FALL 2009

Copyright Law

Course No. 9200 703 (and 803) 001 , Course IDs 79436, 79944
MW 4:45-6:15 p.m.
Room W-215
Professor Jay Dratler, Jr.
Room 231D (IP Alcove)
(330) 972-7972
Copyright © 2000, 2001, 2002, 2003, 2004, 2005, 2006, 2007, 2008, 2009   Jay Dratler, Jr.   For permission, see CMI.

Weissmann v. Freeman

868 F.2d 1313, 10 U.S.P.Q.2d (BNA) 1014 (2d Cir.),
cert. denied 493 U.S. 883, 110 S.Ct. 219, 107 L.Ed.2d 172 (1989)

Cardamone, J: [*1315]

This appeal presents the paradigm of the problems that arise when a long relationship between accomplished professor and brilliant assistant comes to an end. Together the two had researched and co-authored scholarly scientific works. When the appellant--the younger assistant--individually wrote what she considered a new work, the appellee--the mentor--believing himself a co-author of the new piece, used his assistant's work, styling it as his own, and thereby precipitated the instant litigation.

Heidi S. Weissmann, M.D. appeals the dismissal after a bench trial in the Southern District of New York (Pollack, J.), of her copyright infringement suit against Leonard M. Freeman, M.D. Among the issues presented on appeal is the novel question of whether a medical paper derived from the parties' prior jointly authored works is itself a joint work, or whether it is a copyrightable individual derivative work, the infringement of which gives rise to a cause of action under the Copyright Act, 17 U.S.C. 101, et seq.


The parties are both accomplished scientists in the field of nuclear medicine. Appellant Weissmann is an Associate Professor of Radiology and Nuclear Medicine at the Albert Einstein College of Medicine (Einstein), and is an attending physician specializing in nuclear medicine at the Montefiore Medical Center (Montefiore). She has received numerous awards in the area of radionuclide imaging, and published more than 80 scholarly articles. Appellee Freeman is also a prolific author, and a noted lecturer in the fields of nuclear medicine and diagnostic radiology. He has served as President of the Society of Nuclear Medicine, and currently is a professor of Radiology and of Nuclear Medicine at Einstein, where he has taught since 1964. He is the Director of the Nuclear Medicine Service at Montefiore and Vice-Chairman of the Department of Nuclear Medicine at Einstein.

The parties' professional association began in 1977 when Dr. Weissmann was in her fourth year of residency at Montefiore and Dr. Freeman was Chief of the Division of Nuclear Medicine at that hospital. In early 1977 appellee was researching the application of the derivatives of a certain radiopharmaceutical, iminodiacetic acid (IDA). IDA is a substance labeled with a radioactive isotope that is injected into the bloodstream and, when picked up by the liver, permits diagnosis of certain liver and biliary disorders. In the late 1970's drug manufacturers producing IDA analogs needed scientists to develop a patient data base to obtain approval of their Food and Drug Administration applications in order to market the isotopes in the United States. One selected scientist was Dr. Freeman, who began using the IDA analogs in his research efforts. As a fourth-year resident, appellant worked on these initial studies under Dr. Freeman's tutelage. The parties' first jointly authored article on IDA derivatives was published in January 1979. Over the next several years a series of articles on the use of IDA scanning in diagnosing biliary diseases were published in the names of Freeman, Weissmann, and other scientists.

Beginning in 1980 the parties worked together as researchers and co-authors of a number of papers focusing on various aspects of nuclear medicine, particularly IDA imaging. Prior versions of the work alleged to have been infringed in the instant litigation were first written in 1980 for a nuclear medicine review course sponsored [*1316] by the Harvard Medical School. The district court found that the work in which appellant claims a copyright (Plaintiff's exhibit 1 or P-1) is a "syllabus," that is, a paper reviewing the state of the art of hepatobiliary imaging techniques, prepared to accompany lectures, and used by medical residents to study for specialty boards. From 1980 to 1985 prior versions of P-1 were constantly revised and updated by the parties in an ongoing cooperative effort.

