TD Bank NA v. Vernon Hill, II

PRECEDENTIAL

UNITED STATES COURT OF APPEALS
FOR THE THIRD CIRCUIT
_______________

No. 16-2897
_______________

TD BANK N.A.

v.

VERNON W. HILL, II,
Appellant
_______________

On Appeal from the United States District Court
for the District of New Jersey
(D.C. No. 1-12-cv-07188)
Honorable Robert B. Kugler, U.S. District Judge
_______________

Argued: October 22, 2018

Before: KRAUSE, COWEN, and FUENTES, Circuit Judges

(Opinion Filed: July 1, 2019)
Susan M. Leming, Esq.
Michael J. Miles, Esq.
William M. Tambussi, Esq. [Argued]
Brown & Connery
360 Haddon Avenue
P.O. Box 539
Westmont, NJ 08108

Lori E. Lesser, Esq.
Simpson Thacher & Bartlett
425 Lexington Avenue
New York, NY 10017

Counsel for Plaintiff-Appellee T.D. Bank N.A.

Louis M. Barbone, Esq.
Edwin J. Jacobs, Jr., Esq.
Michael F. Myers, Esq.
Jacobs & Barbone
1125 Pacific Avenue
Atlantic City, NJ 08401

Howard S. Hogan, Esq. [Argued]
Gibson Dunn & Crutcher
1050 Connecticut Avenue, N.W.
9th Floor
Washington, DC 20036

Counsel for Defendant-Appellant Vernon W. Hill, II

2
Phillip R. Malone, Esq.
Ashwin Aravind
Dylan I. Scher
Stanford Law School
Juelsgaard Intellectual Property and Innovation Clinic, Mills
Legal Clinic
559 Nathan Abbott Way
Stanford, CA 94305

Jeffery T. Pearlman, Esq.
University of Southern California
Gould School of Law
699 Exposition Boulevard
Los Angeles, CA 90089

Counsel for Amici Intellectual Property Law
Professors

_______________

OPINION OF THE COURT
_______________

KRAUSE, Circuit Judge.

This case marks the latest chapter in the bitter feud
between Commerce Bank, which has since merged with TD
Bank, and its former CEO, Vernon W. Hill, II. See generally
Hill v. TD Bank, NA, 586 F. App’x 874 (3d Cir. 2014);
Commerce Bancorp, LLC v. Hill, No. 08-cv-5628, 2010 WL

3
2545166 (D.N.J. June 18, 2010). Beset by acrimony, TD
Bank filed this copyright lawsuit against Hill, alleging that a
portion of his 2012 book infringes a neglected manuscript that
Hill co-authored while CEO of Commerce Bank. In
enjoining Hill from publishing or marketing his book, the
District Court concluded that TD Bank owned the copyright
under a letter agreement and that Hill’s book irreparably
violated the Bank’s “right to not use the copyright.” App. 9.
In this denouement, we resolve certain open questions in our
Circuit concerning employees’ rights to their artistic creations
and the proper exercise of equitable discretion.

We conclude that, although the agreement between the
parties did not vest initial ownership of the copyright in the
Bank by purporting to designate the manuscript a work “for
hire,” it did transfer any ownership interest Hill possessed to
TD Bank. As a result, Hill’s co-ownership defense, like his
other defenses, fails. As for the imposition of injunctive
relief, however, we cannot accept the District Court’s
sweeping conclusions, which would justify the issuance of an
injunction in every copyright case. Instead of employing
“categorical rule[s]” that would resolve the propriety of
injunctive relief “in a broad swath of cases,” courts should
issue injunctive relief only if the moving party makes a
sufficient showing that such relief is warranted under the
particular circumstances of that case. eBay Inc. v.
MercExchange, LLC, 547 U.S. 388, 393–94 (2006).
Accordingly, we will vacate the District Court’s permanent
injunction.

4
I. Background1

Described by American Banker as “the closest thing
that the staid banking industry has to a rock star,” App. 1157,
Vernon W. Hill, II headed Commerce Bank from its launch as
a single “store” in 1973 until June 2007, a few months before
TD Bank acquired it for approximately $8.5 billion. Hill built
Commerce Bank in the highly saturated commercial banking
industry by emphasizing customer loyalty through initiatives
such as extended hours, quick account openings, and free
perks at branches. His success also brought him personal
acclaim, including articles in The Wall Street Journal,
American Banker, The Guardian, The Philadelphia Inquirer,
and The Daily Telegraph.

As CEO of Commerce Bank, Hill reported to the
Board of Directors and handled the day-to-day management
of the Bank’s affairs, including reviewing the Bank’s
finances, visiting its stores, and handling real estate and
insurance matters. Under his employment agreement with
Commerce Bank, Hill had “primary responsibility for all
operations of Commerce and its subsidiaries . . . , provided
that such duties are consistent with his present duties,” and
agreed to “devote his full time and best efforts to the business
and affairs of Commerce and its subsidiaries.” App. 803.

1
We recount the facts largely based on the parties’
statements of undisputed facts with occasional references
directly to the testimony and documentary evidence cited
therein. For facts bearing on summary judgment, we view the
record in the light most favorable to Hill, as the losing party.
See Big Apple BMW, Inc. v. BMW of N. Am., Inc., 974 F.2d
1358, 1363 (3d Cir. 1992).

5
Notwithstanding this commitment, however, the Agreement
allowed Hill to pursue “outside activities,” which the
Agreement did not define. App. 803.

In 2006, Hill decided to write a book about his
business philosophy and more than 30-year tenure at the
Bank. Seeing this as a marketing opportunity, Commerce
Bank supported the endeavor by hiring a business book
author, Robert Andelman, to collaborate with Hill in drafting
the manuscript. Hill exchanged some emails about the
project during weekdays but primarily worked on the project
during evenings and weekends. Other Commerce Bank
employees sometimes assisted, for example, by answering
Andelman’s inquiries and providing feedback about the
manuscript. The final manuscript, completed in 2007,
recounts Commerce Bank’s history and business model from
Hill’s perspective. Resembling both an autobiography and a
marketing tool, the 2007 manuscript included both a personal
dedication to Hill’s wife and “the entire Commerce team,”
App. 834, and a $20 gift certificate to open an account at
Commerce Bank.

Commerce Bank spearheaded the publication efforts
by entering into an agreement with Portfolio, a division of
Penguin Books. In this publishing agreement, Commerce
Bank, which is defined as the “Author,” represented and
warranted that it was the exclusive owner of all rights
conveyed in the manuscript:

The Author [i.e., Commerce Bank] hereby
represents and warrants . . . that Vernon Hill is
the sole author of the Work; that the Work is or
will be Vernon Hill’s next book length
work . . . ; that the Author is the sole and

6
 exclusive owner of all rights granted to the
Publisher in this Agreement and has not
assigned, pledged or otherwise encumbered the
same; . . . that the Author has full power to
enter into this Agreement and to make the
grants herein contained.

App. 1142. For his part, Vernon Hill signed a letter to
Portfolio that referred to an attached copy of the publishing
agreement and provided:

I hereby unconditionally guarantee, promise
and agree with the Publisher, its successors and
assigns that the Author [i.e., Commerce Bank]
will, in all respects, faithfully perform and
fulfill all obligations of the Agreement on its
part to be performed and fulfilled at the time
and in the manner therein provided. I also
unconditionally guarantee that the Work is a
work made for hire within the meaning of the
United States Copyright Law and that the
Author is the owner of copyright in the Work
and has full power and authority to enter into
the Agreement.

App. 1139. Both this letter agreement and the publishing
agreement contain New York choice-of-law provisions.

But the best laid schemes of mice and men often go
awry: The relationship between Hill and Commerce Bank
soured, culminating in Hill’s termination and TD Bank’s
acquisition of Commerce Bank. See Hill, 586 F. App’x at
877. As a result, the 2007 manuscript was never published,

7
and by April 2008, Commerce Bank terminated the
publishing agreement with Portfolio.

As the years progressed, however, Hill sought to make
use of certain portions of the manuscript. By July 2010, Hill
had debuted his next commercial banking venture, Metro
Bank UK. The bank’s launch, the first in Great Britain for
over a century, garnered significant press coverage on both
sides of the Atlantic. Capitalizing on this comeback, Hill co-
authored another book with Andelman—this one describing
Hill’s experiences founding Metro Bank UK, the British
banking system, and Hill’s pet insurance company, Petplan
USA. The book, entitled FANS! Not Customers: How to
Create Growth Companies in a No-Growth World, became
available in November 2012 through online booksellers such
as Amazon and barnesandnoble.com. Hill also publicized the
book’s launch through interviews, including with Jim Cramer,
the host of Mad Money on CNBC, and with a columnist for
the Philadelphia Inquirer.

The plot thickened when this new endeavor came to
the attention of TD Bank. Having shelved the 2007
manuscript for years, the Bank suddenly registered it with the
Copyright Office and sent take-down demands to twenty
retailers alleging that Hill’s book infringed its copyright.
Shortly thereafter, it filed suit in the District of New Jersey
for copyright infringement.

As the litigation progressed, discovery revealed that
TD Bank had little actually at stake: TD Bank admitted that,
at most, 16% of the book infringed the 2007 manuscript, and
that it has never published the 2007 manuscript or any
competing work and has no interest in doing so.

8
 Nonetheless, in its summary judgment opinion, the
District Court concluded that, because the letter agreement
“deem[ed] the work to be a work made for hire,” it was in
fact a work for hire, vesting the copyright in the 2007
manuscript with Commerce Bank as Hill’s employer. App.
35 n.10. Rejecting Hill’s infringement defenses, the District
Court determined that Hill had copied expressive content that
was not unprotectable under the merger and scène-à-faire
doctrines. And Hill’s copying, the District Court held, was
not fair use because Hill did not repurpose the copied portion;
the original manuscript was unpublished; and Hill’s
infringement would likely result in “some impairment” to the
market for the 2007 manuscript “should TD Bank ever choose
to publish [it].” App. 48 (emphasis omitted). But the District
Court declined to issue an injunction, explaining that TD
Bank had failed to show a likelihood of continued
infringement and had not addressed at all the adequacy of
legal remedies or the balance of hardships.

Hill faced his peripeteia in this litigation a year later.
Confronted with evidence of Hill’s continued promotion of
the 2012 book and distribution of complimentary copies at a
local chamber of commerce event, the District Court enjoined
Hill from “publish[ing], market[ing], distribut[ing] or
sell[ing]” the 2012 book. App. 4. This conduct, the District
Court found, irreparably harmed TD Bank by depriving it of
the “right to not use the copyright.” App. 9. Hill timely
appealed.

II. Jurisdiction

There is no final judgment in this case because the
District Court has stayed TD Bank’s request for infringer’s
profits under 17 U.S.C. § 504(b) pending the outcome of this

9
appeal. See Marshak v. Treadwell, 240 F.3d 184, 190–92 (3d
Cir. 2001); 28 U.S.C. § 1291. Thus, we have jurisdiction
only over the District Court’s “grant[]” of a permanent
injunction under 28 U.S.C. § 1292(a)(1).2 See Marshak, 240
F.3d at 190. Before reaching the merits of Hill’s appeal, we
must first address TD Bank’s contention that this appeal is
moot and that we lack jurisdiction to consider the District
Court’s summary judgment ruling, even to the extent that it
served as the necessary predicate for the permanent
injunction. We reject both arguments.

A. Mootness

TD Bank first contends that this appeal is moot
because Hill released a revised version of the book about a
month after the District Court issued the injunction and, as
TD Bank posits in a footnote to its appellate brief, “the July 7,
2016 Kindle version [of Hill’s book] . . . does not infringe on
the 2007 manuscript.”3 Appellee’s Br. 3 n.1.

