by Michael J. Gladstone*
Consider the following scenario: an art gallerist commissions thousands of artists to create individual sculptures and then assembles them together into a permanent art installation. One of the commissioned artists, who had created a centerpiece of the installation, starts selling mini replicas of his sculpture online. The gallerist claims that he owns the copyright in the centerpiece. Because the gallerist believes he has the right to control the distribution of derivative works like the replicas, and because he worries the online sales will dilute the value of his installation, he orders the artist to stop. The artist, meanwhile, claims that he owns the copyright in his work, and he therefore believes that he alone has the right to sell the replicas. The artist and the gallerist, unable to reconcile their disagreement, end up in court.
The court is then tasked with deciding who owns the copyright in the underlying work: the artist who created the work or the gallerist who commissioned it? The primary justification for copyright is to provide adequate incentives for the creation of new artistic and literary works.1 It takes a lot of effort to create something anew and relatively little effort to copy someone else’s work.2 Without an exclusive property right—a copyright—in that creation, artists and writers might have little incentive to create in the first place.3 In this hypothetical question, however, more than one party was involved in the creation of the work. In these situations, how should copyright law incentive the creation of new works? The artist is the one who puts the time, effort, and skill into creating a work. But the work never would have come about without the funding and vision of the commissioning party: the gallerist. Only one party gets to own the copyright in the work.4 Therefore, only one party has the right to make copies, prepare derivative works, distribute the work for sale, and display the work publicly.5 At least in the case of permanent art installations, that party should be the gallerist.
* * * * *
While the default rule in copyright law is that the party who creates the work owns the copyright in the work, the “work made for hire” provision of the Copyright Act has some exceptions.6 Congress recognized that, sometimes, the best way to advance the public welfare through the talents of artists was to grant copyrights to the party at whose financial risk the work was created.7 Accordingly, independent contractors like the artist in this hypothetical can agree to sign away their copyright ownership in their works to commissioning parties when: (1) the two parties expressly agree in writing that the work will be a “work made for hire” and (2) the work is specially ordered or commissioned for use as a work within one of nine enumerated categories.8 These nine categories are (i) a contribution to a collective work, (ii) a part of a motion picture or other audiovisual work, (iii) a translation, (iv) a supplementary work, (v) a compilation, (vi) an instructional text, (vii) a test, (viii) an answer material for a test, and (ix) an atlas.9
The focus of this Contribution is the first category: “a contribution to a collective work.” If the work is a “contribution to a collective work” then it is a “work made for hire,” and the gallerist owns the copyright. Otherwise, the artist owns it. Thus, whether the artist or the art gallerist owns the copyright in the artist’s contribution turns on the definition of a “collective work.”
The Copyright Act defines a “collective work” as:
a work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.10
This definition has two operative phrases: (i) “such as a periodical issue, anthology, or encyclopedia” and (ii) “assembled into a collective whole.” An analysis of these two operative phrases supports the conclusion that the artist’s contribution to the art installation is indeed a “contribution to a collective work.”
“Such as a Periodical Issue, Anthology, or Encyclopedia”
This language hints at a restrictive interpretation, one that would not embrace inclusion of an art gallery in its definition. First, inclusion of the “such as” phrase is noteworthy. If Congress’s intent were to embrace all types of works, one could argue that legislators would not have included the “such as” phrase.11
Adding further support to this viewpoint is the fact that the three enumerated works—periodical issues, anthologies, and encyclopedias—all have an undeniable literary quality. Accordingly, Congress’s intent may have been to limit collective works to works that have a literary quality, are published, and cannot be disassembled.
Additional evidence suggests that Congress could have broadened the definition if it had intended to do so. For example, it could have adopted the language “periodical issue, anthology, encyclopedia, or any other work.” That is precisely what Congress did just a few definitions later in the Copyright Act when it defined the phrase “derivative work.” There, Congress used the definition “a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgement, condensation, or any other form in which a work may be recast, transformed, or adapted.”12
Moreover, the Supreme Court has instructed courts to read and construe statutes as a whole to avoid redundancies.13 If one were to read the definition of a collective work too broadly, it would make some of the other enumerated categories redundant. For instance, “motion pictures” often involve many thousands of commissioned contributions that are ultimately assembled into a collective whole.14 But Congress listed “motion pictures” separately from “collective works.”15 This placement suggests that “collective works” are perhaps not a catch-all for any work in which commissioned contributions are assembled into a whole.