In 1985 Dr. Weissmann authored the article that precipitated the present copyright suit. It was entitled "Hepatobiliary Imaging" (P-1), and reported on a relatively new diagnostic technique employing radioactive analogs of the agent IDA. The work was prepared as a chapter for the Radiological Society of North America's book entitled "Syllabus: A Categorical Course in Nuclear Medicine," printed and published in 1985. The publication listed Dr. Weissmann as the article's sole author.

Appellant's creation admittedly was derived from previous papers jointly written by the parties during the course of their professional relationship that extended from 1977 to 1984. An examination of the relevant documents reveals that portions of P-1 were taken virtually verbatim from prior jointly authored pieces that had been presented at Einstein and at the Mount Sinai School of Medicine (Mount Sinai) in 1983 and 1984 respectively. Although P-1 appears to restate the central propositions asserted in the prior works, Weissmann's exhibits includes the following new elements: (1) a new selection of photo illustrations and associated captions; (2) references to four recent reports in the pertinent literature; (3) new textual additions; and (4) reorganization of previous material. Appellee conceded at trial that this material in P-1 was created solely by appellant.

In the summer of 1987 Dr. Freeman was invited to give a review course on nuclear medicine at Mount Sinai. He prepared P-1 to use in giving the course by deleting Dr. Weissmann's name from P-1 and replacing it with his own, and by adding three words to the title. Fifty copies of the article were made. Before the date set for the course, appellant obtained one of the copies, and through counsel requested that her revised article not be circulated, and that all those who had received copies be informed that she claimed sole authorship of it. The article was removed from the packet of course materials. Dr. Freeman delivered his lecture without the use of his version of P-1.

After this incident, Weissmann filed the instant suit alleging copyright infringement in violation of 17 U.S.C. 501 (1982 & Supp. 1985). In her prayer for relief she sought a declaration that Freeman had committed actionable infringement, an injunction permanently restraining him from infringing, and an award of actual damages and profits. Appellant consented to the dismissal of her claim for attorney's fees because the copyright she obtained covering P-1 was not registered before the suit was commenced, and such is a statutory prerequisite to a claim for attorney's fees.

* * * [*1317]

I. Joint Authorship

Before discussing whether P-1 was a joint work, we set forth the standard of review to be applied to the district court's determination that P-1 was such a work. Ordinarily the clearly erroneous standard under Fed. R. Civ. P. 52(a) would govern. But, when a district court makes findings of fact predicated upon an incorrect legal standard such findings are not binding on an appellate court. See United States v. Parke, Davis & Co., 362 U.S. 29, 44,(1960) (Rule 52 inapplicable where district court's findings premised on erroneous view of legal standard).

Here the district court determined that the entire series of the parties' works on the subject of radionuclide imaging-including the work alleged to have been infringed-constituted a single evolutionary joint work. It discussed the conceded joint authorship in the preexisting works. Without making any specific findings respecting P-1 itself, the court found that Dr. Freeman was a co-owner of P-1 and that P-1 was a joint work. The trial court made this surprising finding despite Dr. Freeman's concession that he had no hand in P-1's preparation. The finding was made based on the district court's mistaken view that joint authorship of the prior existing works automatically makes the two joint authors co-owners of the derivative work. Such a ruling stands copyright law on its head. It flies in the face of the Copyright Act which affords protection to each work at the moment of its creation. Thus,  101 provides for those works prepared over time that "the portion of it that has been fixed at any particular time constitutes the work as of that time, and where the work has been prepared in different versions, each version constitutes a separate work."

Of greater significance is that the trial court's view would convert all derivative works based upon jointly authored works into joint works, regardless of whether there had been any joint labor on the subsequent version. If such were the law, it would eviscerate the independent copyright protection that attaches to a derivative work that is wholly independent of the protection afforded the preexisting work. See 103(b). Hence, it was a plain error for the district court to rule, as a matter of law, that Dr. Freeman's joint authorship of the prior works made him a joint author with appellant in the derivative work.

