567, 574 (CA8 1984).

[25] See, e. g., Dumas, supra, at 1105; Darden, supra, at 705; Holt v. Winpisinger, 258 U. S. App. D. C. 343, 351, 811 F. 2d 1532, 1540 (1987); Restatement § 220(2)(g).

[26] See, e. g., Bartels, supra, at 132; Silk, supra, at 719; Darden, supra, at 705; Short, supra, at 574.

[27] See, e. g., United Ins. Co., supra, at 259; Silk, supra, at 718; Dumas, supra, at 1105; Hilton Int'l Co., supra, at 321; Restatement § 220(2)(h).

[28] See, e. g., Restatement § 220(2)(j).

[29] See, e. g., United Ins. Co., supra, at 259; Dumas, supra, at 1105; Short, supra, at 574.

[30] See, e. g., Dumas, supra, at 1105.

[31] In determining whether a hired party is an employee under the general common law of agency, we have traditionally looked for guidance to the Restatement of Agency. See, e. g., Kelley v. Southern Pacific Co., 419 U. S. 318, 323-324, and n. 5 (1974); id., at 332 (Stewart, J., concurring in judgment); Ward v. Atlantic Coast Line R. Co., 362 U. S. 396, 400 (1960); Baker v. Texas & Pacific R. Co., 359 U. S. 227, 228 (1959).

[32] Neither CCNV nor Reid sought review of the Court of Appeals' remand order. We therefore have no occasion to pass judgment on the applicability of the Act's joint authorship provisions to this case.

21 F.3d 568
1994 Copr.L.Dec. P 27,242, 9
Indiv.Empl.Rts.Cas. (BNA) 532,
30 U.S.P.Q.2d 1365

AVTEC SYSTEMS, INCORPORATED, Plaintiff-Appellant,
v.
Jeffrey G. PEIFFER; Kisak-Kisak, Incorporated; Paul F.
Kisak, Defendants-Appellees.
AVTEC SYSTEMS, INCORPORATED, Plaintiff-Appellee,
v.
Jeffrey G. PEIFFER; Kisak-Kisak, Incorporated, Defendants-Appellants,
and
Paul F. Kisak, Defendant.

Nos. 92-2521, 92-2607.
United States Court of Appeals, Fourth Circuit.
 Argued June 7, 1993.
Decided April 6, 1994.

[569] ARGUED: John P. Corrado, Michael Lee Zupan, Hazel & Thomas, Alexandria, VA, for appellant. Douglas James Cole, Taylor, Newsome, Tinkham, Lefevere & Cole, Fairfax, VA, for appellees. ON BRIEF: William S. Taylor, Tommye Jolly-Tinkham, Taylor, Newsome, Tinkham, Lefevere & Cole, Fairfax, VA, for appellees.

Before ERVIN, Chief Judge, PHILLIPS, Circuit Judge, and GEORGE ROSS ANDERSON, Jr., United States District Judge for the District of South Carolina, sitting by designation.

Affirmed in part, vacated in part and remanded by published opinion. Judge PHILLIPS wrote the opinion, in which Chief Judge ERVIN and District Judge GEORGE ROSS ANDERSON, Jr., joined.

OPINION

PHILLIPS, Circuit Judge:

In these consolidated appeals, we consider a number of copyright and state-law claims arising from the parties' failure to memorialize their intentions regarding ownership of a computer program. We affirm in part, vacate in part, and remand for further proceedings.

I

The facts, as described by the district court, Avtec Systems, Inc. v. Peiffer, 805 F.Supp. 1312, 1315-17 (E.D.Va.1992), are as follows. Avtec Systems, Inc. (Avtec) markets space-related computer services and products to the federal government. Its services include computerized simulations of satellite orbital patterns. Jeffrey G. Peiffer began working part-time for Avtec while in college and became the company's fifth full-time employee upon his graduation in 1984. During his career with Avtec, his job description included "implement[ing] computer simulation" and, specifically, simulating "satellite orbits." J.A. 232-33.

In 1984, Avtec purchased a Macintosh computer at Peiffer's suggestion. After Peiffer demonstrated the computer's abilities to Avtec President Ronald Hirsch and other employees, it became apparent that the company's orbital simulations would be enhanced in several respects by using a Macintosh. It is disputed whether that idea originated with Peiffer alone or in discussions with other Avtec personnel; it also is disputed whether Avtec authorized Peiffer to begin developing a computer program for that purpose ("the Program") as he did in 1985. Peiffer demonstrated the Program--called "the .309 version"--to Hirsch and others at Avtec that same year, and again during his 1988 performance  [570] appraisal as evidence of his initiative on the job.