2
The District Court had jurisdiction over this action
under 28 U.S.C. §§ 1331, 1338(a).
3
TD Bank’s and Hill’s motions to supplement the
record on appeal are granted insofar as they pertain to events
that transpired since the District Court’s decision. See Clark
v. K-Mart Corp., 979 F.2d 965, 967 (3d Cir. 1992)
(limitations on supplementing the record do not preclude
appellate court from considering “unrebutted” evidence to
determine whether an appeal is moot); see also McKay v.
Federspiel, 823 F.3d 862, 868 (6th Cir. 2016) (appellate court
may consider after-acquired evidence pertaining to the merits

10
 Compliance with an injunction can moot an appeal if
there is no “reasonable expectation” that the injunction will
govern the enjoined party’s future conduct or otherwise injure
him. Bell v. Wolfish, 441 U.S. 520, 543 n.25 (1979); see
Harris v. City of Philadelphia, 47 F.3d 1311, 1326 (3d Cir.
1995); 13B Charles Alan Wright et al., Federal Practice &
Procedure § 3533.2.2 (3d ed. 2018). Yet TD Bank’s footnote
conceding that the July 7, 2016 Kindle version does not
infringe the 2007 manuscript hardly constitutes the broad
“unconditional and irrevocable” covenant not to sue that is
needed to moot a case. See Already, LLC v. Nike, Inc., 568
U.S. 85, 93 (2013) (applying the voluntary-cessation
doctrine). Even if we accept the footnote as legally binding,
it applies only to “the July 7, 2016 Kindle version.”
Appellee’s Br. 3 n.1. In fact, at oral argument, TD Bank’s
counsel refused to concede that any other version of the
revised book complied with the injunction, demanding twice
that Hill first “certif[y]” that he will not publish, distribute, or
otherwise market the 2012 book (which sounds much like a
consent decree). Third Cir. Arg. Recording at 57:48–58:06,
58:38–58:50.4 The record also reflects that the Bank sent two
letters asserting that the rewritten book may still contain
copyrighted content; the latter letter threatened to bring
contempt sanctions against Hill. Hill, meanwhile, continues
to profess his intention “to share the earlier book.”
Appellant’s Reply Br. 3.

of a claim “for the sake of thoroughness” if it would “not
change the outcome” of the appeal (citation omitted)).
4
The recording of oral argument can be found at
https://www2.ca3.uscourts.gov/oralargument/audio/16-
2897TDBankNAvVernonWHill.mp3.

11
 TD Bank’s other arguments on appeal are inconsistent
with its assertion that this case is moot. For instance, the
Bank urges us not to vacate the permanent injunction if we
conclude that this appeal is moot, see United States v.
Munsingwear, Inc., 340 U.S. 36, 39 (1950), because doing so
would “permit the infringing 2012 Book to become
available.” Appellee’s Br. 3 n.3. That is to say, TD Bank
does believe the injunction meaningfully constrains Hill’s
future conduct. And, in the same brief as its footnote
concession, TD Bank accuses Hill of “continu[ing] to infringe
TD Bank’s copyright in the 2007 Manuscript” even “after the
entry of the PI order.” Appellee’s Br. 24 n.12. TD Bank’s
motion to supplement the record reiterates these allegations,
citing material that supposedly “evidences the District Court’s
prescience in finding that Mr. Hill was likely to continue
infringing TD Bank’s copyright.” Appellee’s Mot. Suppl. R.
at 8 (Apr. 25, 2018).

TD Bank cannot have it both ways: Hill cannot be
both a continuing infringer and fully compliant with the
permanent injunction. As there is at least a reasonable
likelihood that the injunction controls Hill’s future conduct,
this appeal is not moot. See Bell, 441 U.S. at 543 n.25.

B. Scope of the Appeal

TD Bank next contends that this Court lacks
jurisdiction to consider the merits of the non-appealable
summary judgment order—even to the extent that the
permanent injunction order rests on its determination of
ownership and liability—because Hill did not separately
identify the summary judgment order in his notice of appeal.
We are unpersuaded.

12
 Our interlocutory jurisdiction under § 1292(a)(1)
encompasses matters “inextricably linked” with the issuance
of a permanent injunction. Marshak, 240 F.3d at 190;
Kershner v. Mazurkiewicz, 670 F.2d 440, 449 (3d Cir. 1982)
(en banc). Applying this standard, we have previously
reviewed summary judgment orders that made the
determination of liability necessary for the issuance of a
permanent injunction. See, e.g., Doeblers’ Pa. Hybrids, Inc.
v. Doebler, 442 F.3d 812, 819 (3d Cir. 2006); Cureton v.
NCAA, 198 F.3d 107, 113 (3d Cir. 1999). Although we
acquire jurisdiction only over orders specified or “fairly
inferred” in the notice of appeal, we construe such notices
liberally. Wiest v. Lynch, 710 F.3d 121, 127 (3d Cir. 2013)
(citation omitted). To that end, we have held that we may
review an unspecified order if (1) it is connected to those
specified in the notice of appeal, (2) the intent to appeal the
unspecified order is “apparent,” and (3) the appellee is not
prejudiced. Id. at 127; Polonski v. Trump Taj Mahal Assocs.,
137 F.3d 139, 144 (3d Cir. 1998).

Hill did not separately identify the summary judgment
order in his notice of appeal. Insofar as this was error, it is
understandable because Hill cannot directly appeal the
summary judgment order under § 1292(a)(1). At a minimum,
the summary judgment order falls within those unspecified
orders that we may consider on appeal. See Wiest, 710 F.3d
at 127. The summary judgment order established two
fundamental prerequisites for issuing a copyright
injunction—namely, TD Bank’s ownership of the copyright
and Hill’s liability for infringement. The District Court also
made repeated references in its permanent injunction opinion
to its summary judgment decision, including incorporating by
reference that order’s rendition of the undisputed facts. Nor

13
can TD Bank seriously claim that the failure to specify the
summary judgment order prejudiced it, as the record is
complete and the Bank had notice of—and fully briefed—the
ownership and liability issues.

Our conclusion is buttressed by the Second Circuit’s
decision in Shakhnes v. Berlin, 689 F.3d 244 (2d Cir. 2012),
which held that the appellate court had jurisdiction to review
the district court’s grant of partial summary judgment, even
though it was not specifically listed in the notice of appeal
from a permanent injunction. Id. at 250 n.3. The summary
judgment decision, the Second Circuit stressed, was “the
principal legal basis” for issuing the permanent injunction and
“[a]ny doubt” should have been dispelled by the injunction
opinion’s reference to the prior order. Id. We concur and
conclude that our jurisdiction extends to the District Court’s
summary judgment decision, inasmuch as that decision
resolved ownership of the copyright and Hill’s liability.

III. Discussion

We review the District Court’s grant of summary
judgment de novo, Brownstein v. Lindsay, 742 F.3d 55, 64
(3d Cir. 2014), and its grant of a permanent injunction for
abuse of discretion, Doeblers’ Pa. Hybrids, 442 F.3d at 819.
A district court abuses its discretion if its decision rests on an
incorrect legal standard, a clearly erroneous factual finding,
or a misapplication of the law to the facts. Id. We may
affirm on any basis supported by the record, even if it departs
from the District Court’s rationale. Erie Telecomms., Inc. v.
City of Erie, 853 F.2d 1084, 1089 & n.10 (3d Cir. 1988).

To prevail at summary judgment, TD Bank needed to
establish that: (1) it possessed exclusive rights in the 2007

14
manuscript, and (2) Hill’s 2012 book copied protected
expression without privilege. Feist Publ’ns, Inc. v. Rural Tel.
Serv. Co., 499 U.S. 340, 361 (1991). The Bank then needed
to show that the District Court should exercise its discretion
to award permanent injunctive relief. eBay, 547 U.S. at 391.
We address each requirement in turn.5

A. Exclusive Rights in the 2007 Manuscript

TD Bank and Hill dispute whether the Bank
exclusively owns the copyright in the 2007 manuscript. Hill
claims that his contributions to the work make him at least a

5
Although we ultimately vacate the injunction under
eBay’s four-factor test, we decline to merely assume that TD
Bank exclusively owns the 2007 manuscript and that Hill’s
liability defenses fail. Without resolving the issue here, we
note that several circuits have held that a plaintiff must
demonstrate ownership of exclusive rights to establish
“standing,” without explaining whether they mean this
requirement is jurisdictional. See Urbont v. Sony Music
Entm’t, 831 F.3d 80, 88 n.6 (2d Cir. 2016); Righthaven LLC
v. Hoehn, 716 F.3d 1166, 1171 (9th Cir. 2013); see also
Barefoot Architect, Inc. v. Bunge, 632 F.3d 822, 827 (3d Cir.
2011) (recounting that the district court dismissed the
complaint for lack of standing because the plaintiff did not
own any rights in the work). The Federal Circuit views the
concomitant ownership requirement under the Patent Act as
jurisdictional. See, e.g., Fieldturf, Inc. v. Sw. Recreational
Indus., Inc., 357 F.3d 1266, 1268 (Fed. Cir. 2004). Resolving
the ownership dispute on this appeal will put to rest any
jurisdictional concerns and, along with considering Hill’s
liability defenses, will help advance this litigation on remand.

15
joint author, in which case TD Bank could not sue him for
copyright infringement. See Brownstein v. Lindsay, 742 F.3d
55, 68 (3d Cir. 2014); Cortner v. Israel, 732 F.2d 267, 271
(2d Cir. 1984). TD Bank does not dispute that Hill made an
artistic contribution sufficient to secure authorial rights but
contends that Commerce Bank exclusively owned the work
through the letter agreement that Hill signed or because it
satisfied the traditional agency criteria for determining
whether a work falls within the scope of employment.
Although the meaning of authorship has bedeviled
philosophers and writers for centuries, see, e.g., Immanuel
Kant, Critique of Judgment 174–88 (Werner S. Pluhar trans.,
1987) (1790), we can resolve it here based on the Copyright
Act and controlling precedent. Hill’s co-ownership defense
founders if: (1) the Copyright Act’s statute of limitations bars
the defense, (2) TD Bank exclusively owns the manuscript
under the letter agreement, or (3) Hill created it within the
scope of his employment under agency-law principles. We
consider these issues seriatim.

1. The Copyright Act’s Three-Year Statute of
Limitations Does Not Apply to Hill’s Co-
Ownership Defense

Before addressing the merits of Hill’s co-ownership
defense, we must address TD Bank’s argument that the
Copyright Act’s three-year statute of limitations prevents us
from even considering it. Typically, a statute of limitations
aims to “keep stale litigation out of the courts,” not to bar the
“consideration of a particular defense” in timely litigation.
United States v. W. Pac. R.R. Co., 352 U.S. 59, 72 (1956).
Hence, the Copyright Act’s three-year statute of limitations
does not preclude a defendant in an infringement action from

16
raising an ownership defense.6 Pritchett v. Pound, 473 F.3d
217, 220 (5th Cir. 2006); Burne Hogarth v. Edgar Rice
Burroughs, Inc., 342 F.3d 149, 163–64 (2d Cir. 2003); 3
Melville B. Nimmer & David Nimmer, Nimmer on Copyright
§ 12.05 (2018) (hereinafter Nimmer on Copyright) (observing
that the Copyright Act’s statute of limitations “has no
purchase when a plaintiff attempts to invoke [it] . . . to defeat
a defendant’s position of being the pertinent author,” because
it operates only as a defense against claims or counterclaims).
This rule holds true even if the defendant also brings an
untimely ownership counterclaim. Burne Hogarth, 342 F.3d
at 164. Thus, irrespective of whether Hill’s co-ownership
counterclaim is time-barred (a question we lack jurisdiction to
reach), the Copyright Act’s statute of limitations does not
prevent Hill from raising co-ownership as a defense to TD
Bank’s infringement lawsuit.

