Escolar Documentos
Profissional Documentos
Cultura Documentos
No. 96-2197
THE SAENGER ORGANIZATION, INC.,
Plaintiff, Appellee,
v.
NATIONWIDE INSURANCE LICENSING ASSOCIATES, INC.,
COMMONWEALTH LICENSING GROUP, AND LAWRENCE R. DURKIN,
Defendants, Appellants.
____________________
APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
[Hon. Nancy C. Gertner, U.S. District Judge]
____________________
Before
Selya, Circuit Judge,
Bownes, Senior Circuit Judge,
and Stahl, Circuit Judge.
____________________
Ernest
on brief f
appellants.
David
J.
Byer
with
whom Testa, Hurwitz & Thibeault, LLP, Stephen
Kenney, and Kenney & Maciolek, were on brief for appellee.
____________________
July 18, 1997
____________________
This copyright
infringement
case
revolves around a dispute over who owns the copyrights in
insurance licensing
in
1986.
It
comes
to
us
on
appeal from the district court's grant
of
summary
judgment
in
favor of plaintiff-appellee, The Saenger
Organization,
Inc.
("Saenger"),
and
against
defendants-
Inc.,
and
Commonwealth
Licensing
Group
(collectively
"Durkin").
Durkin argues that the district court
improperly
found
that
no
genuine issue of material fact existed
as to Saenger's ownership of valid copyrights in the
manuals
and
Durkin's
infringement of them.
the
district
court wrongly concluded that Saenger was entitled
to judgment in its favor as a matter of law.
Durkin
further
argues
that
the district court incorrectly determined that the
applicable Massachusetts statutes
barred his state
of limitations and
frauds
alleging
novo review of a
district
court's
entry
of
summary
judgment.
Arroyo, 84 F.3d 7, 11
Summary judgment
is
appropriate
where there are no genuine disputes as to material
-22
facts
and
the moving party is entitled to judgment as a matter
of law.
See Fed.
R. Civ. P. 56(c).
We review the
record
factual
judgment
has
been
entered,
in
this case, the defendants-appellants.
See
1986.
which
Durkin,
now the
Licensing Associates
principal of
and
both
Commonwealth
Nationwide
Licensing
in the business of
publishing
Saenger disputes
of any
for
unwritten
underlying motion.
work responsibilities
he undertook
this
According to Durkin,
in the
April 1986
the
oral
-3-
insurance
licensing
manual, a life and health insurance manual,
and several state law supplements.
Durkin
would become
completion of an
Saenger's vice
president immediately
existing employment
commitment to
upon
another
firm;
he
and
Saenger would be co-authors of the materials that
Durkin would write
those
Durkin
promptly began to
he was
Systems ("ETS").
still employed
by Educational
and
--
Training
insurance licensing
texts that
Durkin
manuals
that
came
to
be
titled
Li
fe, Accident and Health Licensing Text
and Property/Casualty Licensing Text (hereinafter "Life"
"Property" respectively).
works in their entirety,
Durkin claims
he authored
and
these
Durkin
-44
merely expanded
and
updated
previously
developed
Saenger
manuals.
In
any event, on or about November 26, 1986, Saenger
submitted
an
application
for copyright registration, a Form TX,
About
for
Life.1
The
Property
application listed July 16, 1986 as the
work's first date of publication and indicated that it was
"work
made for
application
hire" by
listed
Organization's
as
the work's
Bruce
principal)
for whom
of copyright
and
W.
co-authors, which
Saenger
Lawrence
R.
(The
protection.
made and
The
Durkin.
The
was the
Copyright
the
Saenger
the
sole
Office
23,
1987,
notifying
Saenger
that "[i]f an individual contributes to
or creates a work in his or her capacity as either an officer
or
employee
of
a company
or
organization,
the
work
is
be
letter,
Saenger completed
In response
and submitted
second
listing
1.
but
On the
Office
received on
issued
Saenger
a
copyright
for
P
roperty (registration number TX 2-011625), which listed November 26, 1986 as the effective date of
registration.
