## Facts

- Patrick Nagel, a freelance artist, produced about 285 artworks published in Playboy magazine from 1974 until his death in 1984.
- Early in the relationship Playboy requested illustrations for particular articles and sections and paid Nagel per work; later the relationship became a regular course of commissioned submissions.
- Playboy paid by check, and the checks contained stamped endorsement “legends” that changed over time:
  - Legend A: stated payment was for “assignment” of “all right, title and interest” in described artwork.
  - Legends B and C: added language characterizing the work as “made for hire” and stating Playboy owned all copyrights.
- Nagel (or an authorized representative) endorsed and deposited the checks.
- Playboy initially kept original paintings but later adopted a practice of returning them; returned works bore a stamp stating reproduction was prohibited without Playboy’s permission.
- After Nagel’s death, Jennifer Dumas acquired and later assigned the copyrights to Jennifer Dumas, Inc.; Dumas and Playboy both licensed or exploited reproductions, creating an ownership dispute.
- Playboy sought a declaratory judgment that it owned the copyrights; Dumas counterclaimed for infringement based on Playboy’s uses beyond the magazine publications.
- After a bench trial, the district court dismissed Playboy’s claim and held Playboy had only one-time reproduction rights, awarding relief to Dumas on infringement.
- Playboy appealed and Dumas cross-appealed.

## Issues

1. Whether Nagel’s pre-1978 works were “works made for hire” under the 1909 Act using the “instance and expense” test.
2. Whether post-January 1, 1978 works were “works made for hire” under the 1976 Act, including whether check legends satisfied the statutory signed-writing requirement and whether they reflected a pre-creation agreement.
3. Whether the check legends, even if insufficient for work-for-hire status, operated as valid copyright assignments under the applicable statute.
4. Whether the district court erred by treating Playboy’s rights as uniformly limited to one-time magazine reproduction rather than varying by time period and writing.

## Decision

- Affirmed in part, reversed in part, vacated in part, and remanded for further proceedings.
- Held that works created before January 1, 1978 were works made for hire under the 1909 Act as a matter of law; Playboy was the statutory author for those works.
- Held that for January 1, 1978 to mid-1979 works, Legend A did not satisfy the 1976 Act’s work-for-hire writing requirement, though it could constitute an assignment depending on proof and categorization of works.
- Held that Legends B and C could satisfy the 1976 Act’s work-for-hire writing requirement only if they memorialized a pre-creation mutual understanding; because the legends appeared on checks issued after creation, factual findings on intent and timing were required.
- Rejected the district court’s across-the-board conclusion that Playboy had only one-time reproduction rights and required a work-by-work or period-by-period analysis of ownership and transferred rights.

## Legal Principles

- Under the 1909 Act, commissioned works may be works made for hire if created at the commissioning party’s “instance and expense,” including inducement to create and the right to direct or supervise, plus payment and financial risk allocation.
- Under the 1976 Act, a commissioned work can be a work made for hire only if it fits a statutory category and the parties sign a written instrument designating it as “a work made for hire,” typically reflecting a pre-creation agreement.
- A writing executed after creation cannot, by itself, create work-for-hire status under the 1976 Act unless it memorializes a prior mutual agreement made before the work was created.
- Work-for-hire (authorship vesting ab initio) is distinct from assignment (transfer of an existing copyright); a document insufficient to create work-for-hire status may still operate as a valid assignment if statutory writing and intent requirements are met.
- Physical possession of original art and stamps restricting reproduction may support a claim of ownership but do not substitute for the statutory writing required for work-for-hire designation or copyright transfer.

## Conclusion

The Second Circuit held Playboy owned the copyrights to Nagel’s pre-1978 works under the 1909 Act’s instance-and-expense doctrine, but required a differentiated analysis for post-1977 works under the 1976 Act, where check legends might function as assignments and could establish work-for-hire status only if they memorialized a pre-creation mutual agreement; the case was remanded for detailed findings by period and by work.


Playboy Enters., Inc. v. Dumas, 53 F.3d 549 (2d Cir. 1995), cert. denied, 516 U.S. 1010 (1995)