BY:Michael I. Rudell
(Originally published in the Entertainment Law column in the New York Law Journal, November 24, 2000.)
A federal court has held that eleven photographs used in a book written by Oprah Winfrey and Stephen Green were neither joint works nor works made for hire.1 In its decision, the Court indicates that the subject matter of a photograph is not copyrightable, nor is a performance until it is captured in fixed tangible form.
Paul Natkin and Stephen Green both are professional “live event” photographers. During the relevant times, Natkin owned a private photography studio and photographed concerts, live television broadcasts, movie sets and rock video productions. Green was employed by the Chicago Cubs baseball organization and also engaged in free-lance photography for others.
Natkin and Green took photographs for The Oprah Winfrey Show (the “program”) while it was being taped live in the Chicago studio and, on occasion, at other locations. Both used their own camera equipment and lenses, brought additional equipment as needed, chose the appropriate film and usually processed it themselves. Harpo Productions, Inc., the producer of the program, prohibited Natkin and Green from using flash bulbs or any other light source not provided by the studio and restricted them to certain locations. When photographing the program, Natkin and Green had no control over the position or appearance of the subjects or the layout and design of the sets. They did, however, have complete discretion over the technical aspects of the shoot: the camera, lenses and film that was used, the appropriate shutter speed, aperture settings and timing of the shots and how to frame the images.
During the relevant time periods, neither Natkin or Green were party to an agreement with Harpo. They each billed Harpo a flat fee, and Harpo never withheld federal income taxes, FICA or state income taxes from their payments, all of which were reported to the IRS on 1099 forms as “non-employee compensation.” Harpo did not provide health, life insurance, pension benefits or paid vacations and both men purchased insurance for their equipment. Neither was given a copy of the Harpo employee manual, but both received paid parking, access to the company cafeteria and invitations to Harpo staff functions. Both were referred to and referred to themselves as staff photographers for the show.
Green’s invoices each contained the following provision: “Terms/Conditions One-time, non-exclusive reproduction rights to the photographs listed above, solely for the uses and specifications indicated… (unless otherwise indicated in writing… Acceptance of this submission constitutes acceptance of these terms.” The record contains examples of Green’s invoices on which this provision was stricken and “buyout” or “buyout by Harpo” was handwritten and initialed by Green in the margin. Natkin’s invoices specifically reserved to his corporation, Photo Reserve Inc., the copyright to the invoiced photographs.
Eleven of Natkin and Green’s photographs appeared in the hardcover version of “Make The Connection” written by Oprah Winfrey and co-authored by Bob Greene. Several also appear in the paperback version. Natkin and Green claim that such publication of these photographs infringed their copyrights. They contend that they were free-lance photographers hired by Harpo and Winfrey as independent contractors to take pictures for publicity purposes only. They also claim that they are the sole authors of the photographs, never having transferred their copyrights, and maintain that the only possible license Harpo or Winfrey could have obtained was an oral, non-exclusive license to use the photographs for publicity purposes.
The defendants assert that Natkin and Green were employees of Harpo and that the pictures were taken within the scope of their employment. Alternatively, they argue that Harpo and Winfrey are joint authors of the photographs because they controlled the vast majority of the picture elements. Finally, they allege that their publication of the pictures in the book was in accordance with a valid license.
In its discussion, the Court indicates that to establish copyright infringement, Natkin and Green must demonstrate that they own the copyright to the photographs. Under the Copyright Act, ownership “vests initially in the author or authors of the work.” Under normal circumstances, a photographer is the author of his or her photographs, but the concepts of work made for hire and joint work are exceptions to this general rule.
A work made for hire is 1) a work prepared by an employee within the scope of his or her employment, or 2) a work specially ordered or commissioned in several designated categories if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.
Acknowledging that they do not have a written agreement with either Natkin or Green covering the eleven photographs, defendants argue that Natkin and Green were employees of Harpo when they took the pictures. In the well-known Reid decision,2 the Supreme Court set forth a non-exhaustive thirteen-factor test for determining whether a creator is an employee within the meaning of the work made for hire provision of the Copyright Act. The factors are: the hiring party’s right to control the manner and means by which the product is accomplished; 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 payments; the hired party’s role in hiring and paying assistants; whether the work is part of the regular business of the hiring party; whether the hiring party is in business; the provision of employee benefits; and the tax treatment of the hired party. Additionally, Reid indicates that courts should use general common law agency principles to analyze whether the author of a work made for hire is an independent contractor or an employee.