The district court also made a finding of fact that Dr. Freeman was a joint author with Dr. Weissmann of P-1. Section 201(a) of the Act provides: "Copyright in a work protected under [the Copyright Act] vests initially in the author or co-authors of the work." Section 101 defines a "joint work" as one "prepared by two or more authors with the intention that their contributions [*1318] be merged into inseparable or interdependent parts of a unitary whole." In a joint work each author "automatically acquires an undivided ownership in the entire work" including any portion of it. 1 M. Nimmer, Nimmer on Copyright 6.03, at 6-6 (1988). Thus, an action for infringement between joint owners will not lie because an individual cannot infringe his own copyright. The only duty joint owners have with respect to their joint work is to account for profits from its use. See Donna v. Dodd, Mead & Co., 374 F. Supp. 429, 430 (S.D.N.Y. 1974).

A review of the meaning of 101 and 103(b) and of their legislative history reveals two basic criteria that must be satisfied before one is a joint author of a derivative work. First, each putative author must have "contributed" to the work. Second, each must intend to contribute to a joint work at the time his or her alleged contribution is made. Because 103(b) extends independent protection to derivative works, an intent to contribute or an actual contribution to previous works does not serve as proof of ownership in the derivative work. See H.R. Rep. No. 1476, 94th Cong., 2d Sess. 103, 120, reprinted in 1976 U.S. Code Cong. & Admin. News 5659, 5736 (House Report). We consider these two criteria.

A. Contribution to Derivative Work

The statute envisions that each author contribute to a joint work. "Under the [ 101] definition a work would not be 'joint' unless its authors collaborated among themselves or unless each of the authors knew, at the time the work was being written, that his contribution would be integrated as an 'inseparable' or 'interdependent' part of a 'unitary whole.'" 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 Part 6, at 65 (House Comm. Print 1965), reprinted in 1 Copyright Law Revision (1964-1965).

In enacting the definition of a joint work set forth in  101, Congress endeavored to "make[ ] plain that copyright in a derivative work is independent of, and does not enlarge the scope of rights in, any pre-existing material incorporated in it. There [was] thus no need to spell this conclusion out in the definition of 'joint work.'" House Report at 120. The legislative history clearly indicates that one cannot be deemed to be a joint author without actually collaborating in the work's preparation. Critical therefore "is the intention, at the time the writing is done, that the parts be absorbed or combined into an integrated unit." Id. That intention must be with respect to the work in which a copyright is claimed, not with respect to the prior works from which it is derived. See MCA, Inc. v. Wilson, 425 F. Supp. 443, 455 (S.D.N.Y. 1976) (owner of underlying work obtains no property rights in derivative work), aff'd, 677 F.2d 180 (2d Cir. 1981).

In the case at hand, because Dr. Freeman conceded that he had not participated in drafting the new matter included in P-1, it follows as a logical corollary, therefore, that he acquired no interest in or right to use P-1 beyond those rights which he had as co-author in the prior joint material incorporated into P-1. Even though one co-author has the right to revise a joint work in order to create an individual derivative work, the other co-author acquires no property rights in the newly created work prepared without his involvement. See Dynamic Solutions, Inc. v. Planning and Control, Inc., 646 F. Supp. 1329, 1338-39 (S.D.N.Y. 1986) (even sole author/owner of preexisting material contained in derivative work has no property right in new matter created for the derivative work added without his participation); see also Weinstein v. University of Illinois, 811 F.2d 1091, 1095 (7th Cir. 1987); House Report at 120; 1 Nimmer 6.06[B], at 6-15.

B. Intent to Contribute to Derivative Work

The second point upon which inquiry is focused is Dr. Weissmann's intent. The [*1319] district court made no express finding on this critical issue. It simply stated in conclusory fashion that because the parties had intended P-1's predecessors to be used jointly as a "stock piece" to accompany their review lectures, they had somehow impliedly agreed that all future works on the subject of radioactive analogs of IDA, including P-1, would also be a joint work.