2. The Letter Agreement Granted TD Bank
Exclusive Ownership of the 2007
Manuscript

The District Court correctly determined that TD Bank
exclusively owns the rights to the 2007 manuscript under the
letter agreement, but it did so based on a mistaken belief that
the letter agreement vested original ownership in the Bank by
“deem[ing]” the work to be a work “for hire.” App. 35 n.10.

6
Notably, the Lanham Act does preclude a defendant
from challenging, among other issues, the ownership of a
registered trademark after five years if the registered owner
complies with certain formalities; the Act calls these marks
“incontestable.” 15 U.S.C. §§ 1065, 1115(b). The Copyright
Act contains no analogous provision.

17
To explain why we nonetheless affirm, we must tease out the
distinction between the work-for-hire and assignment
doctrines, explaining how those doctrines relate to the terms
of the agreement here.

Work-for-Hire Doctrine. The 1976 Copyright Act’s
definition of a “work made for hire” reflects a “carefully
worked out compromise” between the artistic guilds, whose
members disfavored the work-for-hire doctrine because of
their lesser bargaining power, and the major publishers,
studios, and record labels, which supported a broader work-
for-hire doctrine to facilitate the acquisition of rights. Cmty.
for Creative Non-Violence (“CCNV”) v. Reid, 490 U.S. 730,
745–48 & nn.11–14 (1989) (citation omitted). The Act
defines a work for hire as either (1) a work created by an
employee within the scope of his employment, or (2) a
“specially ordered or commissioned” work if it falls within
nine enumerated categories of works and the parties agree in
writing to designate it as a work for hire. 17 U.S.C. § 101.
The definition thus establishes “two mutually exclusive
means” by which a work can attain for-hire status: the first
for employees, and the second for independent contractors.
CCNV, 490 U.S. at 742–43.

The 2007 manuscript does not meet the second
definition because Hill did not serve as an independent
contractor and the manuscript does not fall within any of the
nine enumerated categories of works. Accordingly, the
manuscript could only receive work-for-hire treatment if it
satisfied the first definition—that is, if Hill, while an
employee of TD Bank, created it within the scope of his
employment. To determine whether a work falls within the
scope of employment, courts should apply general principles
of agency law. Id. at 738, 740–41.

18
 In its summary judgment decision, the District Court
recited these principles correctly but nonetheless accepted TD
Bank’s argument that the letter agreement itself vested
exclusive ownership with the Bank, stating that “[l]anguage
in a written instrument . . . that deems the work to be a work
made for hire within the meaning of the Copyright Act may
. . . vest ownership exclusively with an employer.” App. 35
n.10.

That was error. It appears the District Court confused
an original vesting of ownership under the work-for-hire
doctrine with a transfer of ownership rights via an
assignment. By its terms, the Copyright Act recognizes only
nine specified categories of works by independent contractors
that can be deemed “for hire” through a signed writing. 17
U.S.C. § 101(2). For an employee’s work to receive for-hire
treatment, by contrast, the work must actually come within
the “scope of his or her employment.” Id. § 101(1). Certain
writings, such as negotiated employment agreements, may
sometimes help clarify the scope of employment, when
considered under general agency-law principles. See U.S.
Auto Parts Network, Inc. v. Parts Geek, LLC, 692 F.3d 1009,
1018 (9th Cir. 2012); but cf. Garcetti v. Ceballos, 547 U.S.
410, 424–25 (2006) (observing that “[f]ormal job descriptions
often bear little resemblance” to an employee’s actual duties,
and the mere inclusion of a task in a job description “is
neither necessary nor sufficient to demonstrate that
conducting the task is within the scope of the employee’s
professional duties”). But a bare statement that a particular
work is “for hire,” says nothing about the scope of an
individual’s employment and cannot suffice on its own. Had
Congress intended to permit parties to “deem” works by
employees as “for hire,” it would have so specified in

19
subsection 101(1), just as it did for independent contractors in
subsection 101(2). Id. But it did not. And where, as here,
“Congress has shown that it knows how to [adopt a measure]
in express terms,” it is “particularly inappropriate” to extend
that policy to another subsection lacking such language.
Kimbrough v. United States, 552 U.S. 85, 103 (2007);
Barnhart v. Sigmon Coal Co., 534 U.S. 438, 452 (2002).

Whether a writing operates to render a work “for hire”
or to assign the author’s interest may seem like a distinction
without a difference. But that distinction, though technical,
does carry some practical consequences. If a work qualifies
as a work for hire, the Act treats the employer or principal as
the author, and the copyright presumptively vests in the
principal unless the parties execute an agreement to the
contrary. 17 U.S.C. § 201(b). If a work does not satisfy the
statutory definition, the author can still assign it but retains
certain non-waivable rights to cancel the transfer after 35–40
years, id. § 203(a)(3), and—depending on the type of work—
waivable moral rights in the work’s proper attribution and
integrity, id. § 106A(a). The creator of a work for hire has
neither, see id. §§ 101, 106A(a), 203(a), so allowing parties to
deem a work as “for hire” without fulfilling the statutory
requirements would undercut the Copyright Act’s protection
of those termination and moral rights and would negate the
difference between a work for hire and an assigned work.7
That difference underscores why an employee’s work created

7
A work’s status also determines the duration of the
copyright: A work-for-hire copyright has a fixed term of 95–
120 years, while an ordinary copyright generally persists for
the life of the author plus 70 years. 17 U.S.C. §§ 302(b), (c).

20
outside the scope of employment cannot simply be
“deem[ed]” for hire.

Our view accords with those of leading copyright
scholars and other Courts of Appeals. The Nimmer treatise,
for instance, observes that “an agreement . . . whereby works
prepared by the employee that are not prepared within the
scope of employment are nevertheless deemed to be ‘works
made for hire’ will not in itself convert such works into the
‘for hire’ category.” 1 Nimmer on Copyright
§ 5.03[B][1][b][ii]; accord Goldstein on Copyright § 4.3 (3d
ed. 2018) (noting that, unless the work satisfies the
“objective” criteria of the work-for-hire doctrine, “A’s
express agreement that the work prepared by A will constitute
a work made for hire by B will not suffice to make the work
one for hire, nor to make B the author”); F. Jay Dougherty,
Not A Spike Lee Joint? Issues in the Authorship of Motion
Pictures Under U.S. Copyright Law, 49 UCLA L. Rev. 225,
317–18 (2001) (“Parties cannot simply agree that works not
within the scope of employment are works made for hire with
the employer deemed the author.”). Our sister circuits
likewise agree that, although parties to an employment
relationship can agree to alter the statutory presumption that a
work-for-hire copyright vests with the employer, they cannot
by contract “vary the work’s status as a work made for hire.”
Baltimore Orioles, Inc. v. Major League Baseball Players
Ass’n, 805 F.2d 663, 670 (7th Cir. 1986) (citing M. Nimmer,
Nimmer on Copyright § 5.03[D] (1985)); see Saenger Org.,
Inc. v. Nationwide Ins. Licensing Assocs., Inc., 119 F.3d 55,
62 (1st Cir. 1997); Marvel Characters, Inc. v. Simon, 310
F.3d 280, 291 (2d Cir. 2002).

For these reasons, the District Court was mistaken in
concluding that the letter agreement vested ownership in the

21
Bank by deeming the manuscript a work for hire. But
although it affixed the wrong label, the Court’s determination
of ownership was correct because the agreement operated as
an assignment—the issue to which we now turn.

Assignment. The validity and import of an assignment
generally is governed by state contract law. See Roger Miller
Music, Inc. v. Sony/ATV Publ’g, LLC, 477 F.3d 383, 392 (6th
Cir. 2007); Walthal v. Rusk, 172 F.3d 481, 485 (7th Cir.
1999). The Copyright Act merely adds that an assignment
must be memorialized by an “instrument of conveyance, or a
note or memorandum of the transfer, . . . in writing and
signed by the owner of the rights conveyed or such owner’s
duly authorized agent.” 17 U.S.C. § 204(a); see Barefoot
Architect, Inc. v. Bunge, 632 F.3d 822, 827 (3d Cir. 2011).

Here, the parties agree that New York law applies
under the letter agreement’s choice-of-law clause. Under that
state’s law, courts construe assignments using the “same rules
which obtain in the interpretation of other contracts,” Crook
v. Rindskopf, 12 N.E. 174, 177 (N.Y. 1887), which include
giving effect to the parties’ intent as principally expressed
through the words of the agreement itself, Greenfield v.
Philles Records, Inc., 780 N.E.2d 166, 170 (N.Y. 2002).
Resort to extrinsic evidence is permitted only if ambiguity
exists within the four corners of the agreement. Brad H. v.
City of New York, 951 N.E.2d 743, 746 (N.Y. 2011). If it
does not, a court should construe the agreement to “carry out
the plain purpose and object” of the contract and to give
effect to the parties’ “over-all intention.” Kass v. Kass, 696
N.E.2d 174, 181 (N.Y. 1998) (citation omitted). The
agreement need not comply with any formalities or invoke
particular language to constitute an assignment; any writing
will suffice as long as “the assignor has, in some fashion,

22
manifested an intention to make a present transfer of his
rights to the assignee.” Deutsche Bank Nat’l Tr. Co. v.
Romano, 147 A.D.3d 1021, 1023 (N.Y. App. Div. 2007)
(citation and emphasis omitted); Whalen v. Gerzof, 206
A.D.2d 688, 690 (N.Y. App. Div. 1994).

The letter agreement evinces that intention in both of
its principal covenants. In the first, Hill acknowledged the
publishing agreement, a copy of which was attached to the
letter, and “guarantee[d], promise[d] and agree[d] with the
Publisher . . . that the Author [i.e., Commerce Bank] will, in
all respects, faithfully perform and fulfill all obligations of the
Agreement.” App. 1139. That publishing agreement
provided that “the Author [i.e., Commerce Bank] is the sole
and exclusive owner of all rights granted to the Publisher in
this Agreement and has not assigned, pledged or otherwise
encumbered the same; . . . that the Author has full power to
enter into this Agreement and to make the grants herein
contained.” App. 1142. In the second covenant, Hill
“unconditionally guarantee[d] that the Work is a work made
for hire within the meaning of the United States Copyright
Law and that the Author is the owner of copyright in the
Work and has full power and authority to enter into the
Agreement.” App. 1139.

Hill makes much of the letter’s use of the word
“guarantee,” for a guarantee typically describes an agreement
to pay a principal obligor’s debt upon that party’s default; the
guarantor does not become a party to the underlying
agreement and assumes only secondary liability. Midland
Steel Warehouse Corp. v. Godinger Silver Art Ltd., 276
A.D.2d 341, 343 (N.Y. App. Div. 2000). But the mere use of
the word “guarantee” in a contract “does not necessarily
establish the nature of the obligation,” because the term, when

23
read in context, may not establish a guarantor-guarantee
relationship. Brewster Transit Mix Corp. v. McLean, 169
A.D.2d 1036, 1037 (N.Y. App. Div. 1991). In Brewster, for
example, the New York Appellate Division concluded that a
defendant assumed primary liability under an agreement
providing that the party, both individually and as an officer of
a corporation, “guarantee[d] to pay within the established
terms for all purchases charged to my account.” Id. at 1036.
Although the agreement used the word “guarantee,” the court
concluded that it in fact reflected the defendant’s assumption
of primary liability as a co-obligor. Id. at 1037; see also New
York Plumber’s Specialties Co. v. 91 E. End Corp., 366
N.E.2d 866, 867 (N.Y. 1977) (concluding that an agreement
under which the “undersigned . . . guarantee[d] the full and
prompt payment to you, of all indebtedness due to you” was
not a guarantee despite the use of that term).