The decision then applies the Reid factors to the present circumstances. It indicates that, most importantly, neither photographer ever was treated like an employee in terms of compensation, benefits and taxes. Further, Harpo’s reports to the IRS describe the payments to Green and Natkin as “non-employee compensation.” The Court indicates that this factor alone would outweigh those few factors mentioned in the decision that favor defendants’ position. “Here, as to Natkin and Green, Harpo chose the independent contractor route and cannot now change its position to reap a different benefit it probably had not considered when making its choice (i.e., ownership of the photographs.)”
The only factors clearly favoring the defendants are that they are engaged in a business and the duration of the parties’ relationship. But these factors do not come close to overriding the impact of the factors favoring the status of the photographers as independent contractors. Certain other factors are inconclusive or add insignificant weight in favor of either party’s position. For example, both parties exercised control over the manner and means of production to some extent. Also, that Natkin and Green worked on the set and were unable to choose when the work is of negligible importance to the inquiry. Given the location of the assignment, the location and timing of the work was necessarily within Harpo’s discretion and neither factor appears to have much relevance to the status of Natkin and Green as employees.
Finally the parties contest whether the work is part of Harpo’s regular business. Natkin and Green contend that the defendants are in the business of producing the program, not taking pictures of it. Defendants maintain that they are in the business of promoting Oprah Winfrey, which includes taking pictures of her on the program. Even assuming that this factor weighs in favor of the position of the defendants, Harpo’s treatment of Natkin and Green as independent contractors in terms of pay, taxes and benefits, the photographers’ use of their own equipment, judgment and expertise and the relationship’s technically being between Harpo and the photographers’ companies definitely establishes that Natkin and Green were independent contractors. Accordingly, the Court concludes that there is no genuine issue that Natkin and Green ever were Harpo employees and it grants plaintiffs’ motion for partial summary judgment, while denying the defendants’ motion for summary judgment on the work made for hire issue.
The Court next examines the claim of the defendants that they own the copyrights jointly with Natkin and Green because they are co-authors of the photographs. The Copyright Act defines a joint work as one prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of the unitary whole. Co-authors of a joint work hold undivided interests in that work despite any differences in each author’s contribution.
In order for a contributor to be considered an “author” and gain co-owner copyright interest, his or her contributions standing alone must be copyrightable. Thus, to establish co-ownership of the copyrights in the photographs, the defendants must show that the parties intended to be joint authors at the time the work was created and that their contributions to the work were independently copyrightable. The Court indicates that the parties have demonstrated a genuine issue as to their intent to create a joint work, and it turns to an examination of the question of whether defendants’ contributions to the eleven photographs were independently copyrightable.
A publication issued by the Copyright Office, whose opinion as to the scope of the Copyright Act is afforded great deference, states that “the nature of the thing depicted or the subject of the photograph or hologram… is not regarded as a copyrightable element.” This is because the Copyright Law protects only the tangible expression of ideas and facts, not the ideas and facts themselves.
One court has rejected a photographer’s copyright claim to the subject of his photograph, the combination of items in the photograph, the association of the photograph’s subject matter with the best selling novel on which the picture appeared (an association that the defendants copied when they advertised their film based on the book) and the mood of the photograph.3Here, the defendants claim authorship of Ms. Winfrey, her facial expressions, her attire, the “look” and “mood” of the program, the choice of guests, the staging of the program and other factors. In simple terms, they claim a copyright to the program which Natkin and Green photographed. But, as noted above, the subject matter of the photographs is not copyrightable.
Similarly, a performance itself is not subject to copyright until it is captured in a fixed, tangible form. Harpo’s employees created a fixed tangible expression of the performances by means of videotapes and there is no doubt that Harpo owns the copyright to such videotapes. However, in terms of the photographs, Natkin and Green translated images of the performance into photographs, and as to such photographs the plaintiffs are the sole authors. Accordingly, the defendants’ contribution to the eleven photographs were not independently copyrightable.
The Court next considers whether defendants had a valid license to use the photographs. It concludes that although they did not have an exclusive license, they clearly had an implied non-exclusive license. Triable issues exist as to (1) the scope of the implied license and whether the defendants’ publication of the photographs in the book was permissible under the license and (2) the duration of the license. It orders a trial as to those issues.
1 Natkin and Green v. Oprah Winfrey et al., 111 F. Supp. 2d 1003, 2000 U.S. Dist. LEXIS 11463 (July 27, 2000).
2 Community for Creative Non-Violence v. Reid 490 U.S. 730 (1989).
3 Leigh v. Warner Bros, Inc., 212 F. 3d 1210, (11th Cir. 2000).