In order for a work to be deemed a joint work, the parties must evince "the intention that their contributions be merged,"  101 (emphasis added), "at the time the writing is done," House Report at 120, not at some later date. The law on this point is set forth in Edward B. Marks Music Corp. v. Jerry Vogel Music Co., 140 F.2d 266 (2d Cir. 1944) (L. Hand, J.). There it was observed that a finding of joint authorship requires that each author intend his or her contribution, at the time that it is created, to become part of a unitary work to which another will make or already has made a contribution. Or, as Judge Hand stated it, "when both plan an undivided whole . . . , their separate interests will be as inextricably involved, as are the threads out of which they have woven the seamless fabric of the work." Id. at 267; see also Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., ("Melancholy Baby"), 161 F.2d 406, 409 (2d Cir. 1946), cert. denied, 331 U.S. 820 (1947).

Marks was a case in which one individual had written the lyrics for a song and another had written the music. Neither party knew the other, but both were aware that their individual efforts would not stand alone. In holding that the resulting song was a joint work, the critical fact was that both parties were equally aware that their individual authorship efforts would have to be combined in order to create the final integrated product--a commercially viable song. See Marks, 140 F.2d at 267. From this, the rule has evolved that an author who intends to create a joint work must clearly demonstrate his or her intent in that regard. Although such an intent may, as in Marks, be inferred from the circumstances surrounding the creation of the work, in the absence of such a showing, the work is presumed to be the product of an individual author and is the sole property of its creator. See, e.g., Gilliam v. American Broadcasting Cos., Inc., 538 F.2d 14, 22 (2d Cir. 1976) (Lumbard, J.) (reservation of rights by one party inconsistent with joint authorship and work not therefore joint); Picture Music, Inc. v. Bourne, Inc., 314 F. Supp. 640, 645 (S.D.N.Y. 1970) (declining to find joint authorship where a "common design to create a single work" not shown to exist), aff'd on other grounds, 457 F.2d 1213 (2d Cir.), cert. denied, 409 U.S. 997 (1972); cf. Community for Creative Non-Violence v. Reid, 846 F.2d 1485, 1497 (D.C. Cir. 1988), cert. granted, 109 S.Ct. 362 (1988).

In the present case, Drs. Weissmann and Freeman collaborated in the preparation and publication of the works from which P-1 was derived. Yet, there is no evidence that they intended their joint product to be forever indivisible like the finite whole of the completed single song in Marks. The facts point to a contrary conclusion. Scientific research is a quest for new discoveries and the preexisting joint works by definition were continually evolving. Dr. Weissmann believed she had a new and better approach and decided to author her research alone. Section 103(b) of the Copyright Act gives her that right when it extends independent protection to derivative works. The joint authorship of the underlying work does not confer any property right in the new work, save those rights which the co-author (here Dr. Freeman) of the previous works retains in the material used as part of the compilation of the derivative work. The district court opinion reveals a fundamental misunderstanding of these principles. This misconception is reflected in its discussion of Dr. Weissmann's intent to merge her efforts with Dr. Freeman based only on P-1's predecessors, and not on P-1 itself.

C. Appellant's Intent to Create a Derivative Work

The remainder of discussion of joint authorship concerns the substantial and uncontroverted [*1320] evidence that Dr. Weissmann intended P-1 to be her own individual work. As a preliminary matter, it is important to note that of the 88 articles, abstracts, and book chapters listed on her curriculum vitae, 71 credit Dr. Freeman as a co-author. Appellant's having deviated from that pattern in submitting P-1 for publication as a chapter in the Radiological Society of North America's book under the name "Heidi S. Weissmann" is persuasive proof of the fact that she intended this particular piece to represent her own individual authorship. Appellant's use of her own by-line on P-1 constitutes prima facie proof that this work was not intended to be joint. Appellee failed to produce any evidence to rebut appellant's showing. In fact, Dr. Freeman lectured at the same meeting at which P-1 was first presented, and made no objection to the omission of his name from it.