Like the
initial Property
application, the
first
Saenger and
Lawrence R. Durkin as
W.
work,
indicated that it was a "work made for hire," and stated that
The
Saenger Organization,
the copyright
claimant, was
the
hiring
party
for whom the work had been made.
the Copyright Office responded
Interestingly,
By a
to
letter
dated
December 24, 1986, the Copyright Office notified Saenger
that "[w]here
considered
a work
is 'made
the author
and
copyright application.]"
for hire,'
should
be [so]
the employer
named
[on
is
the
completed
and
submitted
a second application for the same work,
i.e.,
Life
,
this
time
listing The Saenger Organization alone as
application,
Office
issued
Saenger
copyright
for
the
Life
-66
asked Saenger
about the
applications
applications'
status.
Some time after the Copyright Office sent Saenger the
copyright registrations for Property and Life (the record
not clear precisely when),
is
the
looking through
Saenger,
he
some files
inadvertently
"COPYRIGHT INFO."
According to
in the
encountered
clerical area
a
file
Durkin,
entitled
discovered
at
above.
Saenger's
office
and
demanded
an
explanation for why he was not listed as
a copyright owner,
of the copyright
and
Durkin
to
name
an
Durkin as a
-77
accounting for
as a
result of
revenues
Health
Licensing
Text
(hereinafter
"Fundamentals").
Saenger
became
aware
of
Durkin's activities in April 1994.
The
following
month, Saenger advised Durkin to discontinue copying
by
written material in
Saenger.
Durkin,
question, as it
however,
was
persisted
in
publishing
and distributing the material.
Saenger filed suit
Shortly thereafter,
The
district
of
state
116
S. Ct. 804 (1996) (quoting Feist Public'ns, Inc. v.
Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)); see also CMM
Cable Rep., Inc. v.
1504,
-88
1513
(1st
Cir.
1996).
Only the first of these two prongs is at
issue
in
this
case
because Durkin does not deny or dispute that
he
copied
the
pertinent
material from Property and Life without
any
authorization
from
Saenger.
is whether
valid.
Saenger's copyrights
for Property
and Life
are
whole,
is
original and that he has complied with the requisite
statutory formalities.
See
Lotus, 49
F.3d at
813.
"'In
this case,
Saenger succeeded
in shifting
the
and
Property by
producing copyright
registration
certificates.
by
arguing
obtained
by
We, like
the
that
Saenger's
copyrights
were
crux
of Durkin's
theory
is
that
the
oral
agreement
he
allegedly
entered into with Saenger in April 1986,
-99
which
Durkin
characterizes
as
agreement,
Specifically, Durkin
and
Saenger
he was to develop
written
orally agreed
materials for
partnership
co-
materials,
that Saenger's
copyrights are
Thus,
Durkin
invalid because
they
violate
the
terms of the April 1986 oral agreement and because
the copyright applications
contained
Saenger
would
contests
the
veracity
of
Durkin's
various allegations, but concedes that
they must be assumed to
appeal.
Even
so,
Durkin's
argument
encounters
this
several
difficulties.
The Copyright Act of 1976 provides that
protection
generally attaches
creates a work.
to
the person
who
copyright
actually
. . . vests initially in
work.
the
work.").
"The Act carves out an important exception, however,
for
'works made
for hire.'"
Community
for Creative
Non-
Violence
v.
R
eid, 490 U.S. 730, 737 (1989) [hereinafter CCNV].
Where "a work [is] made for hire," the Act provides that "the
-1010
employer or
considered the
author" and
owns the
copyright "unless
is
the
parties
have
expressly
agreed otherwise in a written instrument
signed by them."
17 U.S.C. S 201(b).
As for the
general
that a
for hire"
if it
is
(1) a
work
within
prepared by
the
scope
of
an
his
employee
or
her
employment; or
(2)
work
commissioned
for
specially
use
ordered
as
or
.
text,
material for
as a
test,
as
a test,
or as
an
instrument
prepared for
stating
Saenger would be
that the
materials
considered works
that
Durkin
made for
hire.
for
hire"
only
if
they
if they
were prepared
by Durkin
within the
scope of
his
The
Copyright Act
nowhere
B. Nimmer
&
David Nimmer,
defines
the
key
Nimmer on
terms
739;
Copyright
-1111
738-39,
by construing them
master-servant relationship
to mean the
as understood
"conventional
by common-law
agency
doctrine."
