Lead Opinion
Langman Fabrics appeals from the summary judgment entered against it in the United States District Court for the South-
Langman Fabrics is a converter of textiles, meaning that it converts greige goods (raw cloth) into finished solid or printed fabrics to sell to clothing manufacturers. Langman Fabrics is an unincorporated two-person operation;
On December 7, 1984, Langman Fabrics filed a copyright registration certificate with the United States Copyright Office for “Pattern # L-303 Plume,” a design for textiles, as a “work made for hire” with a first publication date of July 1, 1984. Langman Fabrics printed fabric with the design bearing the copyright notice: “COPYRIGHT LANG-MAN FABRICS.”
Fashion Initiatives’ catalog of available prints included the feather pattern that Langman Fabrics contends is copied from Langman’s design. On December 8, 1995, a clothing manufacturer placed an order with Fashion Initiatives for 3,000 yards of the fabric. Fashion Initiatives in turn ordered the fabric from Samsung, a fabric broker, which ordered the fabrie from E-Star, a Korean manufacturer. Samsung arranged to import the fabric into the United States.
Langman Fabrics filed this copyright infringement suit against Fashion Initiatives and Samsung America.
Aaron Langman initially gave a deposition describing briefly how the plume design was created. He created it with a freelance artist working with him, and asked her to do a feather pattern similar to what the Three Musketeers wore in their hats with a soft, flowing, moving feathery pattern. She did a painting whiсh he was not quite satisfied with. He made verbal, face-to-face corrections. He wanted the feathers finer and brought in a little more, and the repeat not to be overbearing, and he wanted certain colorings. He does not know how to draw. The artist made the corrections and Lang-man sent the design to Japan for printing. Langman stated that the artist was not an employee of Langman Fabrics.
After this deposition, and relying on it, Fashion Initiatives and Samsung filed their summary judgment motion arguing that Langman Fabrics was not entitled to ownership of the copyright under the work-for-hire provision, because Aaron Langman had admitted that the young woman who painted the design was a freelance artist and not an employee of Langman Fabrics. They also argued Langman forfeited its copyright by its failure to reproduce the first year of publication on its copyright notice, in accordance with 17 U.S.C. § 401(b)(1994).
Langman Fabrics responded to the motion by filing an affidavit by Aaron Langman
The district court declined to rule on the summary judgment motion because it did not consider the record before it adequate to resolve the work-for-hire question. The court stated, “[M]ore information along the lines set out in Aymes v. Bonelli
Accordingly, Aaron Langman was deposed a second time and testified at greater length on the circumstances under which the plume design was created. Aaron Langman produced a feather, which he said he had purchased in 1984, but had misplaced until he happened to come across it by coincidence shortly before his deposition.
He had the idea to create an airy, plume type of feather like the ostrich feathers in the hats in the movie The Three Musketeers. He wanted to create a pattern that was commercially feasible from that type of look. He played around with feathers on paper, laying them out in a manner that wоuld be commercially feasible, and asked the artist to do a pencil drawing the way he laid them out. He made copies on the photocopier and played around with cutting out the feathers and laying them on a paper to approximate the look he wanted. He instructed the artist to bring the feathers closer together for the fine lines to overlap other feathers, because he didn’t want too much space showing. He practically, stood over the assistant because he wanted a certain look and a certain feeling. Of the four hours she spent on the pencil drawing, he stood over her for two of them. He instructed her to make further corrections to the drawing. After the drawing he picked colors from Japanese silk books that contained over 500 colors, and cut off little tabs and told her to do the colorings in one feather or the other. He wanted off-white, he wanted to reverse the fuschia with jade, he wanted a navy background, and he wanted the colors to be balanced. The artist was paid twenty-five dollars a day and while Langman thought she did not receive employee benefits or have taxes withheld, Gerald Block who handled the business aspects, testified that she received normal business benefits, whether disability or workmen’s compensation, and FICA, and income taxes were deducted from her pay. She did not receive medical benefits.
After the supplemental discovery, the district court entered summary judgment for the defendants. The court held that, applying the work-for-hire criteria set out in Community for Creative Non-Violence v. Reid,
Alternatively, the court held that Langman Fabrics had failed to preserve its copyright by affixing a proper copyright notice. Lang-man Fabrics’ copyright notice did not include the year of first publication. The court held that the design did not come within the exemption of 17 U.S.C. § 401(b)(2) allowing omission of the year date for works incorporated in useful articles. The court relied on a letter frоm an attorney in the Copyright Office which stated that “[a]ny such design per se is not considered to be a useful article.”