At that point, Hirsch and another Avtec employee suggested several modifications to enhance the Program's utility as a marketing tool for the company. Peiffer charged time to an Avtec account for making those enhancements. Peiffer also received a $5,000 bonus in early 1989 for helping to land a contract by demonstrating the Program as a unique Avtec service. He performed similar demonstrations for other clients as well. Later that year, Avtec issued a written policy, of which Peiffer was aware, binding employees to duties of confidentiality and nondisclosure respecting the company's proprietary information and trade secrets.

In early 1990, another Avtec employee found some bugs in the Program. After Peiffer fixed them, that other employee presented the corrected version to a client. In 1991, Avtec labeled the Program as a trademark and advertised it as unique to Avtec. J.A. 331. At no time before his eventual departure from Avtec did Peiffer represent to his employer or to its potential clients that he had an ownership interest in the Program.

In 1992, however, when Peiffer was asked to demonstrate the Program to NASA as part of a contract bid, he used the old, uncorrected .309 version without informing anyone at Avtec or NASA of that fact. Peiffer concedes that Avtec did not win that contract in part because he showed the outdated version. Shortly there after, when Peiffer was again asked to demonstrate the program, he refused and said that he didn't have a copy of it at the office.

Unbeknownst to Avtec, Peiffer had met Paul F. Kisak early in 1989 and granted Kisak's company, Kisak-Kisak, Inc. (KKI) an exclusive license to market the Program. Sales generated $197,000 in gross revenues for KKI, of which Peiffer received approximately half.

Avtec registered for a copyright in the .309 version of the Program on March 27, 1992. Six days later, Avtec commenced this action against Peiffer, Kisak, and KKI (collectively, "defendants") charging copyright infringement, misappropriation of trade secrets, and breach of fiduciary duty.^[1] Avtec also sought imposition of a constructive trust. On April 9, Peiffer registered his copyright claim in the .309 version, which he called MacOrbit, and another copyright claim in the 2.05 version, which he called the Orbit Program and identified as derivative of the .309 version. J.A. 1924-25. Defendants then counterclaimed for copyright infringement.

After a three-day bench trial, the court found that Peiffer owned copyright in the later version of the Program, reasoning that he had not created it within the scope of his employment as is required by 17 U.S.C.A. Sec. 201(b) (West 1977 & Supp.1993) in order for copyright to vest in an employer. Avtec, 805 F.Supp. at 1317-19. On that basis, the court denied Avtec relief on Count I and--pursuant to defendants' counterclaim--ordered Avtec to withdraw its registration of copyright.^[2] Id. at 1319, 1323.

Avtec prevailed on its state-law claims, however. The court held that, through its contributions to and use of the .309 version, Avtec had a trade secret in the use of that version as a demonstration and marketing device similar to "shop rights" that may arise in an employee's patented invention. The court also found that Peiffer and KKI had misappropriated that trade secret.^[3] Id. at 1320-21. Upon finding additionally that Peiffer breached fiduciary duties owed to Avtec, the court imposed a constructive trust. The terms required Peiffer and KKI: (1) to grant Avtec a perpetual license (as long as defendants had a copyright interest) to use the Program "for the same purposes as a purchaser might lawfully utilize it"; (2) to pay Avtec 15% of gross revenues received from the Program in perpetuity from March [571] 1, 1989; and (3) to give Avtec all current and forthcoming versions, enhancements, and upgrades of the Program before making them commercially available. Id. at 1322-23.

Avtec's appeal and the defendants' cross-appeal from unfavorable portions of the judgment followed and were consolidated for hearing and disposition in this court.

We discuss in order the issue of copyright ownership as it bears upon the conflicting claims of copyright infringement in Avtec's principal claim and the defendants' counterclaim, the disposition of Avtec's pendent state law claims for misappropriation of trade secrets and breach of fiduciary duty, and the imposition of a constructive trust in favor of Avtec.

