April 15, 1993
UNITED STATES COURT OF APPEALS
FOR THE FIRST CIRCUIT
No. 91-1415
JOHN FORWARD
Plaintiff, Appellant
v.
GEORGE THOROGOOD, et al.,
Defendants, Appellees.
ERRATA SHEET
The opinion of this Court issued on January 29, 1993, is
amended as follows:
On page 4, footnote 1, line 1: delete the comma between
"Nimmer on Copyright" and the " " sign.
On page 5, line 3: delete the comma between "Nimmer" and
the " " sign.
On page 9, line 5: delete the comma between "Nimmer" and
the " " sign.
January 29, 1993
UNITED STATES COURT OF APPEALS
FOR THE FIRST CIRCUIT
No. 91-1415
JOHN FORWARD,
Plaintiff-Appellant,
v.
GEORGE THOROGOOD, et al.,
Defendants-Appellees.
APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
[Hon. Joseph L. Tauro, U.S. District Judge]
Before
Cyr and Boudin, Circuit Judges,
and Hornby,* District Judge.
Richard J. Shea with whom Kenneth M. Goldberg was on brief for
appellant.
Gordon P. Katz with whom Kim E. Perry and Jay M. Fialkov were on
brief for appellee.
* of the District of Maine, sitting by designation.
BOUDIN, Circuit Judge. This is an appeal from a final
judgment determining the copyright ownership of certain
unpublished tape recordings of the musical group George
Thorogood and the Destroyers (the "Band"). The district
court ruled that the Band held the copyright to the tapes and
enjoined appellant John Forward from making commercial use of
the recordings. We affirm.
The basic facts can be briefly stated. Forward is a
music aficionado and record collector with a special interest
in blues and country music. In 1975, Forward was working as
a bus driver when he first met Thorogood at a Boston
nightclub where the Band was performing. Forward was
immediately taken with the Band's act and struck up a
friendship with Thorogood. Thorogood and his fellow band
members, a drummer and a guitar player, had been playing
together at East Coast colleges and clubs since 1973.
Upon learning that the Band had yet to release its first
album, Forward began a campaign to persuade his friends at
Rounder Records to sign the Band to a recording contract.
Rounder Records is a small, Boston-based record company
specializing in blues and folk music. As part of this
effort, Forward arranged and paid for two recording sessions
for the Band in 1976. The purpose of the sessions was to
create a "demo" tape that would capture Rounder Records'
interest. At Forward's invitation, one of the principals of
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Rounder Records attended the Band's second recording session.
Other than requesting specific songs to be recorded,
Forward's contribution to the sessions was limited to
arranging and paying for them.
Rounder Records was impressed by what it heard; the day
after the second session, it arranged to sign the Band to a
contract. The Band agreed that Forward could keep the tapes
for his own enjoyment, and they have remained in his
possession ever since. In 1977, the Band's first album was
released under the Rounder Records label. Forward was
singled out for "special thanks" in the album's
acknowledgements. Since then, Thorogood and the Destroyers
have released a number of records and gone on to achieve
success as a blues/rock band.
The dispute between the parties arose in early 1988,
when Forward told the Band that he intended to sell the 1976
tapes to a record company for commercial release. The Band
objected, fearing that release of the tapes would harm its
reputation; they were, the district court found, of
"relatively primitive quality" compared to the Band's
published work. On July 5, 1988, Forward filed suit in the
district court, seeking a declaratory judgment that he held
the common law copyright to the tapes. Determination of
copyright ownership is governed by the common law of
copyright because the tapes are unpublished and were recorded
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in 1976, prior to the January 1, 1978, effective date of the
Copyright Act of 1976, 17 U.S.C. 101 et seq.1 The Band
responded with a counterclaim for declaratory and injunctive
relief.
In the district court, Forward advanced a number of
theories in support of his claim to copyright ownership.
After a five-day bench trial, the district court filed its
findings of fact and conclusions of law, ruling that Forward
did not hold the copyright under any of the theories he
advanced. Forward v. Thorogood, 758 F. Supp. 782 (D. Mass.
1991). The court entered judgment for the Band, declaring
Thorogood and other Band members to be the copyright owners
and permanently enjoining Forward from commercially
exploiting the tapes. Forward now appeals.
On this appeal, Forward's first theory in support of his
claim of copyright ownership is based on his ownership and
possession of the tapes. According to Forward, ownership of
a copyrightable work carries with it ownership of the
copyright. Alternatively, he argues that the evidence
mandated a finding that the copyright was implicitly
1See M. Nimmer & D. Nimmer, 1 Nimmer on Copyright
2.10[A] n.18, at 2-147 (1992) ("Nimmer"). See also Roth v.
Pritikin, 710 F.2d 934, 938 (2d Cir.) (1976 Act, which
preempts the common law of copyright as of January 1, 1978,
determines the rights but not the identity of the copyright
owners of works created prior to that date), cert. denied,
464 U.S. 961 (1983).
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transferred to him along with the demo tapes. We find no
merit in either claim.
The creator of a work is, at least presumptively, its
author and the owner of the copyright, Community for Creative
Non-Violence v. Reid, 490 U.S. 730, 737 (1989). The
performer of a musical work is the author, as it were, of the
performance. 1 Nimmer 2.10[A](2)(a), at 2-149. The
courts, in applying the common law of copyright, did in a
number of cases infer from an unconditional sale of a
manuscript or painting an intent to transfer the copyright.