Again, had the trial court separately considered P-1, it would have concluded that appellant's article was the only work with respect to which it was repeatedly conceded that appellee had played no role. Yet, the trial judge found that "plaintiff did almost all of the writing" for the works listed on her resume of which Freeman was a "co-author" and that she routinely "submitted drafts to Dr. Freeman before publication." It also found that "she would always make sure to leave a copy of a manuscript on his desk if he was not in town or busy with other commitments; she did not always get comments back, but often she did." Hence, it is significant on the issue of appellant's intent that P-1 was one of those few works that was not submitted for Dr. Freeman's review and on which she did not receive his comments. These facts--found by the district court--strongly evidence appellant's intent that P-1 be solely her own work.

The district court found that Freeman's participation in the preparation of P-1 was "strikingly illustrated" by Weissmann's inclusion in P-1 of a section entitled "False-Positive Studies for Acute Cholecystitis" which Dr. Freeman had independently composed for a 1984 Harvard review course. The incorporation of this material into P-1 is irrelevant to the question of whether or not the parties intended P-1 to be a joint work. Appellant correctly points out that the inclusion of the "False Positive" section is not proof of any intention on Dr. Freeman's part to make a contribution to P-1 because, prior to 1985, he could not have formed an intent to contribute his efforts to her then nonexistent work.

In sum, the evidence presented at trial fully supports appellant's contention that the work alleged to have been infringed was solely the product of her authorship efforts. Although her work derived from preexisting jointly authored material, appellee played no role in P-1's creation. As a non-contributing party to P-1, Dr. Freeman's intent regarding his contributions to the underlying preexisting work is not relevant to claimed joint authorship of P-1. The district court's conclusion that P-1 was a joint work because the entire series of the parties' articles on IDA, including P-1, was one evolutionary joint work disregards the copyright protection accorded derivative works, independent of the preexisting works under  103(b). As a consequence of its plain error of law in this regard, the district court's finding of fact that Freeman's co-authorship of the preexisting works also made him a joint author of P-1 is clearly erroneous.

II. Derivative Work

We now turn attention to whether P-1 qualifies for protection as a derivative work as that term is defined by the Copyright Act. To establish a claim of copyright infringement, plaintiff must prove ownership of a valid copyright and copying by the defendant. With Dr. Freeman's copying admitted, the only question is whether Dr. Weissmann owned a valid copyright in a so-called derivative work. Although her certificate of registration "constitute[s] prima facie evidence of the validity of the copyright and of the facts stated in the certificate," 17 U.S.C. 410(c), it is not conclusive on the issue of copyrightability; it merely creates a presumption of validity. See, e.g., Durham [*1321] Indus., Inc. v. Tomy Corp., 630 F.2d 905, 908 (2d Cir. 1980); Past Pluto Productions Corp. v. Dana, 627 F. Supp. 1435, 1440 (S.D.N.Y. 1986) (certificate shifts burden to defendant to disprove copyright's validity).

Section 101 of the Copyright Act defines a "derivative work" as one that is based on "preexisting works." In addition,  103(b) provides as follows

    "The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. The copyright in such a work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material."

Section 101 of the statute further defines a derivative work as "[a] work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship. . . ." Thus, it is clear that "the manner of expression, the author's analysis or interpretation of events, the way he structures his material and marshals facts, his choice of words, and the emphasis he gives to particular developments" are protected under the copyright laws. Wainwright Securities, Inc. v. Wall Street Transcript Corp., 558 F.2d 91, 95-96 (2d Cir. 1977), cert. denied, 434 U.S. 1014, (1978).

The principle of derivative work protection is subject to two important limitations, both of which were purportedly recognized by the district court. To support a copyright, a derivative work must be more than trivial, and the protection afforded a derivative work must reflect the degree to which the derivative work relies on preexisting material, without diminishing the scope of the latter's copyright protection. This rule is premised on the notion that "'the one pervading element prerequisite to copyright protection regardless of the form of work' is the requirement of originality--that the work be the original product of the claimant." L. Batlin & Son v. Snyder, 536 F.2d 486, 489-90 (2d Cir.) (en banc) (quoting 1 Nimmer 10, at 32 (1975)), cert. denied, 429 U.S. 857 (1976). * * *