Read as a whole, the terms of the letter agreement do
not manifest an intent to assume secondary liability.
Although Hill’s commitment “guarantee[ing], promis[ing]
and agree[ing]” that Commerce Bank would fulfill its
obligations could by itself suggest a guarantee, Hill separately
“guarantee[d]” that the manuscript “is a work made for hire,”
that Commerce Bank “is the owner of copyright,” and that the
Bank “has full power to enter into” the publishing agreement.
App. 1139. Nothing in these latter provisions resembles a
true guarantee, as Hill assumed these obligations without
reference to any other agreement or any other party’s
obligations.

Instead, Hill’s commitments together convey an
unmistakable intent to effect a present transfer of any interest
he possessed in the manuscript. Hill’s assurance that the
manuscript “is a work made for hire,” App. 1139, though

24
insufficient to actually render it for hire, denotes an intent to
relinquish his interest in the copyright. See 1 Nimmer on
Copyright § 5.03[B][1][b][ii]. The use of the definite article
“the” in “[Commerce Bank] is the owner of copyright” also
implies that Commerce Bank is the sole owner of the
copyright. App. 1139; see, e.g., Edgenet, Inc. v. Home Depot
U.S.A., Inc., 658 F.3d 662, 666 (7th Cir. 2011). And this
implication gains force in the second half of that sentence,
which provides that Commerce Bank has “full power” to
execute the publishing agreement, because a co-owner lacks
the authority to grant a truly exclusive license without the
consent of all co-owners. Brownstein, 742 F.3d at 68; see
Davis v. Blige, 505 F.3d 90, 101 (2d Cir. 2007). Finally, any
lingering doubt is dispelled by the letter’s reference to the
publishing agreement, which states that Commerce Bank “is
the sole and exclusive owner of all rights granted to the
Publisher in this Agreement.”8 App. 1142 (emphasis added).

We recognize that courts do not lightly infer that a
party has assigned his interest in a copyright, particularly
given the Copyright Act’s writing requirement, and in
doubtful cases, a document should not be construed to divest
an author completely of his ownership interest. See Baisden
v. I’m Ready Prods., Inc., 693 F.3d 491, 500 (5th Cir. 2012)
(endorsed check for royalties did not constitute an
assignment); Radio Television Espanola S.A. v. New World
Entm’t, Ltd., 183 F.3d 922, 927 (9th Cir. 1999) (fax
referencing a deal without any indication of its terms and

8
To the extent that Hill suggests that an assignment
would fail unless he entered into an agreement directly with
the assignee (Commerce Bank), he is mistaken. See
Restatement (Second) of Contracts § 327 cmt. a (1981).

25
another discussing contract negotiations did not satisfy the
writing requirement); Playboy Enters., Inc. v. Dumas, 53 F.3d
549, 564 (2d Cir. 1995) (accepting, as not clearly erroneous,
the district court’s finding that a stamp on an endorsed check
“assign[ing] . . . all right, title and interest” without
mentioning “copyright” constituted an assignment of only the
physical copy of a painting). We do not decide whether any
of Hill’s commitments standing alone, including the failed
attempt to deem the work for hire, would suffice to effect an
assignment. When considered as a whole, however, the letter
agreement satisfies the requirements of an assignment under
both the Copyright Act and New York law, and we will
affirm the District Court’s ownership determination on this
basis.9

9
Our dissenting colleague slices TD Bank’s argument
thinly, arguing that we should not affirm because it “waived”
the assignment issue. While we take this opportunity to
clarify that a work cannot fall within the scope of
employment without satisfying agency-law criteria, the
District Court’s contract-law analysis, though adopting
incorrect nomenclature, was sound. In fact, Hill (correctly)
observes in his opening brief that the District Court conflated
the two doctrines and therefore devotes more than four pages
to the assignment question (even labeling it as such). In
considering whether Hill assigned any interest he had, we do
not stray from the passages in the agreements that TD Bank
identified in its interrogatory response as giving it exclusive
ownership and that the parties dispute on appeal. Where two
arguments relate so closely, neither is waived or forfeited.
See, e.g., Lebron v. Nat’l R.R. Passenger Corp., 513 U.S.
374, 380 (1995) (considering an alternative argument where

26
the petition, “though couched in terms of a different but
closely related theory, fairly embraced [it]”).

In any event, we may affirm on any ground supported
by the record as long as the appellee did not waive—as
opposed to forfeit—the issue. Compare Bistrian v. Levi, 912
F.3d 79, 88–89 (3d Cir. 2018) (affirming in part based on a
“threshold question of law” that the appellees neither raised
below nor on appeal), with Holk v. Snapple Beverage Corp.,
575 F.3d 329, 336 (3d Cir. 2009) (appellee waived a separate
argument by “explicitly disclaim[ing]” it). Much like the
other statements our dissenting colleague references, the
Bank’s response to a request for admission admitted the lack
of an assignment only “to the extent that” the Bank argued
that initial ownership had already vested with the Bank under
the same agreement. App. 1307 (emphasis added). A request
for admission does not serve as a proper substitute for a
contentions interrogatory, see United Coal Cos. v. Powell
Const. Co., 839 F.2d 958, 967–68 (3d Cir. 1988), and Hill
neither sought clarification of TD Bank’s response nor moved
to have the matter deemed fully admitted, see Fed. R. Civ. P.
36(a)(6); 8B Charles Alan Wright et al., Federal Practice &
Procedure § 2260 (3d ed. 2019). The Bank has consistently
argued that it exclusively owns the 2007 manuscript under the
letter agreement, and we see no reason to treat its mislabeling
of that substantially correct contract-law argument as the
“intentional relinquishment . . . of a known right.” Robinson
v. First State Cmty. Action Agency, 920 F.3d 182, 187 (3d
Cir. 2019).

27
 3. Whether the Manuscript Fell Within the
Scope of Hill’s Employment

Although the letter agreement constitutes a valid
assignment, the question remains whether the 2007
manuscript fell within the scope of Hill’s employment. If it
did, the work would receive for-hire treatment and Hill would
lack any right to terminate the assignment. See 17 U.S.C. §
203.

This Court has not had occasion to expound on when a
work falls within the scope of employment. CCNV, however,
held that the terms “employee” and “scope of employment”
should be construed in light of general principles of agency
law, citing section 228 of the Restatement (Second) of
Agency. 490 U.S. at 740. Taking their cue from CCNV,
other Courts of Appeals have concluded that a work falls
within the scope of employment only if “[1] it is of the kind
he is employed to perform; [2] it occurs substantially within
the authorized time and space limits; and [3] it is actuated, at
least in part, by a purpose to serve the [employer].’” Avtec
Sys., Inc. v. Peiffer, 21 F.3d 568, 571 (4th Cir. 1994) (quoting
Restatement (Second) of Agency § 228 (1958)) (internal
alterations omitted); see U.S. Auto Parts Network, 692 F.3d at
1015; Shaul v. Cherry Valley-Springfield Cent. Sch. Dist., 363
F.3d 177, 186 (2d Cir. 2004).

We agree with our sister circuits that CCNV counsels
in favor of adopting the Second Restatement’s test. The
second factor, however, deserves further explication:
Although the test is phrased in the conjunctive, meaning that
all three factors must be satisfied for a work to receive for-
hire treatment, courts must consider time and spatial bounds
with care. This factor is most probative for employees who

28
work shifts or otherwise have regular hours and definite
workplaces. See, e.g., City of Newark v. Beasley, 883 F.
Supp. 3, 6, 8–9 (D.N.J. 1995) (law enforcement training
course developed by a police officer while “off duty” fell
outside the time and spatial boundaries of his employment).
In our increasingly mobile work culture, however, many
executives and professionals—for better or worse—lack
obvious temporal or spatial boundaries for their work. See
Restatement (Third) of Agency § 7.07 cmt. b (2006)
(explaining that the Third Restatement abandoned this factor
because it “does not naturally encompass the working
circumstances of many managerial and professional
employees”). For such employees, the second factor will
illuminate little, and a fact-finder cannot indulge in the fiction
of a 9-to-5 workday. On the other hand, even when an
employee’s position has ascertainable temporal and spatial
boundaries, her unilateral decision to continue working at
home or beyond normal hours has little bearing if a
copyrighted work is clearly “of the kind” that the employee
was hired to create. Avtec Sys., 21 F.3d at 571; U.S. Auto
Parts Network, 692 F.3d at 1018; 1 Nimmer on Copyright
§ 5.03[B][1][b][i].

Unfortunately, we are without the benefit of an opinion
below applying the scope-of-employment test because the
District Court considered only the effect of the letter
agreement. App. 35 n.10. In a similar circumstance, after
clarifying the agency-law principles that the district court
should apply, the Fourth Circuit remanded the case,
concluding that it was “not in a position to resolve that
heavily fact-laden issue in the first instance.” Avtec Sys., 21
F.3d at 573. We will follow the same course here, as the
issue is close and may require the trier of fact to resolve

29
underlying factual disputes. Cf. MacLean Assocs., Inc. v.
Wm. M. Mercer-Meidinger-Hansen, Inc., 952 F.2d 769, 778
(3d Cir. 1991). Of course, Hill may choose to forgo this
inquiry, but it is not academic because it would determine
whether Hill or his successors may eventually terminate the
assignment. See 17 U.S.C. § 203. We thus will leave it to the
parties on remand to decide if they wish to open yet another
chapter in this litigation.

B. Liability for Infringement

Having concluded that TD Bank owned the exclusive
rights in the manuscript, we briefly address Hill’s defenses to
infringement. Hill devotes a few sentences to the merger and
scenes à faire doctrines, as well as the fair-use defense. The
District Court correctly granted summary judgment to TD
Bank on these defenses.

The merger doctrine prohibits the copyrighting of
expression “when ‘there are no or few other ways of
expressing a particular idea.’” Educ. Testing Servs. v.
Katzman, 793 F.2d 533, 539 (3d Cir. 1986) (quoting Apple
Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240,
1253 (3d Cir. 1983)). A variation on the merger doctrine, the
scenes à faire doctrine leaves unprotected “incidents,
characters or settings which are as a practical matter
indispensable in the treatment of a given topic.” Whelan
Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1236
(3d Cir. 1986) (citation and internal alteration omitted). Hill
could express his life story and business philosophy in
numerous ways, so the District Court properly concluded that
the copied portions of the prior work were copyrightable.

30
 As for fair use, the 2012 book was not
transformative—i.e., it did not imbue the prior work with
“new expression, meaning, or message”—so the permissible
scope of fair use is more circumscribed. See Campbell v.
Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994). Given
this, as well as Hill’s commercial sales of the 2012 work, the
unpublished nature of the 2007 manuscript, and the potential
harm to the market for the original manuscript if TD Bank
ever elected to publish it, the District Court correctly granted
summary judgment to TD Bank on Hill’s fair-use defense.
See Harper & Row Publishers, Inc. v. Nation Enters., 471
U.S. 539, 562, 563, 566–68 (1985).