I
d. at 740.
unambiguous:
"To
employee
or
an
independent
contractor.
After
making
this
determination
, the court can apply the appropriate subsection of S
101."
Id. at 750-51.
the duration
of the
of
relationship
hired party;
the
extent of
the
hired
to
work;
the
method of payment; the hired party's
role in hiring and paying assistants; whether
the work is part
of
Id.
at
in
business;
the
provision
of
employee
hired
party.
of
-1212
these factors
determinative."
is
Id. at 752.
indicates
that
Durkin
cannot
The evidence
the
demonstrates
that
the
highlighted
point
to
the
existence
of
an
employment
version of events, he
and
work on these
texts immediately.
Specifically,
they
agreed
that
Durkin
would
Durkin's
own
affidavit
July
another
Under CCNV,
points
this
towards
feature
the
of
existence
the
of
Durkin-Saenger
an
employment
relationship.
-1313
Durkin's affidavit
for
in opposition
to the
preliminary
This
swears
that, pursuant
to
the
and proofread"
the text
prior to
printing.
Indeed,
the
record
question.
of
received
handwritten
. . and Life . .
knowledge
is
corroborated
by
that
of
another
Nisil's
Saenger
word
processing
handwritten sheets of paper from Durkin during April and May 1986
-1414
"on
an
processing
equipment
and
personnel
the existence
between
Saenger
of an
and
employerDurkin.
relationship is
also
probative
of the
existence
agency doctrine.
See
Restatement (Second)
of
of
of
common
Agency
220(2)(i)
(noting
that
is a matter to
Durkin
theory.
On
himself
April
for
While Durkin
be
substantiate
oral
that
agreement
to
the
way he would
was
like us
to understand them:
"Even
though I
1986],
-1515
Durkin's use
of
the
word
as
"different
or
distinct
kind."
Webster's Third
When Durkin
addition to one or
a number of the
refers to his
same
(1986).
organization
(i.e.,
ETS),
it
would
with Saenger,
even as to
the period of
April
agreement
demonstrates
that
he
work commitments
in
addition to
the
and
responsibilities
Durkin's
affidavit
moonlighting
arrangement
would
continue
until
Durkin
discharged
view
In his
own affidavit as
to economic loss,
Durkin
words:
former
-1616
describes himself
with the
following
"I am
So, too,
does the duration of his work relationship with Saenger (some six
years);
the
method
of
of his
employment
benefits.
with ETS);
and,
the provision
of
employee
employee
status.
from
his
was
part
of
Saenger's
works in
Durkin's favor
is the
level of
skill that
was
presumably
required
to
by the
CCNV
Court point
to
the existence
factors
of
an
these undisputed
facts, the
district court
was
correct
to
conclude
that
favor either that he was not employed by Saenger or that Life and
Property
were
not prepared
by
him
within the
scope
of
his
are
-1717
that
the
April
1986
oral
comport
with
either
Saenger
entered into the April 1986 oral agreement that Durkin describes,
Durkin's
to
economic loss
characterizes the
While
Durkin's
alleged
oral
Bruce
Saenger,
on
closer
only
does Durkin
mentioned
the
describe
concept
or
the
issues.
agreement as
elements
of
delineated
Nowhere in
one
in
that
partnership.
the
even
Most
significantly,
Durkin's
partnership.
845
(Mass.
1952)
(indicating
-1818
On the
contrary,
language
throughout
the
the
agreement
was
that
of
employment and not of partnership."
Atlantic Research Assocs., 71
Walsh v.
As
"I
President."
Durkin
was
not
a
partnership
relationship.
