Re: Work for Hire and Copyright Assignment

On 1/23/99, Mike Oliver <mikeoliver[_at_]home.com> wrote:
>
> On Fri, 22 Jan 1999, Stephen Fishman <sfish55[_at_]yahoo.com> wrote:
> >
> > On Sun, 17 Jan 1999, Barbara Gall <bgall[_at_]sah.com> wrote:
> > >
> > > I seem to recall some case (Second Circuit, maybe?) which held
> > > that a copyright assignment contained in a work-for-hire agreement
> > > executed before the work was created was invalid. Help?
> >
> > I think the case you mean is Schiller & Schmidt, Inc.v. Nordisco
> > Corp., 969 F2d 410 (7th Cir. 1992).
>
> Hmm. Read that one 3 times, and I don't think it stands for the
> proposition that "a copyright assignment contained in a work-for-hire
> agreement executed before the work was created [is] invalid" In that
> case the assignment agreement (purporting to assign rights in certain
> photographs for products in a catalog) was made long *after* the works
> were created, and was not signed by the assignee. It was only signed by
> the assignor. The court held that the late signed 'assignment' was not
> a 'work made for hire agreement' because both parties did not sign it.

Note, though, that in Playboy Ent. Inc. v. Dumas, the Second Circuit equivocated on the prior written agreement portion of S&S. They permitted post-hoc writings that confirmed an agreement reached prior to the works' creation. I find a lot to be dissatisfied with in Dumas, among which are the evidentiary problems created by this ability to bootstrap into a wfh agreement by later magic words ("we hereby confirm our prior understanding that..."), especially where contracts of adhesion are concerned. In Dumas, Playboy was able to use an endorsement legend on payment checks to create the necessary writing.

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