3 Nimmer 10.09[B], at 10-76.1. This doctrine, often
criticized and subject to various judicial and statutory
exclusions, id., is the source of Forward's principal claim.
The difficulty for Forward is that even under the doctrine
this physical transfer merely created a presumption and the
ultimate question was one of intent. Id.
In this case, the district court found that "[n]either
the band nor any of its members ever conveyed, or agreed to
convey, their copyright interest in the tapes to Forward."
758 F. Supp. at 784. Rather the Band allowed Forward to keep
the tapes solely for his personal enjoyment. Id. Forward's
disregard of this central finding is premised on a highly
artificial attempt to claim "constructive possession" of the
tapes from the outset and then to argue that any reservation
by the Band at the end of the sessions was an invalid attempt
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to reconvey or qualify his copyright. The reality is that
the Band never surrendered the copyright in the first place
and the transfer of the tapes' ownership to Forward was not a
sharply defined event distinct from the reservation of the
Band's rights.
Forward argues that the district court's finding is
mistaken, pointing in particular to a 1979 check for $500
made out to him from Rounder Records on behalf of the Band.
A notation indicates that the check was for an "advance
option" on the tapes, and Forward argues that the check
constitutes an "unambiguous admission" that he owned the
copyright. The Band counters that, shortly before Forward
was given the check, another demo tape made by the Band had
been sold by a third party to a record company. The Band
claims that, to prevent another such misadventure, it sought
an option on the physical tapes held by Forward. Although
Forward contests this explanation, the district court heard
the evidence, chose reasonably between conflicting inferences
as to the import of the check, and that is the end of the
matter. See Anderson v. City of Bessemer City, 470 U.S. 564,
573-74 (1985); Fed. R. Civ. P. 52(a).
Forward's second theory of copyright ownership involves
the "works for hire" doctrine. Under this doctrine, a
judicially developed notion later codified in the Copyright
Act of 1909, 17 U.S.C. 1 et seq., an employer is deemed the
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"author" and copyright holder of a work created by an
employee acting within the scope of employment. Although
initially confined to the traditional employer-employee
relationship, the doctrine has been expanded to include
commissioned works created by independent contractors, with
courts treating the contractor as an employee and creating a
presumption of copyright ownership in the commissioning party
at whose "instance and expense" the work was done. See,
e.g., Murray v. Gelderman, 566 F.2d. 1307, 1310 (5th Cir.
1978); Brattleboro Publishing Co. v. Winmill Publishing
Corp., 369 F.2d 565, 567-68 (2d Cir. 1966).2 Forward
maintains that the tapes, created at his "instance and
expense," are commissioned works to which he holds the
copyright.
The district court rejected this claim, finding that the
evidence did not support it. The court said that, although
Forward booked and paid for the studio time, he neither
employed nor commissioned the band members nor did he
compensate or agree to compensate them. 758 F. Supp. at 784.
While the lack of compensation may not be decisive, see,
e.g., Community for Creative Non-Violence, 490 U.S. at 734
2 The Copyright Act of 1976 altered the works for
hire doctrine so that only certain types of commissioned
works qualify as works for hire, and then only if the parties
have agreed in writing to treat it as such. See Community
for Creative Non-Violence, 490 U.S. at 738. The Act's
provisions on works for hire operate prospectively and do not
govern this case.
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(donated commissioned work), the evidence as a whole amply
supports the trial judge's conclusion. Nothing suggests that
the tapes were prepared for the use and benefit of Forward.
Rather, the purpose was to provide demo tapes to entice a
recording company. Forward was a fan and friend who fostered
this effort, not the Archbishop of Saltzburg commissioning
works by Mozart.
Finally, Forward argues that he is at least a co-owner
of the copyright as a "joint author" of the tape recordings.
The doctrine of joint authorship, recognized at common law,
is incorporated in the current Copyright Act of 1976. 17
U.S.C. 201(a). In appraising this claim, our concern is
with Forward's musical or artistic contribution rather than
his encouragement to the Band or his logistical support.
The district court found that "Forward made no musical
or artistic contribution" to the tapes, explaining that
Forward did not serve as the engineer at the sessions or
direct the manner in which the songs were played or sung.
758 F. Supp. at 784. The trial judge noted that Forward did
request that certain songs be played but "the band then
played those songs in precisely the same manner that it
always played them." Id. The district court's concise and
unqualified findings are fully supported by the evidence
Forward has only one legal prop for his contrary claim
and it is a weak one. In the House Report on the Copyright
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Act of 1976, the committee observed that the copyright in
sound recordings "will usually, though not always, involve
`authorship' both . . . [by the artist and by] the record
producer responsible for setting up the recording session,
capturing and electronically processing the sounds, and
compiling and editing them to make the final sound
recording." H. Rep. No. 94-1476, 94th Cong., 2d Sess. 56
(1976). It is apparent from this passage that the "producer"
envisaged by the committee is one who engages in artistically
supervising and editing the production. See generally 1
Nimmer 2.10[A](2)(b), at 2-150 to 2-151. That is exactly
what Forward did not do in this case.
The Band has sought an award of attorney's fees expended
in this court, arguing that Forward's appeal is frivolous.
We think that the appeal comes very close to the line but
does not quite step over it and therefore deny the motion.
Affirmed.
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Forward v. Thorogood
Combined Opinion