N.E.2d 126, 129 (Mass. App. Ct. 1982) (indicating that members of
a partnership
are co-owners of
a business, not
them from
just of a
individuals in
work
other
to be his contention that Saenger was to pay him "[f]or his work"
in developing and marketing the manuals by providing him with
an
annual $42,000 salary and an equal share of the net revenues from
the
manuals
he
worked
on.
evidences the
Saenger.
existence
But, even
of a
partnership between
if we assume
himself
and
revenue
for his
work
would
do little
to
substantiate
Durkin's
-1919
means for compensation for services rendered (i.e., for his work)
is
not a
partner,
but rather
someone
akin to
contractual
creditor.
See
Phipps
v.
despite a profit
the existence of
a partnership "had
no right to
the
party
take
Laws
ch.
108A,
S
of the
profits of a
business" is
not "prima
facie
evidence
that
he
is
a
of, among
other
things,
"a debt
by
instalments
or
to have
received as
his share
of the
Durkin
"partnership's"
revenue
from
in
fact,
treated as
compensation
payments
--
not
as
the so-called
partnership
agreement are
lawyer
argument."
-2020
a
basis
for
In view of the
of
as
Durkin
would
actual
CCNV and
category of
17 U.S.C.
"works
S 101,
made for
these works
hire."
Under
fall within
the
the
work-for-hire
as
either an
officer
or
employee of
company
or
organization,
the
work
individual."
. .
[is
considered]
the author
rather
than
the
where
"a work
[is] made
for
hire,"
otherwise in a written
the
instrument
signed
by
them."
17
U.S.C. S 201(b) (emphasis added).
In light of
this
statutory language,
the
fact
that there
is
no
written
agreement
between
the
and Property is
dispositive regarding
the validity
of
-2121
Saenger's copyrights.
allege
e
d
oral agreement
with Saenger
concerning the
ownership of
thes
copyrights
is thus entirely beside the point.
Saenger's
authorization,
the
district
and
court
correctly
concluded
that
See
499
Saenger alleging
breach
of
agreement, fraud,
and
against
unfair
and
deceptive
thereafter failed
to
pay Durkin
his share
of
the
revenues
these
claims on
the
basis that
they
were barred
by
the
Massachusetts
statute
of
limitations and statute of frauds.
appeals these determinations.
For the
Durkin
we
2.
action that fall within its scope, with a few narrowly drawn
exceptions, see 17 U.S.C. S 301; Data Gen. Corp. v. Grumman
-2222
We
begin
by
noting that
six
year
statute
li
of
t
See Mass. Gen. Laws ch. 260, S 2.
statute pertains
to
chapter
93A actions
claiming
unfair
and
5A,
while
an
even
shorter
2A.
Under
Massachusetts law,
an
contract
mitations applies in Massachusetts for
actions. generally accrues at the time
action for
breach
of
breach of contrac
of breach, thereby
The issue
The court
whether
a
claim
is
time-barred.
Corroon
&
Ct.
1990)
(citing
Campanella
&
Cardi
Constr.
Co.
v.
Commonwealth, 217 N.E.2d 925 (Mass. 1966) and Boston Tow Boat Co.
v. Medford
counterclaim
Nat'l Bank,
121 N.E.
regarding Saenger's
491 (Mass.
1919)).
breach
the
of
Durkin's
alleged
oral
agreement
would
be
when Saenger
applications,
applications
or
improperly completed
November
to the
1986,
Copyright
when
the initial
Saenger
Office and
thus
copyright
submitted
the
"fraudulently"
month
and
date.
Se
of
contract
claim,
his
not
respective
district court,
to
accept
his theory
that
the
Massachusetts
"discovery
rule" applies to his situation.
operate to
delay the
accrual of a
cause of
action because
it
provides that "[a] cause of action will accrue when the plaintiff
actually
-2424
(emphasis added).
court wrongly
granted
summary
for
the
Saenger
an
opportunity
to
persuade
make
his
August
limitations.
1994
filing
timely
under
the
statute
of
Riley
for
the
proposition
that
of
Id. at 787.
of Saenger's wrongful
one day,
he accidentally
"COPYRIGHT INFO."
reason that
came across
the file
1992
labelled
no
of
he
reasonably
and
justifiably
relied
on
Saenger's
representations
regarding
ownership of the copyrights.