I.
On appeal Langman Fabrics argues that the district court erred in failing to view the facts in the light most favorable to it, the party resisting summary judgment. In particular, Langman Fabrics contends that the district court wrongly failed to give any effect to the account in Aaron Langman’s second deposition of the circumstances of the plume design’s creation, and refused to recognize Block’s testimony that he withheld taxеs from the artist’s pay.
We review the district court’s entry of summary judgment de novo. See Rodriguez v. City of New York,
Under 17 U.S.C. § 201(b), “In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.” The statute defines “work made for hire” as “a work prepared by an employee within the scope of his or her employment.” 17 U.S.C. § 101 (1994). Accordingly, Langman Fabrics owns the copyright to the plume design if the person who created it was a Langman Fabrics employee acting within the scope of her employment. However, if the creator of the design was an independent contractor, then that person owns the rights to the work. The Supreme Court held in Reid that common law agency principles govern ownership of the copyright under the work-for-hire doctrine.
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. Among the other factors relevant to this inquiry are the skill required, the source of the instrumentalities and tools; the location of the work; the duration of the relationship between the parties; whether the hiring party has the right to assign additional projects to the hired party; the extent of the hired party’s discretion over when and how long to work; the method of payment; the hired party’s role in hiring and paying assistants; whether the hiring party is in business; the provision of employee benefits; and the tax treatment of the hired party.
Id. at 751-52,
Not all the Reid factors will be significant in every case, and we must weigh
(1) the hiring party’s right to control the manner and means of creation; (2) the skill required [of the hired person]; (3) the provision of employee benefits; (4) the tax treatment of the hired party; (5) whether the hiring party has the right to assign additional projects to the hired party.
Aymes,
Questions of historical fact relevant to applying each factor are for the finder of fact, see Carter v. Helmsley-Spear, Inc.,
A.
The district court’s analysis of the Reid factors ran onto procedural shoals when the district court determined that it should not consider the testimony in Aaron Lang-maris affidavit and second deposition concerning the creation of the design because it was contradictory to Langman’s first deposition.
In the first deposition, Aaron Langman said that the feather idea was his, and that he instructed the artist that he wanted a soft, flowing movement reminiscent of the plumes in the hats of the Three Musketeers. He told how the artist painted the design, but he was not satisfied, and asked her to redo the painting, telling her to “[bring it] in a little more” and to make the feathers finer. He also said he picked the colors. After the corrections, he aрproved the painting and sent it off to be printed. He also said that the artist was not an employee of Langman Fabrics.
In the affidavit, Aaron Langman did attempt to backpedal on his earlier legal characterizations that the artist was not an employee and that she was a “freelance artist.” However, his baekpedaling consisted not in contradicting earlier factual statements (as opposed to legal conclusions), but in giving more details relevant to the employment question. For instance, he said the young woman reported to Langman Fabrics for work every day, conducted all her work at Langman’s place of business, and worked under his close supervision.
The district court declined to rule on the summary judgment motion, advising the partiеs that it would need more facts to resolve the work-for-hire issue.
Aaron Langman then gave additional deposition testimony describing in laborious detail, frequently at the urging of Fashion Initiatives’ counsel, the circumstances of the feather design’s creation. In this deposition he produced one of the three original feathers depicted in the painting. He described how he had arranged the feathers in a “commercially feasible” manner and photocopied them. He gave the photocopy to the artist to copy in her pencil drawing. He said that he stood over her and gave her instructions about the tapering of the feathers, the size of the feathers, the overlapping, the spacing, the thickness, the relationship of one feather
The district court, comparing the two depositions, concluded that Aaron Langman had given two contradictory accounts:
[I]n his second deposition [he] departs radically from his earlier testimony. Suddenly, he actually created the design. He arranged photocopies of ostrich feathers and then asked the artist to draw a pencil sketch. This does not create a genuine issue of material fact so аs to defeat a motion for summary judgment. It is well-settled that a party may not defeat such a motion by submitting an affidavit that disputes his prior sworn testimony. Trans-Orient Marine Corp. v. Star Trading & Marine, Inc.,925 F.2d 566 , 572 (2d Cir.1991) (citing Mack v. United States,814 F.2d 120 , 124 (2d Cir.1987)).