C. Propriety of the Injunction

Finally, we turn to the propriety of the District Court’s
permanent injunction banning the “publish[ing], market[ing],
distribut[ing] or sell[ing]” of Hill’s 2012 book. App. 4. As a
matter entrusted to a court’s equitable discretion, an
injunction “does not follow from success on the merits as a
matter of course.” Winter v. Nat. Res. Def. Council, Inc., 555
U.S. 7, 32 (2008). Instead, even after prevailing on the
merits, the party seeking a permanent injunction must make a
sufficient showing that (1) it will suffer irreparable injury, (2)
no remedy available at law could adequately remedy that
injury, (3) the balance of hardships tips in its favor, and (4) an
injunction would not disserve the public interest. eBay, 547
U.S. at 391. While we consider these factors holistically, the
inability to show irreparable harm—or, relatedly, that a legal
remedy would be inadequate—defeats a request for injunctive
relief. See Reilly v. City of Harrisburg, 858 F.3d 173, 179 (3d
Cir. 2017).

31
 Before eBay, this Circuit, like many others, applied a
presumption of irreparable harm as long as a copyright
plaintiff established a prima facie case or reasonable
likelihood of success. See Video Pipeline, Inc. v. Buena Vista
Home Entm’t, Inc., 342 F.3d 191, 206 (3d Cir. 2003); Marco
v. Accent Pub. Co., 969 F.2d 1547, 1553 (3d Cir. 1992);
Educ. Testing Servs., 793 F.2d at 543; Apple Comput., 714
F.2d at 1254. That presumption would go a long way toward
supporting the District Court’s remedy here. But we have
cause to reconsider it in light of the Supreme Court’s
intervening guidance.

In eBay, the Supreme Court rejected the Federal
Circuit’s longstanding rule requiring, absent “exceptional” or
“unusual” circumstances, the imposition of a permanent
injunction after a finding of patent infringement. 547 U.S. at
393–94 (citation omitted). eBay held that the Federal
Circuit’s rule conflated rights with remedies by relying on the
Patent Act’s statutory “right to exclude” to create such a
presumption. Id. at 392. Rather, absent express
Congressional guidance to the contrary, district courts retain
discretion in resolving requests for injunctive relief, and
“such discretion must be exercised consistent with traditional
principles of equity, in patent disputes no less than in other
cases.” Id. at 394. In so holding, eBay drew parallels to
copyright law, where it had “consistently rejected” arguments
that a permanent injunction should necessarily result from a
finding of infringement. Id. at 392–93. It pointed, for
example, to Dun v. Lumbermen’s Credit Association, 209
U.S. 20 (1908), where the Court had affirmed a denial of an
injunction for infringement of a reference book, agreeing with
the lower courts that the infringing content was “so
insignificant compared with the injury from stopping [the

32
defendant’s] use of their enormous volume.” Id. at 23. And
it cited New York Times Co. v. Tasini, 533 U.S. 483 (2001),
where, after concluding that newspapers exceeded their
licenses by republishing freelance journalists’ articles in
electronic databases, the Court cautioned that “it hardly
follows” that an injunction should issue to remedy the
infringement. Id. at 505; see Campbell, 510 U.S. at 578 n.10
(observing that copyright’s goals “are not always best served
by automatically granting injunctive relief”); Sony Corp. of
Am. v. Universal City Studios, Inc., 464 U.S. 417, 499 (1984)
(Blackmun, J., dissenting) (doubting that “a broad injunction”
should issue even if contributory liability attached).

Although eBay concerned the Patent Act, we have
found its logic more widely applicable. Ferring Pharms., Inc.
v. Watson Pharms, Inc., 765 F.3d 205, 215 (3d Cir. 2014).
Thus, in Ferring, we abandoned our presumption of
irreparable harm in Lanham Act cases as inconsistent with
eBay’s admonition that courts may not fashion categorical
rules or sweeping principles that would undermine the
traditional four-factor test. Id. at 213 & n.7, 216. Instead, we
held that an injunction may issue only if the plaintiff proves
all four factors without the aid of any shortcuts. Id. at 216.

We have not reconsidered the presumption in
copyright cases in particular since eBay, but several of our
sister circuits have, and they have rejected it. See, e.g.,
CoxCom, Inc. v. Chaffee, 536 F.3d 101, 111–12 (1st Cir.
2008); Salinger v. Colting, 607 F.3d 68, 77–78 (2d Cir.
2010); Christopher Phelps & Assocs., LLC v. Galloway, 492
F.3d 532, 543 (4th Cir. 2007); Flava Works, Inc. v. Gunter,
689 F.3d 754, 755 (7th Cir. 2012); Flexible Lifeline Sys., Inc.
v. Precision Lift, Inc., 654 F.3d 989, 995–96 (9th Cir. 2011);
Peter Letterese and Assocs., Inc. v. World Inst. of Scientology

33
Enters., 533 F.3d 1287, 1323 (11th Cir. 2008). Notably,
Ferring relied on one of these decisions, Salinger v. Colting,
607 F.3d 68 (2d Cir. 2010), which jettisoned the presumption
of irreparable harm in copyright cases because eBay “strongly
indicates” that the principles it reaffirmed should be “the
presumptive standard for injunctions in any context” and
eBay relied on the Court’s copyright jurisprudence. 607 F.3d
at 78.

Based on Ferring and this persuasive authority, we
hold today that eBay abrogates our presumption of irreparable
harm in copyright cases. The Copyright Act does not direct
courts to depart from traditional principles of equity in
adjudicating requests for injunctive relief, see 17 U.S.C.
§ 502(a), and eBay’s reliance on the Court’s copyright
decisions makes its applicability even clearer here than in
Ferring. Accordingly, a court considering the propriety of a
copyright injunction should no longer place a “thumb on the
scales” in favor of injunctive relief and inquire merely
whether “there is good reason why an injunction should not
issue.” Monsanto Co. v. Geertson Seed Farms, 561 U.S. 139,
157–58 (2010). Nor can the four-factor test be faithfully
applied through a “perfunctory recognition that ‘an injunction
does not automatically issue,’” id. at 157–58 (citation
omitted), or the factors’ rote invocation, see Winter, 555 U.S.
at 26–27. Irreparable harm in copyright cases “must be
prove[n], not presumed.” Flexible Lifeline Sys., 654 F.3d at
1000 (quoting 4 Nimmer on Copyright § 14.06[A][5]).

With these principles in mind, we consider whether the
District Court abused its discretion in issuing this injunction.

34
 1. Irreparable Injury

To obtain a permanent injunction, a moving party must
show that it will suffer irreparable harm that is causally
attributable to the challenged infringement. See Perfect 10,
Inc. v. Google, Inc., 653 F.3d 976, 982 (9th Cir. 2011); Apple
Inc. v. Samsung Elecs. Co., 735 F.3d 1352, 1363 (Fed. Cir.
2013) (Patent Act). Even though TD Bank does not sell,
license, or even use the infringed work and has no intention
of ever doing so, it persuaded the District Court that Hill’s
supposed continuing infringement irreparably harmed the
Bank by depriving it of the “right to not use the copyright.”
App. 9. We disagree. Neither the prospect of continued
infringement nor the “right to not use” a copyright establish
irreparable harm.

At the outset, we can easily dismiss TD Bank’s
contention that continued copyright infringement necessarily
constitutes irreparable harm. While a “substantial likelihood”
of continuing infringement is necessary to obtain permanent
injunctive relief, Jane Doe No. 1 v. Backpage.com, LLC, 817
F.3d 12, 29 (1st Cir. 2016); see Ferring, 765 F.3d at 219, the
continuing nature of the infringement does not mean that any
future injury would be irreparable, Metro-Goldwyn-Mayer
Studios, Inc. v. Grokster, Ltd., 518 F. Supp. 2d 1197, 1215
(C.D. Cal. 2007); see Nichia Corp. v. Everlight Americas,
Inc., 855 F.3d 1328, 1333 (Fed. Cir. 2017) (affirming a
district court’s conclusion that a patentee failed to show that
the defendants’ “continuing infringement . . . has caused, and
will continue to cause, irreparable harm”). Indeed, the
Federal Circuit has recognized that, after eBay, irreparable
harm can no longer be presumed based on continued
infringement and a likelihood of success on the merits. See
Robert Bosch LLC v. Pylon Mfg. Corp., 659 F.3d 1142, 1149

35
(Fed. Cir. 2011); see also Reebok Int’l Ltd. v. J. Baker, Inc.,
32 F.3d 1552, 1556 (Fed. Cir. 1994) (presuming irreparable
harm before eBay upon a “strong showing of likelihood of
success on the merits coupled with continuing infringement”).
If continued infringement does not justify a presumption of
irreparable harm, a fortiori it does not inherently give rise to
irreparable harm. Instead, the prospect that infringement will
continue merely precipitates the question whether any future
infringement would irreparably injure the copyright owner.

The District Court’s reliance on “the right to not use
the copyright” fares no better. See App. 9. Such a right is
little more than a rephrasing of the right to exclude, which
eBay held did not justify a presumption of irreparable harm.
See 547 U.S. at 392–93. Even when this Court presumed
irreparable harm, we required “a stronger showing of
irreparable harm” if the infringed copyright was “peripheral
to the copyright holder’s business.” Video Pipeline, 342 F.3d
at 206 (citation and internal alterations omitted). Holding that
a violation of “the right to not use the copyright” necessarily
amounts to irreparable harm would not only resurrect the
presumption of irreparable harm, but make it irrebuttable,
even where, as here, the infringement bears only a tangential
relation to the copyright holder’s business. Cf. High Tech
Med. Instrumentation, Inc. v. New Image Indus., Inc., 49 F.3d
1551, 1556 (Fed. Cir. 1995) (reversing the issuance of a
preliminary injunction where the patentee did “not make or
sell [the relevant products] and [did] not license their
manufacture and sale”).

Our position that a violation of “the right to not use [a]
copyright” does not inherently establish irreparable harm
finds further support in the Ninth Circuit’s en banc decision
in Garcia v. Google, Inc., 786 F.3d 733 (9th Cir. 2015).

36
There, an actor who allegedly was duped into making a five-
second performance for the anti-Muslim movie Innocence of
Muslims sought an injunction to remove the movie from
YouTube because its release resulted in a fatwa against her
and threats against her family. Id. at 737–39. The en banc
court noted that the actor’s alleged harms, though disturbing,
bore little relation to any interest protected by copyright law.
Id. at 745. Copyright law grants authors exclusive rights in
their expressive works to incentivize “the creation and
publication of free expression”—not to protect an author’s
privacy or reputation. Id. at 744–45 (quoting Eldred v.
Ashcroft, 537 U.S. 186, 219 (2003)). In seeking to remove
the work (or at least her five-second performance) from
YouTube, the Ninth Circuit concluded, the actor had not
demonstrated any harm, much less irreparable harm,
cognizable in copyright.10 Id. at 746. We express no opinion
on the Ninth Circuit’s ultimate holding, but its premise is one
on which we agree: A bare violation of a statutory right
enshrined in the Copyright Act does not establish irreparable
harm.

In holding otherwise, the District Court relied on the
Second Circuit’s decision in Salinger, which mused that “a
copyright holder might . . . have a First Amendment interest
in not speaking” and later asserted that “‘[t]he loss of First
Amendment freedoms,’ and hence infringement of the right
not to speak, ‘for even minimal periods of time,
unquestionably constitutes irreparable injury.’” 607 F.3d at
81 (emphasis added) (citation omitted). We do not view the

10
Garcia accepted that a court may consider these
collateral injuries where a copyright owner has a “strong
copyright claim.” Id. at 746.