On Durkin's
Durkin
had
every
reason
to
do about
the copyrights
and had no
reason to
believe that
he
rule, the
running of
the statute
of limitations
is
delayed
-2525
the
Am.,
Inc., 929 F.2d 881, 885 (1st Cir. 1991) (emphasis added) (quoting
Gore v. Daniel O'Connell's Sons, Inc., 461 N.E.2d 256, 259 (Mass.
App.
Ct.
1984)); see also Williams v. Ely, 668 N.E.2d 799, 804 n.7
(Mass. 1996) ("Some of our opinions have stated that a
plaintiff
to
must
interchangeably
with,
the
he
discovered
protestations to
the contrary,
Durkin's state
Therefore,
law
undisputed
This conclusion
is
initial
copyright
drafted the
application was
completed,
it
listed The
in
is
room
Saenger
Because Durkin
was
-2626
in 1986.3
aware of
the breach
triggered.
and
the statute
of limitations
was
was
duly
and
information contained
therein was
correct or
not.
in relying on Saenger,
As our previous
discussion
explains,
there
is
no
term.
Even
if
we
assume such
an
agreement,
of
Durkin's
deliberate indifference
to what was
contained in the
copyright
applications
N.E.2d at
804 n.7
(describing the
limitations.
Massachusetts
standard
for
because
"nonmoving
party
can
3.
at
884.
That
standard is
not
met
here.
Catrone,
Under
Massachusetts
sufficient
limitations."
to
take
the
case
outside
the
statute
of
N.E.2d
458,
463
(Mass. 1980)).
"enough
U.S.
Durkin should have known the facts underlying his cause of action
the
Copyright
recordation
of a
Office.
document in
17
Under
U.S.C. S
certificate issued by
federal
the Copyright
copyright
law,
Office "gives
all
copyright
recorded
registration
thus
serves
to
copyright and
certificate.
In
of the
facts stated
in the
registration
are
See
analogous
to
the
Wise
v.
Hubbard
,
769
F.2d 1, 2
-2828
Co. of
Co. v. Enterprise
(1936); Sessions
281, 295
(1940); Wine
Ry.
393
v.
Burke
,
14
How.
(55
U.S.)
575, 582 (1852)).
of
the
case,
therefore,
claim
of
exclusive
both
works.
Third, it is undisputed that all of the manuals
Saenger published, including those at issue in this case,
that
openly
Inasmuch as
the
Durkin
concedes
that
he
worked
that he
worked at
Saenger (1986-1992),
Durkin must
be
the
terms of the alleged oral agreement more than six years before he
filed his contract counterclaim in August 1994.
Durkin's argument that
the
statutes
of
when
-2929
drafted
in
his
presence
copyright
ownership.
Saenger's
thus knowable
to him
in 1986
had he
exercised
minimal
and
reasonable
diligence.
were
the
facts
of
which
804
n.7;
Gore ,
461
N.E.2d
at
259.
applicable
legal
standards,
no
through
reasonable
diligence, should
have
known
of
Saenger's
claim
of
Property more than six years before he filed his counterclaim for
breach
of agreement, more
before he filed
his
chapter
93A
action
for
F.3d
285,
of
knew, or
through reasonable
diligence,
-3030
Durkin argues
that
the statutes
of
limitations
applicable
We
would
give
rise
to
Demoulas v.
1997).
Here,
In the
of
Mass.
Gen.
Laws
Ann.
ch.
is
capable
of discovering
the
facts
allegedly
477,
480 (Mass.
App.
Ct. 1981)).
of
As
discussed
concealment.
registrations and
Saenger
copyright
valid
in
As
argues:
notices to
copyright
works
Saenger correctly
affixed
secured
suggests
"Public notice
is not
the
concealment.
-3131
Our resolution of
obviates our
the statute
need to consider
the dispute
of limitations
between the
issue
parties
regarding
the statute of frauds.
counterclaim for
breach
of
contract was
extinguished
by
the
the
April
1986
oral
fact
existed as
to
Saenger's ownership
of
valid
correctly
therefore ascribe no
court's rulings.
Affirmed.
Costs to appellee.
error to the
district
-3232