Similarly, the district court noted a conflict between Aaron Langman’s testimony that he paid the artist “$25 [per day] and that was it” and Block’s testimony that he withheld taxes for her.
We have indeed held that a party may not create an issue of fact precluding summary judgment by offering an affidavit that contradicts his earlier sworn testimony in the case. See Mack v. United States,
[although a party does not show a triable issue of fact merely by submitting an affidavit that disputes his own prior sworn testimony, a material issue of fact may be revealed by his subsequent sworn testimony that amplifies or explains, but does not merely contradict, his prior testimony, especially where the party was not asked sufficiently precise questions to еlicit the amplification or explanation.
Rule v. Brine, Inc.,
Aaron Langman’s initial testimony revealed that he was uncertain and that Block was a better source of information about financial arrangements. It was Aaron Lang-man’s consistent position that he was the creative end of the business and that Block would be the one to know about financial details. Langman’s actual testimony was avowedly uncertain:
Q: Were there any taxes withheld?
A: I don’t know.
Q: Who would know that?
A: I don’t think so. I think we paid her $25.00 and that was it.
Although Langman’s later account of the design’s creation is far more detailed than the first, the additional factual details concerning the use of photocopied feathers and the extent of his control over the artist’s work are not inconsistent with his first, brief account. Indeed, the district court’s order suggesting further discovery on the work-for-hire issue actually invited the parties to develop the record. The expanded record included Block’s testimony, which supported the conclusion that the artist was an “employee” within the meaning of the Reid test. Though, of course, a finder of fact may conclude that the later elaboration suggests fabrication, we are not prepared to say as a matter of law that Aaron Langman’s expanded version of the creation story cannot be considered at the summary judgment stаge.
Aaron Langman’s attempt to undo the harmful implication of his statement in the first deposition that the artist was not an employee does result in a conflict between the two depositions. However, since Lang-man’s statement expressed a legal conclusion that he was not fully qualified to render, it is reasonable to allow him to testify about facts
B.
We therefore have somewhat different facts to weigh in the Reid balance than those considered by the district court. When we take into account Aaron Langman’s second deposition, the first Reid factor, “the hiring party’s right to control the manner and means by which the product is accomplished,”
The level of ■ skill requirеd of the hired person weighs in favor of independent contractor status, since Aaron Langman said that he hired the artist because he himself could not draw. See Aymes,
Employee benefits and tax treatment, viewed in the bght most favorable to Lang-man Fabrics, weigh in favor of employee status, since Block testified that he withheld tax for the artist and that she received such benefits as disability and worker’s compensation, though not medical insurance.
The location and regularity of the work help Langman Fabrics, since the artist drew and painted the design at Langman Fabrics’ place of business so that Aaron Langman could collaborate with her as she worked. Aaron Langman testified that the artist did other work for him, and that she worked regular hours, from about 1:00 to 4:00 p.m. every afternoon; these two factors support a finding of employment. See Marco,
The source of the artist’s equipment is an indeterminate factor in this case, since the artist selected her own equipment, but Lang-man Fabrics paid for it.
It is clear from the record that Langman Fabrics was in the fabric design production business, so that producing such a design was integral, rather than cobateral, to its business.
On the record in this case, the “parties’ intent” factor is a matter of credibility for the trier of fact. Aaron Langman’s dеscription of the artist as “freelance” suggests independent contractor status. Hi-Tech,
Finally,- Aaron Langman testified that the artist worked for him for about three months.
In sum, resolving all factual disputes favorably to Langman Fabrics, the evidence would support a holding that the artist was Lang-man Fabrics’ emрloyee under the Reid test. Langman Fabrics therefore made an adequate showing that it was the author of the design under the work-for-hire doctrine, and it should have been allowed to proceed to trial under this theory.
Alternatively, Langman Fabrics argues that its employee, Aaron Langman, qualified as sole or joint author of the design. The district court did not reach this question because it refused to consider the evidence in Aaron Langman’s second deposition that would support such a theory. Since we hold that Langman Fabrics can rely on Aaron Langman’s later testimony, the district court should also consider whether Langman has made a sufficient showing to survive summary judgment on the theory that Aaron Langman was an author of the design.