To recover on its copyright claim, Avtec had to show that it owned a valid copyright in the Program and that defendants encroached upon one of the exclusive rights it conferred. 17 U.S.C. Sec. 501(a); Trandes Corp. v. Guy F. Atkinson Co., 996 F.2d 655, 660 (4th Cir.), cert. denied, --- U.S. ----, 114 S.Ct. 443, 126 L.Ed.2d 377 (1993). Those rights include the control of reproduction, distribution, and performance or display of the original, as well as the production of derivative works.^[4] 17 U.S.C. Sec. 106.

These rights presumptively vest in the author--the one who translates an original idea into a fixed, tangible means of expression.^[5] Id. Sec. 102(a). The presumption of authorial ownership falls, however, if the work is made "for hire," such as one "prepared by an employee within the scope of his or her employment." Community for Creative Non-Violence v. Reid, 490 U.S. 730, 737-38, 109 S.Ct. 2166, 2171, 104 L.Ed.2d 811 (1989) (quoting 17 U.S.C. Secs. 101(1), 201(b)). Under those circumstances, copyright vests in the employer for whom the work was prepared. Id. at 737, 109 S.Ct. at 2171. This exception is overridden only by a clear writing reserving authorship rights to the employee, 17 U.S.C. Sec. 201(b), which concededly did not exist in this case.

It is essentially undisputed that Peiffer was Avtec's employee at the time of the Program's inception. The contested issue throughout has been whether Peiffer created the Program within the scope of his employment. Reid instructs that common-law agency principles govern resolution of that question. 490 U.S. at 739-40, 109 S.Ct. at 2172-73 (citing Restatement (Second) of Agency Sec. 228 (1958)). As expressed in Section 228 of the Restatement, the key principle is that a servant's conduct is within the scope of employment "only if: (a) it is of the kind he is employed to perform; (b) it occurs substantially within the authorized time and space limits; [and] (c) it is actuated, at least in part, by a purpose to serve the master."

We agree with the district court that creation of the Program was "of the kind" of work Peiffer was employed to perform. See 805 F.Supp. at 1318. When that element of the Restatement test is met, courts have tended not to grant employees authorship rights solely on the basis that the work was done at home on off-hours. See Miller v. CP Chems., Inc., 808 F.Supp. 1238, 1242-44 (D.S.C.1992) (computer program prepared at home during off-hours, without direction or extra compensation from employer held work-for-hire), appeal dismissed, No. 93-1045 (4th Cir. April 13, 1993); Marshall v. Miles Lab., Inc., 647 F.Supp. 1326, 1330 (N.D.Ind.1986) (same, regarding article written for publication in scientific journal); In [572] re Simplified Info. Sys., Inc., 89 B.R. 538, 542 (W.D.Pa.1988) (same, regarding computer software).

On the other hand, copyright does not vest in the employer solely because "the subject matter of the work ... bears upon or arises out of the employee's activities for his employer." Melville B. Nimmer, 1 Nimmer on Copyright Sec. 5.03[B][b][i] at 5-28 (1993) ("Nimmer "). Thus, Avtec had to show that Peiffer was at least "appreciabl[y]" motivated by a desire to further its corporate goals in order to satisfy the third element of the work-for-hire test. Restatement (Second) of Agency Sec. 236 cmt. b; id. Sec. 235 (act falls beyond scope of employment if "done with no intention" to serve master) (emphasis added).

The district court found that Peiffer had not developed version 2.05 of the Program "within Avtec authorized time and space limits ... [and] was [not] motivated, at least in part, by a purpose to serve Avtec." 805 F.Supp. at 1318-19. On this basis, the court held that copyright vested in Peiffer, not in Avtec, and accordingly rendered judgment in favor of defendants on Avtec's claim and on their counterclaim.

Avtec contends that the district court should have applied the scope-of-employment test more flexibly in light of its finding on the pendent state-law claims that Peiffer breached duties that he owed to Avtec as its employee.^[6] See id. at 1316-17. Defendants rightly question whether the outcome of pendent state-law claims may drive the analysis of the federal claim upon which jurisdiction is based. But we conclude that the court did err, however, by injecting into the analysis of copyright ownership an element contemplated neither by the Restatement's scope-of-employment test nor by the law of copyright generally--i.e., the court's preliminary finding that the .309 version of the Program differed materially from the 2.05 version in terms of the use to which it was put in the marketplace.