On the other hand, in writing the definition of “collective work,” Congress may have merely intended to provide three examples. This argument is the better one. It stays true to the meaning of “such as,” finds ample support in case law, and best advances the purpose of the Copyright Act.
Importantly, this interpretation finds support from the Supreme Court itself. In one of its most famous copyright decisions, the Court expressly held that the Copyright Act’s use of “such as” is meant to be “illustrative and not limitative.”16 There, the fair use provision, a wholly different provision, was at issue.17 However, courts have routinely presumed that the use of the same expression in different parts of a statute imply the same meaning.18 Therefore, when Congress used “such as” in the definition of a collective work, there, too, it intended to be “illustrative.”
In line with this interpretation, courts around the country have had little trouble concluding that categories of works beyond literary ones can be collective works. The Fifth Circuit, in Apple Barrel Productions v. Beard, held that a country music program comprised of various live performances is a collective work.19 Notably, one year later, the same court decided Canfield v. Ponchatoula Times, in which it held that newspapers are collective works because they are “periodicals.”20 Despite relying on the enumerated category of ‘periodical’ in its decision in Canfield, the court did not overrule its holding in Apple Barrel—implying that works without a literary quality can still be collective works. Similarly, the Fourth Circuit has held that a collection of photographs is a collective work.21 And recently, the Southern District of New York held that a programmer’s creation and combination of various computer programs were contributions to a collective work.22
While these courts’ expansive interpretation makes the definition of a “collective work” redundant, both Melville Nimmer, the preeminent copyright scholar, and the Copyright Office itself have acknowledged that collective works can be any type of work.23 As support for this proposition, many scholars posit that legislatures are often deliberately redundant and reinforcing with their language.24
Case law is not the only thing that weighs in favor of this expansive interpretation. In fact, a narrow limiting principle would be problematic. The Copyright Act is meant to embrace new forms of creativity.25 Failing to give copyright protection to works merely because they are not like periodical issues, anthologies, and encyclopedias could stifle innovation. After all, creators might be unwilling to assemble certain works if others would then be free to copy their creations.
“Assembled into a Collective Whole”
For a work to be a “collective work,” the constituent parts must be “assembled into a collective whole.” Notably, no court has yet held that an art gallery exhibit is a collective work. But that fact is unsurprising. Most art exhibits feature pieces of artwork displayed side by side or together in the same room.26 That type of collection is certainly not what Congress had in mind when it required that works be “assembled into a collective whole.”
One recent case that addresses a similar issue is Kasten v. Jerrytone.27 There, an entrepreneur commissioned a local artist to create paintings of the French Quarter in Louisiana.28 He ultimately imprinted images of the paintings on individual greeting cards and sold them as a set.29 When the entrepreneur tried to enforce his copyright in the individual paintings, the court ruled that the paintings were not contributions to a collective work.30
Because of the court’s rather cursory analysis, one might mistakenly view the case as a signal that a piece of artwork cannot be a contribution to a collective work. However, rather than categorically dismissing artwork as out of scope to reach its conclusion, the Kasten court did something different. It implicitly evaluated whether the greeting cards were “assembled into a collective whole.” Because each greeting card was self-contained and meant to be used individually, the court held that they did not meet this definition.
Kasten thus confirms an important truth: the layman’s “collection” is not the Copyright Act’s “collective work.” Assembling contributions into a collective whole within the meaning of the Copyright Act entails something more than assembling them side by side like in an art gallery or in a packaged set like in Kasten. Courts have not yet found occasion to answer this seemingly elusive, and perhaps metaphysical, question of what it means for works to be “assembled into a collective whole.” Perhaps they do not have to. As Justice Potter Stewart once famously said of hard-core pornography: “I know it when I see it.”31
Perhaps the one type of art exhibit that could qualify for this definition is an art installation comprised of independent contributions. After all, with an installation, the works are unmistakably tied together in a way that the component parts of a typical art exhibit are not.