37
Second Circuit as holding that copyright infringement
amounts to compelled speech in violation of the First
Amendment. For one, Salinger vacated the district court’s
grant of a preliminary injunction and stressed that irreparable
harm must be proven. Id. at 82, 84. Equating copyright
infringement with compelled speech would justify an
injunction whenever, as in Salinger, an author chooses not to
distribute a work. In addition, Salinger reiterated that
copyright law aims to protect “the commercial interest of the
artist/author” and “not to coddle artistic vanity or to protect
secrecy.” Id. at 81 n.9 (emphasis omitted) (quoting New Era
Publ’ns Int’l, ApS v. Henry Holt & Co., 695 F. Supp. 1493,
1526 (S.D.N.Y. 1988) (Leval, J.)). Yet secrecy is exactly
what would be protected if the unauthorized distribution of a
work were deemed an irreparable violation of the original
author’s right not to speak.11

11
Nor would characterizing copyright infringement as
compelled speech make much sense. Most obviously,
copyright infringement generally lacks the state action needed
to implicate the First Amendment. See Max v. Republican
Comm. of Lancaster Cty., 587 F.3d 198, 200 (3d Cir. 2009).
And even if it did, infringement would not equate with
compelled speech because, regardless of whether the author
takes offense, the infringer’s use does not coerce the
copyright owner to “personally speak the government’s
message” or “to host or accommodate another speaker’s
message” so that “the complaining speaker’s own message
was affected.” Rumsfeld v. Forum for Acad. & Institutional
Rights, Inc., 547 U.S. 47, 63 (2006). Indeed, precisely
because few authors would license their work for criticism or
ridicule, copyright’s fair-use defense provides special

38
 For these reasons, the District Court should not have
relied on Hill’s violation of the “right to not use [a]
copyright” alone to establish irreparable harm, App. 9, and
because it did, it abused its discretion. See Highmark Inc. v.
Allcare Health Mgmt. Sys., Inc., 572 U.S. 559, 563 n.2
(2014).

2. Adequate Remedy at Law

Although eBay identified irreparable harm and the
adequacy of legal remedies as separate considerations, they
typically constitute two sides of the same inquiry, for the
“availability of adequate monetary damages belies a claim of
irreparable injury.” Bennington Foods LLC v. St. Croix
Renaissance, Grp., LLP, 528 F.3d 176, 179 (3d Cir. 2008)
(citation omitted); see Samuel L. Bray, The Supreme Court
and the New Equity, 68 Vand. L. Rev. 997, 1026–27, 1048
(2015) (“[T]hese formulations are customarily
interchangeable.”). Below, the District Court concluded that,
because Hill was distributing the 2012 book for free, TD
Bank’s injury “is . . . not easily quantifiable or compensable
at law.” App. 10. This, too, was error.

protection to derivative works like parodies. See Campbell,
510 U.S. at 579–81; Suntrust Bank v. Houghton Mifflin Co.,
268 F.3d 1257, 1271 (11th Cir. 2001). Nor have the
Copyright Act’s longstanding compulsory licensing
provisions, see, e.g., 17 U.S.C. § 111 (compulsory cable
license); 17 U.S.C. § 115 (compulsory cover license), ever
come under serious First Amendment challenge as compelled
speech.

39
 Under the Copyright Act, a copyright holder may
recover either actual damages and the infringer’s profits or
statutory damages. 17 U.S.C. § 504(a). Other circuits have
interpreted the Act’s allowance of “actual damages” to permit
reasonable royalty damages. See, e.g., On Davis v. The Gap,
Inc., 246 F.3d 152, 163–72 (2d Cir. 2001); Dash v.
Mayweather, 731 F.3d 303, 312 (4th Cir. 2013); MGE UPS
Sys., Inc. v. GE Consumer & Indus., Inc., 622 F.3d 361, 366
(5th Cir. 2010). As a condition of denying a permanent
injunction, a district court may impose a running royalty to
remedy possible future infringement, at least after providing
the parties with an opportunity to negotiate a rate privately.
See Prism Techs. LLC v. Sprint Spectrum L.P., 849 F.3d
1360, 1377 (Fed. Cir. 2017) (Patent Act); 4 Nimmer on
Copyright § 14.06[D] (2018). A reasonable royalty and
statutory damages may be imposed even if the accused
infringer reaps nothing from infringement. See F. W.
Woolworth Co. v. Contemporary Arts, 344 U.S. 228, 233
(1952) (allowing statutory damages “[e]ven for uninjurious
and unprofitable invasions of copyright”); On Davis, 246
F.3d at 166 (recognizing that reasonable royalty damages may
be awarded even if the infringement proves unprofitable).
Given this arsenal of monetary remedies, a district court can
still award meaningful monetary relief where, as here, an
accused infringer distributes an infringing product for free
and the copyright holder makes no use of a work.

TD Bank protests that it abandoned its request for
statutory damages, so it lacks an adequate remedy at law. But
where an adequate remedy at law exists, “the party seeking
redress must pursue it.” Parker v. Winnipiseogee Lake Cotton
& Woolen Co., 67 U.S. 545, 551 (1862) (emphasis added);
see Goadby v. Philadelphia Elec. Co., 639 F.2d 117, 122 (3d

40
Cir. 1981); Shaw v. United States, 891 F.2d 602, 603 (6th Cir.
1989). TD Bank therefore cannot bolster its case for
equitable relief by abandoning its request for statutory
damages.

To be clear, we in no way suggest that all copyright
infringement can be adequately remedied through damages;
that “categorical rule” would flout eBay just as much as a rule
favoring injunctive relief. See 547 U.S. at 393. The
availability of some legal remedy does not mean such a
remedy is adequate. But, at a minimum, where the copyright
holder presents no evidence of actual harm and relies solely
on the exclusive nature of the rights conferred by the
Copyright Act, a district court abuses its discretion by
concluding that the copyright holder lacks an adequate
remedy at law.

3. Balance of Equities

The District Court’s balance-of-harms analysis suffers
from much the same flaws as its irreparable-injury
determination: It relied solely on TD Bank’s “property
interest in its copyrighted material”—in other words, the right
to exclude—and dismissed any hardship that the injunction
would inflict on Hill because “Hill has a property interest in
the 2012 Book only to the extent [it] does not infringe the
2007 Manuscript.” App. 10. But by that measure, the
balance of hardships would always favor the copyright
holder.

At least three considerations inform how much
credence to give a defendant’s claimed hardship: (1) whether
the defendant’s own financial investment, effort, or
expressive contribution eclipses the infringing aspect, see

41
Silverstein v. Penguin Putnam, Inc., 368 F.3d 77, 84–85 (2d
Cir. 2004); Abend v. MCA, Inc., 863 F.2d 1465, 1479 (9th
Cir. 1988), (2) how easily the infringing content could be
separated from the defendant’s product,12 see Opticians Ass’n
of Am. v. Indep. Opticians of Am., 920 F.2d 187, 197 (3d Cir.
1990); Abend, 863 F.2d at 1479, and (3) the degree to which
the defendant reasonably believed his conduct was non-
infringing, see Opticians Ass’n of Am., 920 F.2d at 197;
Helene Curtis Indus., Inc. v. Church & Dwight Co., 560 F.2d
1325, 1333 (7th Cir. 1977). All three factors play a role; no
matter how much a defendant invests in a product and how
deeply intertwined that investment is with the infringing
content, a wanton infringer may deserve little sympathy from
a court contemplating equitable relief. See Opticians Ass’n of
Am., 920 F.2d at 197; Kos Pharm. v. Andrx Corp., 369 F.3d
700, 728–29 (3d Cir. 2004) (refusing to countenance “a
knowing infringer that constructs its business around its
infringement” (emphasis added) (citation and internal
alterations omitted)); see also Douglas Laycock & Richard L.
Hasen, Modern American Remedies 419–20, 446–47 (5th ed.
2019) (stressing the defendant’s culpability vel non). But

12
We note that the question of separability in the
balance of hardships differs from that at issue in the merger
doctrine. The merger doctrine, as a narrow defense to
liability, considers ex ante whether an idea could have been
expressed in numerous ways, see Educ. Testing Servs., 793
F.2d at 539, while the balance of hardships assesses
afterwards how practicable extricating the infringing content
from the defendant’s product would be, given obstacles such
as sunk costs and path dependency, see Abend, 863 F.2d at
1479.

42
even where a defendant makes a strong showing, a copyright
holder’s hardship may be so devastating that the balance of
equities nevertheless tips in its favor. See, e.g., Opticians
Ass’n of Am., 920 F.2d at 197; Abend, 863 F.2d at 1479
(declining to issue injunction where the success of the
infringing work “resulted in large part from factors
completely unrelated to the underlying story” and “defendants
could not possibly separate out [their contributions] from the
underlying work”). In short, balancing aims “to ensure that
the issuance of an injunction would not harm the infringer
more than a denial would harm the [copyright] owner.”
Opticians Ass’n of Am., 920 F.2d at 197.

Here, considering the interests on both sides, the
balance of equities favors neither party. TD Bank has not
submitted any evidence of actual harm, much less irreparable
harm. But the equities do not particularly favor Hill either.
True, as TD Bank admits, no more than 16% of Hill’s 2012
book infringes its copyright, and Hill’s ownership defense,
though ultimately unsuccessful, had considerable merit. And,
without TD Bank’s recent concession that the 2016 book does
not infringe its copyright, we would need to scrutinize
whether the book could practically be rewritten in a non-
infringing manner without detracting from Hill’s story or
voice. With the benefit of hindsight and TD Bank’s recent
concession, however, we know that Hill needed only about
one month to develop a non-infringing version. Under these
circumstances, we decline to hold that the equities weigh in
either party’s favor.

4. Public Interest

Hill and amici contend that the District Court erred in
discounting the harm that the injunction could inflict on the

43
American public by depriving it of the ability to purchase the
work from any lawful source. To determine where the public
interest lies, a court should weigh the “advantages and
disadvantages” to the public of “employing the extraordinary
remedy of injunction over the other available methods of
enforcement.” United States v. Oakland Cannabis Buyers’
Coop., 532 U.S. 483, 498 (2001) (citation omitted). We agree
that this factor weighs against the injunction: Copyright
leaves a narrow but important role for weighing the public’s
right to access expressive works, at least where a copyright
owner pursues an injunction not to safeguard the commercial
marketability of a work but merely to suppress unwelcome
speech.

Though not “categorically immune from challenges
under the First Amendment,” copyright law generally does
not invite First Amendment scrutiny, insofar as “copyright’s
built-in free speech safeguards”—in particular, the idea-
expression dichotomy and fair use—adequately guarantee
free expression. Eldred, 537 U.S. at 221 (citation omitted);
see Harper & Row, 471 U.S. at 555–60. And copyright law
strives to spur the creation and diffusion of free expression by
granting authors “a marketable right to the use of one’s
expression.” Id. at 558. For these reasons, the Supreme
Court has rebuffed constitutional challenges that would have
enlarged the fair-use doctrine, id. at 560, or invalidated
Congress’s retroactive extensions of copyrights, Eldred, 537
U.S. at 221; Golan v. Holder, 565 U.S. 302, 335–36 (2012).

Yet it hardly follows that the public interest always
favors granting injunctive relief or that, in exercising its
remedial discretion, a court must ignore whether an injunction
would indefinitely preclude the public from accessing a work.
To the contrary, the Supreme Court has recognized that

44
injunctive relief does not always serve copyright’s goal of
“stimulat[ing] the creation and publication of edifying
matter.” Campbell, 510 U.S. at 578 n.10 (citation omitted).
By considering the public’s interest in accessing works, a
court does not disturb copyright’s liability regime, see Eldred,
537 U.S. at 221; Golan, 565 U.S. at 324, but rather exercises
its centuries-old authority to choose between alternative
“means of enforcing the statute.” Oakland Cannabis Buyers’
Coop., 532 U.S. at 497–98; see II Joseph Story,
Commentaries on Equity Jurisprudence 271 (3d ed. 1843)
(commending the “wisdom” of courts of equity in “constantly
declin[ing] to lay down any rule, which shall limit their power
and discretion as to the particular cases, in which such
injunctions shall be granted, or withheld”).