To reiterate, copyright protects not original ideas but their incarnation in a tangible means of expression. See generally Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). It appears undisputed that the original expression at issue here is embodied in the source code for the .309 version of the Program.^[7] The commercial use to which that work is put does not alter the owner's exclusive rights to copy it and to prepare derivative works based upon it.^[8] Cf. Mazer v. Stein, 347 U.S. 201, 218, 74 S.Ct. 460, 471, 98 L.Ed. 630 (1954) (exclusive rights undiminished regardless of the "intended ... or [actual] use in industry" to which the work is put); Rogers v. Koons, 751 F.Supp. 474, 477 (S.D.N.Y.1990), aff'd, 960 F.2d 301 (2d Cir.), cert. denied, --- U.S. ----, 113 S.Ct. 365, 121 L.Ed.2d 278 (1992).

Instead of focusing upon the question whether the .309 version was created within the scope of Peiffer's employment, however, the district court made a preliminary finding that Avtec used the original version solely as "a demonstration and marketing device," while the later 2.05 version was a " 'stand-alone' software package that could be marketed commercially," which Avtec neither  [573] could nor would have developed.^[9] 805 F.Supp. at 1316. Relying on this utilitarian distinction between two versions of the program, the court expressly confined its decision on the question of copyright ownership to "the current 2.05 version" of the Program. Id. at 1318-19. Finding dispositive the facts that Peiffer worked on the Program at home, on his own equipment and time, as a "personal hobby, and not to satisfy specific work obligations for Avtec," the court reasoned that "while Peiffer allowed earlier versions of the Orbit Program to be used by Avtec for various client demonstrations, Avtec did not ... persuade the Court that Peiffer's development of the 2.05 version ... was actuated by his desire to serve Avtec" and held that Avtec could not "claim complete or joint ownership of the 2.05 version." Id. at 1319 (emphases added).

Defendants urge us to extend this express language to encompass the .309 version as well, arguing that such a finding is implicit in the court's order that Avtec withdraw its registration of copyright in that version. We do not believe the implication is possible; several factors weaken it. The first, of course, is the court's deliberately exclusive focus upon the 2.05 version in its express references to Peiffer's copyright ownership. The court did describe him as "the .309 version's creator," Id. at 1320, but that passing reference occurs in its discussion of Avtec's trade secret claim--in which consideration of Peiffer's copyright interest is, as we discuss below, notably absent, and in which the court found that Avtec had a significant interest in the "use" of the .309 version. Moreover, the court held that "Peiffer owns the version of the Orbit Program for which he made copyright application," id. at 1323, when he had in fact applied for copyright in both versions.

These factors call into question both the court's assessment of the evidence before it and its application of the law to the facts of the case. Anticipating our de novo review of the legal component of the scope-of-employment issue, the parties emphasize conflicting evidence supporting their respective positions on that issue. Avtec points to evidence that it authorized Peiffer to work on the project at home during off-hours and contends that Peiffer's resulting behavior compels the inference that he intended the work, at least in part, to contribute to Avtec's successful pursuit of its business objectives.^[10] Defendants counter with the evidence relied upon by the district court that Peiffer developed the Program as a hobby and that Avtec failed to exercise significant control or supervision over the project.^[11]

As indicated, we have concluded that the district court's resolution of the scope-of-employment issue was flawed by a misapprehension of the controlling legal principles. We are not in a position to resolve that heavily fact-laden issue in the first instance; among other reasons, credibility could be decisive. Though we regret the necessity,  [574] we must instead vacate those portions of the judgment respecting the claim and counterclaim for copyright infringement and remand those claims for reconsideration, in light of this opinion, of the dispositive common issue whether the original Program was created within the scope of Peiffer's employment. If upon that reconsideration the court again concludes that it was not so created, the court should of course again give judgment in favor of defendants on Avtec's copyright claim, and must of course then also reconsider the effect of such a finding upon defendants' counterclaim for copyright infringement.^[12] Should the court conclude instead that Peiffer created the .309 version within the scope of his employment with Avtec, it must then determine whether defendants infringed the copyright (for example, by preparing unauthorized derivative works^[13]); whether Kisak and KKI are liable for such infringement; and any statutory remedies that may be warranted by wrongful copying of protected material.^[14] 17 U.S.C. Secs. 502-505.

II

On their cross-appeal from the judgment against them on Avtec's claim for misappropriation of trade secrets, the defendants raise two major issues. Apparently for the first time on appeal, they contend that the trade secrets claim is preempted by the federal provision of a cause of action for copyright infringement. See generally Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661 (1964). Because Avtec did not treat the issue as waived, and because we find it necessary to vacate the judgment and remand for reconsideration of the trade secrets claim, we note that the defense must fail under this circuit's recent decision in Trandes Corp., 996 F.2d at 660.