Once a judge can accept that a work contains works “assembled into a collective whole,” the rest of the analysis follows smoothly. For compilations, of which collective works are a part, one receives a copyright for the original selection, coordination, and arrangement of preexisting material.32 The Supreme Court has explicitly held that the bar for originality is not high.33 Consequently, if collective works were limited to only certain works, the Copyright Act would have an unfair loophole. That is, if a work is not a “collective work,” then the copyright in the selection, arrangement, and coordination of that work vanishes.
Others would be left to duplicate the exact same arrangements and license the underlying contributions. Such a holding would be unproblematic for gallerists who assembled artwork side by side in a gallery but would be wholly unacceptable for gallerists who create installations. In fact, it would disincentivize them from commissioning collective installations in the first place. That interpretation would run counter to the Copyright Act’s goal of encouraging innovation in the arts.
In theory, as a workaround, independent contractors could each copyright their work to start and then the commissioning party could assemble them into a compilation. After all, that arrangement would still allow the commissioning party a copyright in the overall work. However, that arrangement would leave independent contractors with copyrights in their works. That would be problematic. Thus, in the hypothetical, the artist would be free to sell mini replicas online. And while the gallerist would have an implicit license to use the underlying works in the installation,34 the artists could terminate that license after a set number of years have expired (called a “termination of transfer”),35 jeopardizing the long-term viability of what was supposed to be a permanent installation.
Even if the artists did not go so far as to pull the plug on the license, they would still have the right to renegotiate the licenses, forcing the gallerist to engage in an exhaustive number of conversations with contributors.36 And artists, if they owned the copyright, would be free to license the same works to rival gallerists.37 Any of these rights would put the commercial viability of the gallerist’s permanent installation at risk. The “work made for hire” provision was designed to prevent this very outcome.
* * * * *
The “work made for hire” provision presents an exception to the rule that the copyright in a work is awarded to the person who creates a work.38 Congress recognized that, in certain circumstances, it could more effectively promote creativity by awarding a copyright to the commissioning party, who took on economic risk. Accordingly, Congress struck a balance, enumerating certain categories for which the copyright would be automatically assigned to the commissioning party and leaving all other works to be assigned to the creator himself.39
A certain temptation exists to want to narrow the scope of “collective work” given Congress’s seemingly thoughtful line-drawing. However, courts and scholars have adopted a broad interpretation of the definition for good reason. Awarding the copyright to the commissioning party of a collective work allows them to exercise control over the constituent parts and ensure that contributors do not dilute the value of their artistic vision.
* Michael J. Gladstone is a J.D. Candidate (2022) at New York University School of Law. This piece is a commentary on a problem presented at the Cardozo BMI Entertainment and Media Law Moot Court Competition, which took place virtually in March 2021. The views expressed in this contribution do not necessarily represent the views of the author.
1. See Melville Nimmer & David Nimmer, 1 Nimmer on Copyright § 1.03 [A]. The United States Constitution itself gives Congress the power to enact copyright laws to “promote the Progress of Science,” which is better understood today to mean the encouragement of learning. U.S. Const. art. I, § 8, cl. 8; Melville Nimmer & David Nimmer, 1 Nimmer on Copyright § 1.03 [A] (further hypothesizing that “useful Arts,” mentioned in the same clause of the Constitution, are the subject of patent law and not copyright law).
2. See Nimmer, supra note 1, § 1.03 [A].
3. See id.
4. U.S. copyright law does have a “joint work” provision that provides for joint ownership of a work, but that provision is likely inapplicable here. A “joint work” is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole. 17 U.S.C. § 101.
5. These are some of the core exclusive rights in copyrighted work prescribed by 17 U.S.C. § 106.
6. See 17 U.S.C. § 101, 201(b).
7. Robert Penchina, The Creative Commissioner: Commissioned Works Under the Copyright Act of 1976, 62 N.Y.U. L. Rev. 373, 386 (1987).
8. 17 U.S.C. § 101.
10. See id.
11. Cf. United States v. Butler, 297 U.S. 1, 65 (1936) (giving weight to all words in the Constitution as to not render any of them meaningless).
12. 17 U.S.C. § 101 (emphasis added).