Consistent with this view, the Supreme Court and
other Courts of Appeals have emphasized the right of access
to works of public interest. For example, in a case cited
approvingly by the Supreme Court as an example of where
the public interest opposed injunctive relief, see Campbell,
510 U.S. at 578 n.10, the Ninth Circuit refused to enjoin the
classic Hitchcock movie “The Rear Window” partly because
“an injunction could cause public injury by denying the
public the opportunity to view a classic film for many years to
come,” Abend, 863 F.2d at 1479. The Second Circuit
likewise vacated an injunction enjoining a biography about
Howard Hughes that allegedly infringed copyrights that
Hughes had acquired to suppress the work, with a two-judge
concurrence pointing out that the “spirit of the First
Amendment” counsels against allowing anyone to use
copyright to “interfere[] with the public’s right to be informed
regarding matters of general interest.” Rosemont Enters., Inc.
v. Random House, Inc., 366 F.2d 303, 311 (2d Cir. 1966); see

45
also Suntrust Bank, 268 F.3d at 1276 (stressing “the public
interest is always served in promoting First Amendment
values”).

By recognizing the public’s interest in accessing
intriguing works, we do not countenance blatant piracy or
indulge in second-guessing of a copyright holder’s business
model. Cf. Campbell, 510 U.S. at 578 n.10 (focusing on
derivative works). And, even where the public interest in
accessing works may appropriately be considered, a district
court may well conclude that the public interest nevertheless
favors injunctive relief. Cf. Disney Enters., Inc. v. VidAngel,
Inc., 869 F.3d 848, 867 (9th Cir. 2017) (concluding that a
district court did not abuse its discretion in issuing injunction
relief even though the content owners did not offer a
competing service). But, at least where a copyright holder
wields its exclusive rights to suppress unwelcome speech, a
district court’s public-interest analysis should consider a
work’s continued availability.

Hill may perhaps not be the next prize-winning, or
even best-selling, business-book author. But he has a story to
tell and readers eager to learn from him. This injunction
deprived the American public of the ability to purchase this
book from any lawful source for the foreseeable future. At
the same time, whatever spurred TD Bank to bankroll this
copyright litigation, it was not a desire to protect the
commercial value of the 2007 manuscript: By its own
admission, TD Bank has no real intention of ever publishing
or licensing that work.

This injunction also inflicted a far more subtle and
insidious harm on the public by placing Hill in jeopardy of a
contempt finding for sharing anything that “sound[s] too

46
much like himself in the 2007 manuscript.” Br. of Amici
Intellectual Property Law Professors at 13. In this manner, a
copyright injunction can limit the public’s access to
expressive content well beyond the work at issue in a lawsuit.
Far from hypothetical, that danger came true here when TD
Bank threatened to bring a contempt motion against Hill for
the 2016 book, which it did not retract until its appellate
response brief. A less financially secure defendant may well
have given up. Thus, on balance, the public interest here also
militates against this permanent injunction.

* * * *
As an appellate court, we police only the margins of a
district court’s exercise of equitable discretion. But where, as
here, a district court strays from a context-specific analysis
and relies instead on broad propositions, it exceeds the
bounds of its discretion. In this case, no invocation of
abstract principles can obscure that TD Bank suffered no
actual harm from Hill’s infringement and the Bank had
adequate remedies at law. As such, although we will affirm
the District Court’s grant of summary judgment to TD Bank
on ownership and liability, we will vacate the permanent
injunction and remand for further proceedings consistent with
this opinion.

47
COWEN, concurring in part and dissenting in part.

I join in full Parts II and Parts III.A.1, III.A.3, III.B,
and III.C of the majority opinion, and I agree that we must
vacate the District Court’s permanent injunction. I also join
Part III.A.2 insofar as the majority determines that “the
District Court was mistaken in concluding that the letter
agreement vested ownership in the Bank by deeming the
manuscript a work for hire.” (Majority Opinion at 21-22.)
However, I must respectfully dissent from Part III.A.2’s
assignment analysis. TD Bank has waived this assignment
issue, and, in any event, Hill’s commitments fail to “convey
an unmistakable intent to effect a present transfer of any
interest he possessed in the manuscript” (id. at 24).
Accordingly, I would vacate the District Court’s grant of
summary judgment on the threshold question of ownership
and remand for further proceedings.

“[W]e may affirm on any basis supported by the
record, even if it departs from the District Court’s rationale.”
(Id. at 14 (citing Erie Telecomms., Inc. v. City of Erie, 853
F.2d 1084, 1089 & n.10 (3d Cir. 1988)).) “However, this rule
does not apply to cases in which the party has waived the
issue in the district court.” Holk v. Snapple Beverage Corp.,
575 F.3d 329, 335 (3d Cir. 2009). “This Court has stated:
‘We may affirm the lower court’s ruling on different grounds,
provided the issue which forms the basis of our decision was
before the lower court.’” Id. at 335-36 (quoting Morse v.
Lower Merion Sch. Dist., 132 F.3d 902, 904 n.1 (3d Cir.
1997)). A review of “the record” in this case reveals that TD
Bank has intentionally and knowingly abandoned the issue of
assignment. See, e.g., Robinson v. First State Cmty. Action
Agency, 920 F.3d 182, 187 (3d Cir. 2019) (“‘Waiver is the

1
‘intentional relinquishment or abandonment of a known
right.’” (quoting Barna v. Bd. of Sch. Dirs. of Panther Valley
Sch. Dist., 877 F.3d 136, 147 (3d Cir. 2017))).

It is undisputed that TD Bank failed to argue below
that, even if the 2007 manuscript does not rise to the level of
a work for hire, Hill assigned any interest he may have had in
the manuscript to Commerce Bank. But TD Bank did more
than merely fail to raise a particular issue. It affirmatively
conceded that the letter “is not an assignment.”

In “Plaintiffs’ Responses to Defendant’s First Set of
Requests for Admissions,” TD Bank made the following
admission:

26. Admit that Mr. Hill never signed a
document or any other writing assigning right,
title or interest in the Unpublished Manuscript
to Commerce.

OBJECTION: Plaintiff objects as “any
other writing” is vague and is nowhere defined
and requires Plaintiff to speculate as to
meaning.

RESPONSE: Subject to the foregoing
objection and without waiving the same,
admitted to the extent that the Guaranty is not
an assignment but rather an acknowledgement
that Commerce is the initial owner of the
copyright in the Unpublished Manuscript.

2
(JA1307; see also id. (making same objection and response to
request to admit that Hill never signed document or any other
writing assigning right, title, or interest to TD Bank).)

TD Bank thereby admitted that the letter is not an
assignment but rather an acknowledgement that Commerce
Bank has always been the copyright owner from (to borrow
language from TD Bank’s appellate brief) “day one” pursuant
to the work-for-hire doctrine (Appellee’s Brief at 37). “The
purpose of [Federal Rule of Civil Procedure] 36(a) is to
narrow the issues for trial to those which are genuinely
contested.” United Coal Cos. v. Powell Constr. Co., 839 F.2d
958, 967 (3d Cir. 1988) (citing Webb v. Westinghouse Elec.
Corp., 81 F.R.D. 431, 436 (E.D. Pa. 1978); United States v.
Watchmakers of Switzerland Info. Ctr., Inc., 25 F.R.D. 197,
201 (S.D.N.Y. 1959)). TD Bank did not deny Hill’s request
for admission. See, e.g., id. (“Where, as here, issues in
dispute are requested to be admitted, a denial is a perfectly
reasonable response.”). In fact, TD Bank responded to
similar admission requests by denying them, quoting or
referencing, inter alia, the letter, and asserting that the
document spoke for itself. It also could have answered in the
alternative if it really believed that the letter could be
considered an assignment. For instance, it could have stated
that, while the document constitutes an acknowledgement of
Commerce Bank’s initial ownership, “the Guaranty is an
assignment” to the extent Commerce Bank is not considered
to be the initial owner. But it did not do so. Instead of
leaving open the possibility that it became the copyright
owner by means of a transfer or assignment from the original
owner (or co-owner), TD Bank went so far as to emphasize
the term “initial” in “the initial owner.” Similarly,
“Plaintiff’s Response to Defendant’s Rule 56.1 Statement of

3
Material Facts Not in Dispute In Support of Cross-Motion for
Partial Summary Judgment” stated: “Undisputed that the
Guaranty does not contain such an express provision [in
which Mr. Hill assigned any right, title, or interest in the
Unpublished Manuscript to Commerce].” (JA1388).
“Disputed that the lack of such a provision provides Mr. Hill
with any ownership interest in the copyright in the 2007
Manuscript.” (Id. (citing JA477, JA1139).)

TD Bank’s pattern of failing to raise or contest the
issue of assignment has continued on appeal.

In his opening appellate brief, Hill argues at some
length that the District Court erred in relying on the letter.
“The only inquiry to which these contracts might be relevant
is whether, after Mr. Hill’s ownership vested, he executed an
agreement transferring the copyright after creation, in
accordance with 17 U.S.C. § 204.” (Appellant’s Brief at 47-
48 (citing Brownstein v. Lindsay, 742 F.3d 55, 68 (3d Cir.
2014)).) Citing to TD Bank’s Responses to Defendant’s First
Set of Requests for Admissions, Hill asserts that “TD Bank
concedes that no such writing exists,” which, in turn,
purportedly entitles him to judgment as a matter of law. (Id.
at 48 (citing JA1307).) According to Hill, the District Court,
among other things, failed to analyze the statutory writing
requirement, acknowledge TD Bank’s admission, properly
apply New York’s contract law in its consideration of the
letter and the publishing agreement, or recognize that there is
a presumption against transfers of copyright ownership unless
they are clearly stated. In the process, Hill (indirectly) cites
TD Bank’s Response to Defendant’s Rule 56.1 Statement of
Material Facts Not in Dispute In Support of Cross-Motion for
Partial Summary Judgment. (See id. (“In fact, there is no

4
evidence of any agreement over copyright ownership between
Commerce and Mr. Hill, whose signatures never appear on
the same contract.” (citing JA1586)).)

Faced with these assertions, one would expect TD
Bank to respond (at least in the form of an alternative
argument) that Hill did assign any interest he may have had in
the manuscript pursuant to § 204 and New York law. At the
very least, it would be expected that a litigant would deny an
adversary’s concession assertion if it truly believed that no
such thing had occurred. Yet TD Bank does nothing of the
sort. Instead, it simply characterizes Hill’s contention “[t]hat
‘[t]he Guaranty never says that Mr. Hill agrees to transfer
exclusive ownership to Commerce’” as “a basic mistake
regarding the Copyright Act’s ‘work made for hire’
provision.” (Appellee’s Brief at 37 (quoting Appellant’s
Brief at 48).) “Because the 2007 Manuscript was a ‘work
made for hire,’ (see [id. at 39-47]), TD Bank is the work’s
statutory ‘author’ and sole copyright owner on day one, 17
U.S.C. § 201(b), and no transfer to TD Bank is required.”
(Id.) According to TD Bank, it is actually Hill’s obligation to
produce a written agreement transferring ownership to him.