In the law of copyright only an unmistakable dash of originality need be demonstrated, high standards of uniqueness in creativity are dispensed with. In deciding whether the originality of the matter added in P-1 is sufficient to qualify for protection as a derivative work, the standard enunciated in Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir. 1951) (Frank, J.), remains the law in this Circuit: "All that is needed to satisfy both the Constitution and the statute is that the 'author' contributed something more than a 'merely trivial' variation, something recognizably 'his own'" Id. at 102-03. The originality requirement for a revised version is a "minimal" or "modest" one. See, e.g., Eden Toys, Inc. v. Florelee Undergarment Co., 697 F.2d 27, 35 (1982); Durham Indus., 630 F.2d at 910; Puddu v. Buonamici Statuary, Inc., 450 F.2d 401, 402 (2d Cir. 1971); Millworth Converting Corp. v. Slifka, 276 F.2d 443, 445 (2d Cir. 1960).

The district court here concluded that P-1 and its predecessors had evolved over an extended period of time and that Weissmann's additions were minuscule, demonstrating little originality. Although recognizing that the selection and arrangement of data may merit copyright protection, see Eckes v. Card Prices Update, 736 F.2d 859, 863 (2d Cir. 1984), the trial judge believed that "the update was done as part of the evolution [*1322] of the stock piece" and that appellant's modifications of the preexisting joint works did not warrant copyright protection.

* * *

In our view the district court implausibly overlooked the fact that appellant's 1985 selection of subject matter and content drawn from prior works and their rearrangement in P-1 is sufficiently the product of original authorship to warrant copyright protection. It failed to give detailed consideration to the new matter that Weissmann added to the parties' prior works in her authorship of P-1. Its main discussion of P-1's content is a passing reference to the addition of "only" four new sources from the relevant scientific literature. Although the credibility of the parties as witnesses was fully discussed, the relevance of such an inquiry is problematic when the evidence upon which the derivative work determination must be based is solely documentary. Credibility might have been relevant, for example, had the question of who actually authored the new material been contested. But it is scarcely pertinent to determining whether the newly-added matter satisfies the statutory requirements for protectability. Research has not revealed a single case in which credibility has been deemed significant--let alone dispositive--on the question of whether there is a sufficient level of originality in a given work to render it copyrightable. While the district court's findings based on the credibility of witnesses is entitled to deference, the trial judge cannot insulate his findings on originality from appellate review by calling them credibility determinations.

Our examination of the relevant documents reveals that Weissmann's additions and modifications in P-1 extend well beyond the mere addition of "four sources." A thorough review of P-1 and of the works from which it is derived demonstrates that Dr. Weissmann added the following new elements to the existing prior joint work: (1) a selection and arrangement of photo illustrations and associated captions; (2) references to recent reports in the pertinent literature; (3) selection, condensation, and description of additional source material; (4) several new textual additions; (5) substantial rearrangement of the manner and order of presentation of material contained in the parties' prior joint works; and (6) the addition of a section on "congenital disorders," a revised treatment of "chronic cholecystitis," and the incorporation of Dr. Freeman's "false positive" studies.

The district court found that many of the foregoing additions and revisions repeated verbatim portions of prior works and, from that finding, concluded that P-1 was neither new nor copyrightable. This finding wholly ignores the statutory scheme that expressly protects the selection of subject matter and content from underlying works, as well as the rearrangement of preexisting material taken from those works. See 17 U.S.C. 101 (defining derivative work as an "abridgment, condensation or any other form in which a work may be recast, transformed, or adapted"). Further, a comparison of the parties' prior works--including P-1's most recent predecessor--at once demonstrates numerous differences, and highlights the fact that P-1 gave IDA imaging new and original treatment. Moreover, Dr. Freeman's copying and distributing P-1 as his own work is further evidence of the non-triviality of Dr. Weissmann's work, since copying without regard [*1323] to a plaintiff's rights is probative on the issue of the originality of a work. See Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 252, (1903) (Holmes, J.) (that works have worth is sufficiently shown by desire to copy them "without regard to the plaintiff's rights").