13. United States v. Am. Trucking Ass’ns, 310 U.S. 534, 543–44 (1940) (explaining that “purpose, rather than the literal words” can help courts avoid “absurd” interpretations of statutes).
14. Stephen Follows, How many people work on a Hollywood film?, Stephen Follows: Film Data and Education (Feb. 24, 2014), https://stephenfollows.com/how-many-people-work-on-a-hollywood-film/.
15. See 17 U.S.C. § 101.
16. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577 (1994).
17. Id. at 574.
18. See, e.g., Amarin Pharms. Ir. Ltd. v. FDA, 106 F. Supp. 3d 196, 210 (D.C. Cir. 2015) (explaining that, in the ordinary course, identical words used in different parts of the same statute are intended to have the same meaning).
19. 730 F.2d 384, 388 (5th Cir. 1984).
20 759 F.2d 493, 495 (5th Cir. 1985).
21. Metro. Reg’l Info. Sys. v. Am. Home Realty Network, Inc., 722 F.3d 591, 596 (4th Cir. 2013); cf. Mindlab Media, LLC v. LWRC Int’l, LLC, 2013 WL 1141987, at *5 (C.D. Cal. Mar. 18, 2013) (holding that a photograph to be used in a collection of photographs for promotional purposes is a contribution to a collective work).
22. Stanacard, LLC v. Rubard, LLC, 2016 WL 462508, at *8 (S.D.N.Y. Feb. 3, 2016); cf. IXL, Inc. v. AdOutlet.com, Inc., 2001 WL 315219, at *9 (N.D. Ill. Mar. 29, 2001) (holding that source code written for each section of a website is a separate, independent contribution to a collective work).
23. 11 Nimmer on Copyright 711(reading the definition of “collective work” to include “any other work” that contains a number of separate and independent works); United States Copyright Office Information Circular 34 at 3, Multiple Works (available at https://www.copyright.gov/circs/circ34.pdf).
24. “[The surplusage canon] must be applied with judgment and discretion [because] . . . [s]ometimes drafters do repeat themselves and do include words that add nothing of substance, either out of a flawed sense of style or to engage in the . . . belt-and-suspenders approach.” Antonin Scalia & Bryan A. Garner, Reading Law: The Interpretation of Legal Texts 176–77 (2012).
25. Register of Copyrights, 87th Cong., 1st Sess., Report on the General Revision of the U.S. Copyright Law 5 (H.R. Judiciary Comm. Print 1961) (“[T]he ultimate purpose of copyright legislation is to foster the growth of learning and culture for the public welfare, and the grant of exclusive rights to authors for a limited time is a means to that end.”).
26. See What Is An Art Exhibition?, Virtosu Art Gallery (Apr. 4, 2020), https://www.virtosuart.com/blog/what-is-an-art-exhibition (last visited Sept. 22, 2021).
27. 2004 U.S. Dist. LEXIS 16540 (E.D. La. Aug. 16, 2004).
28. Id. at *2.
29. Id. at *5.
30. Id. at *15.
31. Jacobellis v. Ohio, 378 U.S. 184, 197 (1974) (Stewart, J. concurring).
32. 17 U.S.C. § 101, 103.
33. Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991) (reasoning that to qualify for copyright protection, a work need only possess a “minimal degree of creativity”).
34. See, e.g., Effects Assoc., Inc. v. Cohen, 908 F.2d 555, 558–59 (9th Cir. 1990) (holding that the parties’ course of conduct created an implied license to use the special effects footage in the defendant’s motion picture).
35. 17 U.S.C. § 203(a)(3).
36. See Sound Recordings as Works Made for Hire: Hearings Before the Subcomm. on Cts. and Intellect. Prop. of the H. Comm. on the Judiciary, 106th Cong. 257 (2000) (explaining that the works in the nine enumerated categories tend to be works done at the “instance, direction, and risk” of a producer where it would be unfair to allow the contributors to terminate assignments of rights or where the works involved so many underlying contributors that allowing termination would create chaos).
37. See supra note 5 and accompanying text.
38. Easter Seal Soc’y for Crippled Children & Adults of La., Inc., v. Playboy Enters., 815 F.2d 323, 328 (5th Cir. 1987) (citing 17 U.S.C. § 201).
39. Penchina, supra note 7 at 386.