The Trandes court considered whether the Copyright Act preempted an action brought under Maryland's trade secrets statute which, like the Virginia law at issue here, closely tracks the Uniform Trade Secrets Act. Compare Md.Com.Law II Code Ann. Sec. 11-1201(e) (1990 & Supp.1993) with Va.Code Ann. Sec. 59.1-336 (Michie 1992) and UTSA (reprinted in 2 R. Milgrim, Trade Secrets app. A (1991)). We rejected the preemption defense on the basis that recovery for trade secret misappropriation requires proof of breach of confidence--an element of proof additional to those necessary for recovery in an action for copyright infringement. Trandes, 996 F.2d at 659-60; H.R.Rep. No. 1476, 94th Cong., 2d Sess. 132 (1978) reprinted in 1976 U.S.C.C.A.N 5659, 5748 (anticipating no preemption of actions to enforce "[t]he evolving common law rights of ... trade secrets ... as long as the cause[ ] of action contain[s] elements, such as ... a breach of trust or confidentiality, that are different in kind from copyright infringement."). The same result follows here.

Defendants argue alternatively that the trade secrets claim fails on the merits. In Virginia, a trade secret is information such as "a formula, pattern, compilation, program, [575] device, method, technique, or process" that has independent economic value due to its secrecy and that is subject to reasonable attempts to keep it secret. Va.Code Ann. Sec. 59.1-336. Misappropriation is the improper acquisition or disclosure of a trade secret by one who "knew or had reason to know" that acquisition occurred "under circumstances giving rise to a duty" to maintain confidentiality. Id. Thus, the hallmark of a trade secret is not its novelty but its secrecy. Dionne v. Southeast Foam Converting, 240 Va. 297, 397 S.E.2d 110, 113 (1990).

The court found that Avtec had an interest--described variously as a "trade secret," a "license," and a "right" akin to the equitable "shop rights" of patent law--in the "use of the .309 version ... as a demonstration and marketing device." 805 F.Supp. at 1320. There is no difficulty in finding the existence of a trade secret in the source or object codes to computer programs where question of copyright ownership is not in issue, Trandes, 996 F.2d at 662, or, even more clearly, where the owner of the alleged trade secret also owns copyright in the material sought to be protected.^[15] E.g., Computer Assocs. Int'l., Inc., 982 F.2d at 715-16, 720. Of course, a plaintiff "may not obtain a double recovery where the damages for copyright infringement and trade secret misappropriation are coextensive." Id. at 720.

But defendants rightly question a judgment that, in effect, imposes liability upon a copyright owner for "misappropriating" his own work.^[16] As discussed above, the court made no express finding that Peiffer owns copyright in the .309 version of the Program, and that question has been remanded for resolution by the district court. Expressing no opinion upon it, we do note a critical consequence of a ruling upon it in Peiffer's favor in regard to Avtec's trade secret claim. It would mean that from the moment of the Program's inception, Peiffer has owned the exclusive right to license performances of the original and of any derivative works. And as discussed above, absent a written agreement regarding Avtec's use of the Program, any use license held by Avtec would be implied and therefore nonexclusive. See n. 12, supra. Avtec offers no authority, and we have found none, for the proposition that the alleged "owner" of a trade secret, Dionne v. Southeast Foam Converting & Packaging, Inc., 240 Va. 297, 397 S.E.2d 110, 113 (1990), could maintain the secrecy of material that is subject under federal law to publication at the will of another. We do not believe that a nonexclusive use license in copyrighted material can support the reasonable expectation or right of secrecy necessary to predicate a claim that the identical material is a trade secret protectible under Virginia law.^[17] See Restatement (First) of Torts Sec. 757 cmt. b (1939) (trade secret must have "a substantial element of secrecy ... so that, except by the use of improper means, there would be difficulty in acquiring the information"; one factor in determining trade secrecy is the ease or difficulty with which the information could be properly acquired by others) (emphasis added).