The defendants argue that even if Langmаn Fabrics was the author of the design under the work-for-hire doctrine, it invalidated its copyright when it failed to comply with the requirement in 17 U.S.C. § 401(b)(2) that a copyright notice include the year of first publication.
The district court held that “fabric design is not considered a useful article for purposes of the copyright laws.”
“Useful article” is defined in the Copyright Act as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” 17 U.S.C. § 101. A fabric that was made merely as a medium to display a design, such as a wall hanging or a sampler, would not fit the definition. See Patry, supra. On the other hand, Aaron Langman testified that his fabrics were made to be used in the manufacture of dresses and sportswear. These fabrics would thus have utilitarian functions of providing warmth and decency.
The defendants argue that the fabric not yet made into elothing is not useful, but only hаs the potential to be made into a useful article. The statutory definition of “useful article” includes its components: “An article that is normally a part of a useful article is considered a ‘useful article.’” 17 U.S.C. § 101. Thus, the necessity of an item being incorporated in a larger article does not deprive it of “usefulness” under the statute.
The district court relied on a letter from an attorney in the Copyright Office of the Library of Congress. The court held that it must defer to any reasonable interpretation of the Copyright Act by the Copyright Office. However, this letter failed to distinguish between fabric design and the fabric on which a design is printed. The letter refers to “design per se,” whereas this case deals with a design imprinted on fabric. The letter then goes on to discuss fabric which has bеen manufactured into clothing, which is also beside the point in this case. Although he does not say so directly, the writer of the letter appears to assume that fabric is not a “useful article” until its final manufacture into finished articles of clothing.
The implicit assumption in the letter that fabric itself is not a useful article is apparently contradicted in the 1984 Compendium II of Copyright Office Practices, section 1006, “Year date in the copyright notice”: “Those textiles and fabrics which are useful articles do not require a year date.... ” This section of the Compendium does not distinguish between stages of manufacture by differentiating “fabrics” from “garments.” Instead, the Compendium distinguishes between “fabrics” which are useful and those which are not. If any “fabric” is useful, fabric that is made to be wоrn as clothing surely is.
Moreover, the legislative history to the Copyright Act of 1976 also reflects the understanding that fabrics are generally classified as useful. The House Report discusses the Act’s definition of “useful article.” After explaining that the primary purpose of the concept in the copyright law is to distinguish between “copyrightable works of applied art” and “uncopyrighted works of industrial design,” the Report continues, “A two-dimensional painting, drawing, or graphic work is still capable of being identified as such when
The plain meaning of the statute and the implicit meaning of the Copyright Office’s Compendium require a holding that fabric manufactured for the purpose of being made into clothing is a “useful article” within thе meaning of section 401(b)(2). Langman Fabrics therefore did not invalidate its copyright by failing to include the year of first publication in its copyright notice.
III.
Finally, as an alternative basis for upholding the district court’s entry of judgment on a ground not considered by the district court, the defendants contend that they have established prior independent creation of the plume design. Fashion Initiatives filed the affidavit of its president, Barry Bernstein. According to Bernstein, his former company, Tigress Pride, bought fabric with the feather pattern that is the subject of this case from a Korean converter in 1982 and sold the fabric to a Canadian company at that time. (Aaron Langman testified that he created his plume design in 1984.) Representatives of the Korean and Canadian companies filed affidavits consistent with Bernstein’s testimony, together with copies of undated fabric swatches said to be from 1982.
Langman Fabrics has come forward with the only evidence of copying available to it— access and prоbative similarity between its design and the design Fashion Initiatives sold.
We have recently held that when a copyright plaintiff establishes a prima facie case of infringement and the defendant adduces testimony of interested parties claiming independent creation, the plaintiff need not present direct evidence contradicting the independent creation theory to avoid summary judgment. See Repp v. Webber,
We reverse the district court’s entry оf summary judgment and remand for trial.
Notes
.Section 201(b) provides:
Works Made for Hire. — In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.
. There is some dispute about whether Aaron Langman is an employee or an independent contractor; he describes himself as an "employee”, but the defendants point to evidence that he is paid as an independent contractor.
. Graff Califomiawear, Inc. and Arizona Mail Order Company, Inc. were originally named as defendants but settled and were dismissed.