TD Bank did not argue that there was any assignment
from Hill to Commerce Bank until oral argument, after this
Court directed the parties to be prepared to discuss this issue
of whether the letter constitutes a valid assignment under
New York law and the Copyright Act. I do not believe it is
appropriate for us to overlook what TD Bank (an obviously
sophisticated litigant represented by able counsel) has done—
and not done—regarding the issue of assignment throughout
the course of this litigation. Recently, this Court considered a
party’s course of conduct to decide that it had waived its

5
objection to a particular jury instruction. See, e.g., Robinson,
920 F.3d at 184 (“We hold that First State has waived this
argument because of its continued acquiescence to
Robinson’s case theory, its encouragement of the adoption of
the very jury instruction to which it now objects, and its
failure to include this error in its post-trial briefing.”). In
turn, the ground upon which Erie Telecommunications relied
was raised in one of the appellee’s affirmative defenses,
summarily rejected by the district court, and then addressed in
the brief that the appellee filed on appeal. Erie Telecomms.,
853 F.2d at 1088 & n.8, 1094 n.16. Given its concession
below that the letter is not an assignment as well as its
dismissal on appeal of Hill’s own assignment assertions, TD
Bank has waived the assignment issue.

Assuming arguendo that the issue of assignment is
properly before us, I do not agree with the majority’s
conclusion that Hill’s letter meets the legal requirements for
an assignment of a copyright interest. As the majority
recognizes, “courts do not lightly infer that a party has
assigned his interest in a copyright, particularly given the
Copyright Act’s writing requirement, and in doubtful cases, a
document should not be construed to divest an author
completely of his ownership interest.” (Majority Opinion at
25 (citing Baisden v. I’m Ready Prods., Inc., 693 F.3d 491,
500 (5th Cir. 2012); Radio Television Espanola S.A. v. New
World Entm’t, Ltd., 183 F.3d 922, 927 (9th Cir. 1999);
Playboy Enters., Inc. v. Dumas, 53 F.3d 549, 564 (2d Cir.
1995)).) Under applicable New York law, a contract is
unambiguous if its language possesses “‘a definite and
precise meaning, unattended by danger of misconception in
the purport of the [agreement] itself, and concerning which
there is no reasonable basis for a difference of opinion.’”

6
Greenfield v. Philles Records, Inc., 780 N.E.2d 166, 170-11
(N.Y. 2002) (quoting Breed v. Ins. Co. of N. Am., 385 N.E.2d
1280, 1282 (N.Y. 1978)).

The letter here is doubtful and ambiguous.

According to the majority, “Hill’s commitments
together convey an unmistakable intent to effect a present
transfer of any interest he possessed in the manuscript.” (Id.
at 24.) I agree that no specific language is necessary to
satisfy the requirements for an effective assignment under
state and federal law. See, e.g., Radio Television Espanola,
183 F.3d at 927 (“No magic words must be included in a
document to satisfy § 204(a).”); Deutsche Bank Nat’l Trust
Co. v. Romano, 147 A.D.3d 1021, 1023 (N.Y. App. Div.
2017) (observing that no special language or formalities are
necessary to effect assignment). Nevertheless, the assignor
must in some fashion have “‘manifested an intention to make
a present transfer of his rights to the assignee.’” Deutsche
Bank, 147 A.D.3d at 1023 (quoting 9-47 Corbin on Contracts
§ 47.7); see, e.g., Roger Miller Music, Inc. v. Sony/ATV
Publishing, LLC, 477 F.3d 383, 391 (6th Cir. 2007)
(“Nevertheless, ‘[s]o long as the parties’ intent is clear, a
transfer of copyright need not include any particular
language.’” (quoting Gilleland v. Schanhals, 55 F. App’x 257,
260 (6th Cir. 2003)). According to the Ninth Circuit:

Section 204’s writing requirement is not
unduly burdensome; it necessitates neither
protracted negotiations nor substantial expense.
The rule is really quite simple: If the copyright
holder agrees to transfer ownership to another
party, that party must get the copyright holder
to sign a piece of paper saying so. It doesn’t

7
 have to be the Magna Charta; a one-line pro
forma statement will do.

Effects Assocs., Inc. v. Cohen, 908 F.2d 555, 557 (9th Cir.
1990).

Neither the letter nor the publishing agreement
included “a one-line pro forma statement.” Specifically, the
documentation at issue here did not state that Hill is
assigning, transferring, or granting his copyright interest in
the manuscript to Commerce Bank—nor did it say that such
an assignment, transfer, or grant had already occurred (or
would take place in the future). See, e.g., Baisden, 693 F.3d
at 500 (“That [royalty] check merely states that it was for
‘Men Cry in the Dark Fall 2005 Royalties (Paid in Full).’
The check does not expressly refer to an assignment of
copyrights. See [Playboy Enters., 53 F.3d at 564] (applying
clearly erroneous standard and deferring to district court’s
determination that check for past ‘assignment . . . of all rights,
title and interest’ was insufficient to transfer copyrights).”).
Certainly, the inclusion of this sort of language would have
dispelled doubt and “convey an unmistakable intent” to effect
a transfer (id. at 24). Although not strictly required as a
matter of law (see id. at 25 n.8), the existence of a document
executed by the putative assignor and assignee would also
have been stronger evidence of an assignment than what we
have here, i.e., a publishing agreement executed by
Commerce Bank and Portfolio, and a letter signed by Hill
addressed to Portfolio.

In turn, Hill’s letter to Portfolio and the publishing
agreement between Commerce Bank and Portfolio could be
reasonably read as indicating that there was no copyright
assignment. As the majority explains, the letter consists of

8
two principal covenants: (1) “Hill acknowledged the
publishing agreement, a copy of which was attached to the
letter, and ‘guarantee[d], promise[d] and agree[d] with the
Publisher . . . that the Author [i.e., Commerce Bank] will, in
all respects, faithfully perform and fulfill all obligations of the
Agreement’” (id. at 23 (quoting JA1139)); and (2) “Hill
‘unconditionally guarantee[d] that the Work is a work made
for hire within the meaning of the United States Copyright
Law and that the Author is the owner of copyright in the
Work and has full power and authority to enter into the
Agreement’” (id. (quoting JA1139)). “That publishing
agreement provided that ‘the Author [i.e., Commerce Bank] is
the sole and exclusive owner of all rights granted to the
Publisher in this Agreement and has not assigned, pledged or
otherwise encumbered the same; . . . that the Author has full
power to enter into this Agreement and to make the grants
herein contained.’” (Id. (quoting JA1142).) The
documentation thereby indicates that the letter itself
constitutes a guarantee as opposed to an assignment—and
that Commerce Bank “is the work’s statutory ‘author’ and
sole copyright owner on day one and no transfer to
[Commerce Bank] is required” (Appellee’s Brief at 37
(citation omitted)).

According to the majority, the latter provisions of the
letter do not resemble a true guarantee. But it also
acknowledges that Hill’s commitment guaranteeing,
promising, and agreeing that Commerce Bank would fulfill its
obligations “could by itself suggest a guarantee” (Majority
Opinion at 24). While not dispositive, the repeated use of this
sort of “guarantee” language (at the very least) represents a
highly unconventional expression of an intent to effect a
transfer. Furthermore, the cited cases did not consider

9
whether the “guarantee” at issue actually constituted an
assignment under New York law. See, e.g., N.Y. Plumber’s
Specialties Co. v. 91 E. End Corp., 366 N.E.2d 866, 867
(N.Y. 1977) (“Although described as a guarantee this writing
is actually an agreement or promise to pay appellant’s own
obligation for purchases made on its own account.” (quoting
Deeves & Son v. Manhattan Life Ins. Co., 88 N.E. 395, 396
(N.Y. 1909))); Brewster Transit Mix Corp. v. McLean, 169
A.D.2d 1036, 1037 (N.Y. App. Div. 1991) (“Despite the
parties’ use of the word guarantee, we are of the view that the
nature of defendant’s obligation is the same as that of his
corporation and, therefore, the only reasonable interpretation
of the writing is that which makes defendant a co-obligor of
his corporation’s debts to plaintiff, not a guarantor of the
payment of those debts.” (citing Am. Trading Co. v. Fish, 42
N.Y.2d 20, 24 (1977))). Even if parts of the letter do not
really look like a typical guarantee (i.e., an agreement to pay
a principal obligor’s debt upon the principal obligor’s
default), the same could be said with respect to the letter’s
resemblance to an assignment, especially given what the
document did not say (and what it did). In fact, Hill stated in
the letter that “I have an interest in the Author [Commerce
Bank] and in having the Work published by the Publisher,”
and thereby made these guarantees “as an inducement to the
Publisher to enter into the Agreement.” (JA1139.) He clearly
wanted the book to be published as opposed to expressing any
sort of interest in effecting an assignment of his existing
copyright interest to his employer. In fact, I question whether
he was really concerned with the intricacies of copyright
assignment and the work-for-hire doctrine in the first place.

Finally, the differences between assignment and the
concept of a work for hire weigh against the majority’s

10
assignment determination. The agreement and the letter
could be reasonably read as acknowledging that Commerce
Bank was always the exclusive owner of the manuscript as a
work for hire. After all, the letter basically said as much,
unconditionally guaranteeing that the manuscript “is a work
made for hire within the meaning of the United States
Copyright Law and that the Author is the owner of copyright
in the Work and has full power and authority to enter into the
Agreement.” (JA1139.) Commerce Bank warranted in the
publishing agreement that it “is the sole and exclusive owner
of all rights granted to the Publisher in this Agreement” and
“has full power to enter into this Agreement and to make the
grants herein contained.” (JA1142.) The majority asserts
that, although Hill’s assurance that the manuscript is a work
made for hire is insufficient to make it one, this assurance
nevertheless “denotes an intent to relinquish his interest in the
copyright.” (Majority Opinion at 25 (citing 1 Nimmer on
Copyright § 5.03[B][1][b][ii])).) However, assignment and
work for hire are two different concepts. As I have already
explained in my waiver discussion, TD Bank characterizes
Hill’s assignment assertions as fundamentally mistaken. It is
TD Bank who insists that, because the manuscript is a work
for hire, “TD Bank [as Commerce Bank’s successor] is the
work’s statutory ‘author’ and sole copyright owner on day
one and no transfer to TD Bank is required.” (Appellee’s
Brief at 37 (citation omitted).) Where a work is made for
hire, “the employer . . . is considered the author for purposes
of this title, and, unless the parties have expressly agreed
otherwise in a written instrument signed by them, owns all the
rights comprised in the copyright.” § 201(b). In contrast, a
transfer or assignment implicates “the conveyance” (as §
204(a) puts it) of the owner’s interest to another. A “work for
hire” characterization thereby indicates that the employer has

11
been the exclusive copyright owner from the very beginning.
Nimmer does state that an agreement whereby works
prepared by the employee but not prepared within the scope
of employment are deemed to be works made for hire “may
be regarded as the equivalent of a simple transfer of copyright
from the employee to the employer.” 1 Nimmer on Copyright
§ 5.03[B][1][b][ii]. But the treatise does not provide any
further explanation, and it immediately qualifies the statement
itself by pointing to additional differences between a transfer
and a work for hire, id. (“but will not trigger the various other
legal consequences that flow from the status of a ‘for hire’
work” (footnote omitted)). (See, e.g., Majority Opinion at
20-21 & n.7 (pointing out that work’s status determines
duration of copyright, author retains certain non-waivable
rights to cancel transfer after 35-40 years and perhaps
waivable moral rights in proper attribution, and creator of
work for hire lacks such rights).) In any event, the specific
letter at issue here still fails to manifest “an unmistakable
intent to effect a present transfer” of Hill’s copyright interest
(id. at 24).

For the foregoing reasons, I would vacate the District
Court’s summary judgment disposition on the question of
copyright ownership and remand for further proceedings.

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