We conclude therefore that the district court's holding that Weissmann could not acquire a copyright in a derivative work based upon a jointly authored work was an error of law that disregarded the provisions of 103(b) and the protection it extends to derivative works. Moreover, Dr. Freeman failed to rebut the prima facie showing of copyrightability appellant obtained by her certificate of copyright registration. As a consequence, we hold that Dr. Weissmann's additions and modifications to the preexisting joint work satisfy the modest requirements set forth in 103(b) and in the relevant case law sufficiently to make P-1 entitled to copyright protection as a derivative work. The district court's findings--upon which it reached a contrary legal conclusion--were clearly erroneous because they have left us, after a thorough review of all the evidence, with a firm conviction that the district court was mistaken. See United States v. United States Gypsum Co., 333 U.S. 364, 395, (1948).

* * *

[The court rejected defendant's fair use defense.]

* * * [*1327] * * *


For the reasons stated, we hold that P-1 was an individually-authored, copyrightable, derivative work created by appellant and that Dr. Freeman's use cannot be said to be a fair use of it. Accordingly, we reverse the judgment of the district court and remand the case to it with directions that judgment be entered in favor of appellant Weissmann. The judgment otherwise appealed from is affirmed.



Pierce, J. concurring:

I join in Parts II-V of the court's opinion. I join only in the result in Part I.

As to Part I, I agree that we must reverse and remand because Dr. Freeman failed to rebut appellant's claim (evidenced by her registration of P-1 as a derivative work) that she did not intend the new material to be "merged" with the prior joint work. Appellant's certificate of registration served as "prima facie evidence of the validity of the copyright and of the facts stated in the certificate." 17 U.S.C. 410(c) (1982). For Dr. Freeman to claim that his use was not an infringement, but rather that the work was "joint," was a defense much like any other under the Copyright Act. Therefore, it was incumbent upon Dr. Freeman to rebut appellant's prima facie evidence that the work (P-1) was derivative, not joint. Appellee failed to meet his burden, however, for he failed to present sufficient evidence to demonstrate appellant's intent to create a joint work.

The district court appears to have applied the opposite presumption. Rather than focusing on the appellant's intent at the time of creating the derivative work, the court dwelt primarily on the parties' long-standing and close professional relationship. From that, it seems to have presumed that P-1--a by-product of that professional collaboration--was a "joint" work. That presumption, however, in effect placed the burden on the putative author to show that the work was derivative, rather than on the putative infringer to show that the work was joint. The district court's approach was therefore at odds with the statutory scheme of burdens of proof, and must be reversed as a matter of law.

I differ, though, with Judge Cardamone's reasoning in Part I. The fact that Dr. Freeman was not the author of any of the new material that went into P-1 did not, of itself, preclude that work from being "joint." Of course, as Judge Cardamone notes, one cannot be found to be a joint author of a work without actually having contributed to that work. However, that does not mean that an author, to be a "joint" author, must have contributed to each incremental addition to the work. Thus, in this case, had Dr. Weissmann's intent been otherwise--had she intended the work to be joint--Dr. Freeman could have been deemed a joint author simply by virtue of his contributions to the earlier work, into which Dr. Weissmann's material would have been "merged." See, e.g., Edward B. Marks Music Corp. v. Jerry Vogel Music Co., 140 F.2d 266, 267 (2d Cir. 1944) . . . .

[*1328] Further, I do not agree that the earlier incorporation of Dr. Freeman's "False Positives" study into the evolving syllabus was irrelevant. Though not dispositive, the parties' past willingness to have their works absorbed into the syllabus was relevant to the question of appellant's intent when she reshaped the syllabus into P-1.

On balance, however, I agree with the court that the evidence relied upon by appellee was not sufficient to show that appellant intended to create a joint work. Therefore, I join the conclusion of the court, and would reverse and remand, with judgment to be entered for appellant,


Lumbard, J., dissenting:

I dissent, and vote to affirm the judgment of the district court in all respects, for the reasons stated in Judge Pollack's thorough and reasoned opinion.

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