. 17 U.S.C. § 410(c) provides:
(a) In any judicial proceedings the certificаte of a registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate. The evidentiary weight to be accorded the certificate of a registration made thereafter shall be within the discretion of the court.
. Block’s deposition states that she worked only three weeks, but in an affidavit he sought to correct that to three months, stating that the transcript contained a typographical error.
. Section 401 does not apply to works' first published after March 1, 1989. See Innovative Networks, Inc. v. Satellite Airlines Ticketing Centers, Inc.,
. These "third party witnessеs” relied on by the dissent are not neutral witnesses. They are business associates of Bernstein. Moreover, the Korean converter, E-Star, sold the fabric at issue in this case to Fashion Initiatives. See page 108, supra.
. The dissent states that it will assume, as did the district court, that Langman Fabrics made a pri-ma facie case of access and similarity. Infra at 116. Since the defendants did not attack the sufficiency of the prima facie case except by their independent creation theory, and therefore the parties did not develop a record on this issue, we are in no position to judge whether Langman's case is "weak,” as the dissent contends, see infra at 117.
Dissenting Opinion
dissenting:
I respectfully dissent. The record on this appeal presents several grounds for affir-mance, but I will confine this dissent to the plaintiffs failure to rebut testimony of independent creation, testimony that affords a complete defense.
The district court apparently assumed, without deciding, that plaintiff had made out a prima facie case. A copyright plaintiff can make out a prima facie case of unauthorized copying by demonstrating: (1) that defendants had access to the copyrighted work; and (2) that the allegedly infringing work and the copyrighted work are substantially similar.
Defendants, however, have come forward with the affidavits of third party witnesses who aver that they saw the allegedly infringing pattern in defendants’ possession several years prior to the date on which plaintiff claims to have created the infringed pattern. The question then is whether the question of material fact deemed to have been raised (for the purposes of the motion) by plaintiffs putative evidence of “inferential copying” remains in genuine dispute given defendants’ uncontradieted direct evidence that it did not copy plaintiffs pattern. It does not. Defendants have effectively rebutted the presumption of copying. See 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 12.11[D], at 12-181-12-182 (1998) (“If the defendant offers convincing documentary evidence establishing independent creation, it is incumbent on plaintiff to counter that evidence.”); see also Novak v. National Broadcasting Co.,
In Favia v. Lyons Partnership,
This evidence is fatal to [the plaintiffs] ease, and would be so even if [the plaintiff) had met her affirmative burdens. Because she offers no evidence to controvert [the defendant’s] proof of independent creation, summary judgment must follow as a matter of law.
Id. at *4; see also Repp v. Webber,
The majority relies on our (distinguishable) decision in Repp v. Webber,
Not so in the present case. Plaintiff has presented no evidence, expert or otherwise, tending to show that thе allegedly infringing pattern could only have been derived from the plaintiffs design, and has rested on its weak, putative prima facie ease when (in Professor Nimmer’s word) it is “incumbent” on the plaintiff to come forward with some evidence to counter the defendant’s evidence of prior creation.
The defendants here have offered affidavits of third parties whose testimony is both unimpeaehed and unrebutted, whereas in Repp we faulted the district court for “accepting] only the version of interested witnesses on the question of separate creation.” Id. at 891.
The majority cites an October 1995 fax in which the president of one of the defendant companies arranged for the feather pattern to be engraved, and concludes that a question is thereby rаised as to whether the defendants’ design was not created until 1995. The fax order shows nothing more than that defendants did not have an engraving of the design in 1995; they may never have made an engraving, or they may previously have made one and lost or discarded it. The fax thus demonstrates that defendants had the design in 1995 (because they were sending it to be engraved), but does not suggest that they acquired it recently. (Defendants, unlike plaintiff, need not be the author of the design to prevail; there is therefore nothing suggestive in the fact that they may not have had the engraving in the first instance.)
An essential element of a copyright claim is unauthorized copying of the protected material. Laureyssens v. Idea Group, Inc.,
The majority opinion (in my view) arrives at the wrong result, but it should not be read to raise the bar for granting summary judgment on the defense of independent prior creation.
. As we noted in our recent opinion in Castle Rock Entertainment, Inc. v. Carol Publishing Grp., Inc.,