For the above reasons, we must vacate the portion of the judgment in favor of Avtec on its trade-secret claim, and remand it for reconsideration in light of this opinion. [576]

III

Peiffer argues that the district court erred as a matter of law in concluding that he bore any fiduciary duties toward Avtec and that he breached those duties. We have considered his arguments, and reject them. "A fiduciary relationship exists in all cases when special confidence has been reposed in one who in equity and good conscience is bound to act in good faith and with due regard for the interests of the one reposing the confidence." H-B Ltd. Partnership v. Wimmer, 220 Va. 176, 257 S.E.2d 770, 773 (1979). Employees owe their employers the duty to "be candid ... and [to] withhold no information which would be useful to the employer in the protection and pursuit of its interests." Community Counselling Serv., Inc. v. Reilly, 317 F.2d 239, 244 (4th Cir.1963). The district court rightly found that Peiffer breached those duties through his nondisclosure of his business relationship with Avtec's competitor KKI and by demonstrating the outdated version of the Program to Avtec's detriment and without its knowledge.

IV

In view of our disposition of the various claims, the remedial portion of the district court's judgment, including the constructive trust it imposed, must be vacated, with appropriate remedy to abide results on remand. If the court were to conclude that Avtec does hold copyright in the .309 version and all derivatives, any infringement of its exclusive rights may be remedied as provided under the statute. 17 U.S.C. Secs. 502-505. Specifically, Avtec would be entitled to all revenues generated through the infringement, and not merely a percentage of profits as was awarded under the constructive trust, and Avtec need only show, as it has, defendants' gross profits from the Program. Id. Sec. 504(b). If Avtec were to prevail on the reconsidered trade secret claim, the court should award such damages, not coextensive with any awarded for copyright infringement as could be shown. Computer Assocs. Int'l., Inc., 982 F.2d at 720.

Conversely, if the court finds against Avtec on the issue of copyright ownership, its damages would be limited to those flowing from the breach of fiduciary duty whose finding by the district court we have affirmed, while the defendants' recovery on their counterclaim would be limited to such statutory damages as they could prove entitlement to.

V

To summarize. We vacate those portions of the judgment which pertain to Avtec's claim and the defendants' counterclaim for copyright infringement, and remand for further proceedings consistent with this opinion. We vacate that portion of the judgment finding defendants liable to Avtec on the latter's claim for misappropriation of trade secrets, and remand that claim for further proceedings consistent with this opinion. We affirm that portion of the judgment determining that Peiffer breached fiduciary duties owed to Avtec. We vacate the entire remedial portion of the judgment to abide the determination of liability on the various claims upon remand.

SO ORDERED.

[1] A claim for misappropriation of business opportunity was later withdrawn.

[2] The court found that defendants-counterclaimants failed to prove damages from the "alleged" violation of Peiffer's copyright, and denied all parties costs and fees. 805 F.Supp. at 1323.

[3] Kisak had by then been dismissed as a defendant from all but the copyright infringement claim.

[4] A "derivative work" is a work based upon one or more preexisting works, such as a translation ... or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a "derivative work."

To "perform" a work means to recite [or] render ... it, either directly or by means of any device or process....

17 U.S.C. Sec. 101.

[5] The protected material in this case consists of the Program's source and object codes. Human beings write source codes, but computers can't read them until they are mechanically translated by compiling programs into object codes, which tell computers how to process data. Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 698 (2d Cir.1992). The parties have not raised, and we do not address, the issue of the potentially separate copyrightability of any screen displays arising from the Program's operation. See id. at 703.

[6] Because Avtec does not raise the issue, we do not address the court's rejection of the alternative contention that Avtec's copyright in the Program arose from its joint authorship of the work with Peiffer. See 805 F.Supp. at 1319.

[7] Thus, we reject as meritless defendants' contention that Avtec seeks copyright on ideas, not expression. See Appellee Br. 27-28.

[8] Certain types of noncommercial use may, of course, provide a "fair use" defense to a claim of copyright infringement, 17 U.S.C. Sec. 107, but there is no contention that the defense is applicable in this case.

We also note, for clarity's sake, a matter addressed by neither party: Publication of works prior to March 1, 1989 without notice of copyright ownership risks forfeiture of the Copyright Act's protections. 17 U.S.C. Secs. 401, 405; Michael D. Scott, Scott on Computer Law Sec. 3.37 (1991). Publication occurs upon "the distribution of copies ... by sale or other transfer of ownership" and by "offering to distribute copies ... for purposes of further distribution, public performance, or public display." 17 U.S.C. Sec. 101. "A public performance or display of a work does not of itself constitute publication," however, id., and it is generally agreed that "publication does not include the distribution of copies under an obligation of confidence." Scott Sec. 3.37 at 3-134.

[9] The court's analysis illustrates the tension between copyright law's competing policies of rewarding individual initiative and creativity versus promoting broad public access to original works, Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156, 95 S.Ct. 2040, 2044, 45 L.Ed.2d 84 (1975), and implies an intention to resolve that conflict, at least with respect to computer programs having a relatively short market life, in favor of broad access. See Matthew R. Harris, Note, Copyright, Computer Software, and Work Made for Hire, 89 Mich.L.Rev. 661 (1990).

To the extent that any functional difference between the versions resulted from revisions of the original, the matter properly is addressed through derivative-works analysis undertaken after resolution of the copyright-ownership issue. See generally Stewart v. Abend, 495 U.S. 207, 110 S.Ct. 1750, 109 L.Ed.2d 184 (1990).

[10] It is uncontested that Peiffer invoked the .309 version to show his initiative at Avtec; that he made changes suggested by Avtec managers; that he demonstrated the Program at their request; that he was rewarded for doing so with a sizeable cash bonus; that he modified the Program at the suggestion and with the aid of other Avtec employees, billing the time to a specified Avtec account on at least one occasion; and that he failed at any relevant time to allege any proprietary interest in the Program. See 805 F.Supp. at 1315-16.

[11] The district court rightly questioned the extent to which an employer's control over a work remains a dispositive factor in "work for hire" analysis following the Supreme Court's qualified rejection of such analyses in Reid, 490 U.S. at 738-39, 109 S.Ct. at 2171-72. See 805 F.Supp. at 1318.

[12] As to that possibility, we offer these observations for such guidance as they may provide the court upon any reconsideration of the counterclaim. While, as the district court properly found, assuming Peiffer owned copyright, any infringement that occurred caused defendants no actual damage, Appellee Br. 47, defendants rightly contend that 17 U.S.C. Sec. 504(c) mandates consideration of statutory damages in lieu of actual damages, with modifications for instances of "innocent infringement." On this issue, we note that the court found implied in Peiffer's conduct a grant to Avtec of a limited use license in the Program. 805 F.Supp. at 1320. Expressing no view on the factual basis for that holding, which is not now in issue, we further note that such an implied license is necessarily nonexclusive and revocable absent consideration. See MacLean Assocs., Inc. v. Wm. M. Mercer-Meidinger-Hansen, Inc., 952 F.2d 769, 778-79 (3d Cir.1991); 3 Nimmer Sec. 10.02[B]. Thus, while an implied license may fail to vest a proprietary interest in the licensee that is enforceable against other licensees, it may provide a defense--properly pled by Avtec, J.A. 85--to the counterclaim. See MacLean Assoc., 952 F.2d at 779.

[13] Peiffer and KKI concede that "all versions of the Orbit Program" are "to some extent" derivative of the original .309 version, Appellee Br. 29. See Stewart, 495 U.S. at 223-24, 234-36, 110 S.Ct. at 1761-62, 1767-68.

[14] The parties concede that it is within the district court's discretion to award or deny attorneys' fees as part of the costs of the action. 17 U.S.C. Sec. 505.

[15] Although Avtec alleged in its complaint that defendants misappropriated its trade secrets in "the Program," in its client lists, and in its marketing techniques, J.A. 22-23, on appeal it focuses argument exclusively on the alleged trade secret in the Program, Appellant Reply Br. 21-26, and we confine our decision accordingly.

[16] With respect to whether copyright ownership may provide a defense to a claim for misappropriation of trade secrets, the defense cannot be overcome by invoking patent-law "shop rights." Congress expressly declined to incorporate such rights into copyright law. See 1 Nimmer Sec. 5.03[C] (citing H.Rep. No. 1476, supra, at 121, reprinted in 1976 U.S.C.C.A.N. at 5736-37).

[17] We reject defendants' argument that, even if Avtec had a trade secret, secrecy was lost when the company demonstrated the Program to clients. Trandes, 996 F.2d at 663-64. We do not address the alternative contention that Avtec failed to take reasonable steps to protect the secrecy of the source code because we anticipate reconsideration of the evidence on remand, noting only a tension between the district court's finding that Avtec did take such precautions, 805 F.Supp. at 1320, and the court's prior observation that "[t]he evidence is far from convincing that Avtec ever continuously possessed the software." Id. at 1319.