Dastar Corp v. Random House Inc ( 2005 )

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
TWENTIETH CENTURY FOX FILM 
CORPORATION, a Delaware
Corporation; SFM ENTERTAINMENT
LLC, a Delaware limited liability
company; NEW LINE HOME VIDEO
INC., a New York Corporation,
Plaintiffs-Counter-Defendants-
Appellees,
v.
ENTERTAINMENT DISTRIBUTING, an No. 03-57052
Oregon Corporation; MARATHON
MUSIC & VIDEO, an Oregon  D.C. No.
CV-98-07189-FMC
Corporation,
Defendants-Appellants,
DASTAR CORPORATION, an Oregon
Corporation,
Defendant-Counter-Claimant-
Appellant,
RANDOM HOUSE, INC., sued as
Doubleday, a division of Bantam
Doubleday Dell Publishing Group,
Inc.,
Counter-Defendant-Appellee.

15361
15362 TWENTIETH CENTURY FOX v. DASTAR CORP.
TWENTIETH CENTURY FOX FILM 
CORPORATION, a Delaware
Corporation; SFM ENTERTAINMENT
LLC, a Delaware limited liability
company; NEW LINE HOME VIDEO
INC., a New York Corporation,
Plaintiffs-Counter-Defendants-
Appellees,
v.
ENTERTAINMENT DISTRIBUTING, an No. 04-55410
Oregon Corporation; MARATHON
MUSIC & VIDEO, an Oregon  D.C. No.
CV-98-07189-FMC
Corporation,
Defendants-Appellants,
DASTAR CORPORATION, an Oregon
Corporation,
Defendant-Counter-Claimant-
Appellant,
RANDOM HOUSE, INC., sued as
Doubleday, a division of Bantam
Doubleday Dell Publishing Group,
Inc.,
Counter-Defendant-Appellee.

TWENTIETH CENTURY FOX v. DASTAR CORP. 15363
TWENTIETH CENTURY FOX FILM 
CORPORATION, a Delaware
Corporation; SFM ENTERTAINMENT
LLC, a Delaware limited liability
company; NEW LINE HOME VIDEO
INC., a New York Corporation,
Plaintiffs-Counter-Defendants-
Appellees,
v.
ENTERTAINMENT DISTRIBUTING, an No. 03-57234
Oregon Corporation; MARATHON
MUSIC & VIDEO, an Oregon  D.C. No.
CV-98-07189-FMC
Corporation,
Defendants-Appellants, OPINION
DASTAR CORPORATION, an Oregon
Corporation,
Defendant-Counter-Claimant-
Appellant,
RANDOM HOUSE, INC., sued as
Doubleday, a division of Bantam
Doubleday Dell Publishing Group,
Inc.,
Counter-Defendant-Appellee.

Appeal from the United States District Court
for the Central District of California
Florence Marie Cooper, District Judge, Presiding
Argued and Submitted
July 13, 2005—Pasadena, California
Filed November 18, 2005
Before: Jerome Farris, Dorothy W. Nelson, and
Richard C. Tallman, Circuit Judges.
15364 TWENTIETH CENTURY FOX v. DASTAR CORP.
Opinion by Judge Tallman;
Dissent by Judge D.W. Nelson
15368 TWENTIETH CENTURY FOX v. DASTAR CORP.
COUNSEL
David A. Gerber, Oxnard, California, for the defendant-
counter-claimant-appellant.
Jonathan D. Hacker, O’Melveny & Myers, Washington, D.C.,
Stephen G. Contopulos, Sidley Austin Brown & Wood, Los
Angeles, California, for the plaintiffs-counter-defendants-
appellees.
OPINION
TALLMAN, Circuit Judge:
General Dwight D. Eisenhower’s fascinating written
account of World War II is the subject of a more mundane,
present day battle over the copyright to that now famous
book, Crusade in Europe. Dastar Corporation (“Dastar”)
appeals the district court’s judgment in favor of Twentieth
Century Fox Film Corporation (“Fox”), SFM Entertainment
LLC, and New Line Home Video, Inc., (collectively, “Twen-
tieth Century Fox Parties”), finding that Dastar infringed pro-
tected copyrights to Crusade in Europe, and the court’s
subsequent award of attorneys’ fees and costs to Twentieth
Century Fox Parties. We affirm.
TWENTIETH CENTURY FOX v. DASTAR CORP. 15369
I
The district court entered judgment following a bench trial,
and we set forth the pertinent facts in the light most favorable
to the prevailing parties.
General Eisenhower served as Supreme Commander of the
Allied Expeditionary Forces during World War II, following
his service as Commander of the U.S. troops in Europe. Upon
the surrender of the German military forces in 1945, numer-
ous publishers approached General Eisenhower, offering him
the opportunity to publish his memoirs about the war. General
Eisenhower, however, spurned all such offers until Doubleday
president Douglas Black and The New York Herald Tribune
(“Tribune”) vice-president William Robinson convinced him
otherwise. General Eisenhower explained:
[M]any months before I left the Army, I was
approached by representatives of various publishing
houses, each with a different reason for wanting to
publish my memoirs of the war. To all these propos-
als I turned a deaf ear.
...
But finally two men, Douglas M. Black of Double-
day and William Robinson, of The New York Her-
ald Tribune, came to me with a different kind of
argument. Roughly it went like this:
Historians, they said, are often inclined to use con-
temporary accounts as source materials . . . . They
showed me, or reminded me of, a number of books
which had been written hurriedly, so as not to “miss
the market.” Certain of these books on the African
and European campaigns were riddled with inaccura-
cies. They contained conclusions that had slight
basis in fact and were the hasty conceptions or mis-
15370 TWENTIETH CENTURY FOX v. DASTAR CORP.
conceptions of authors who had a flair for writing
rapidly and fluently. Mr. Black and Mr. Robinson,
who were functioning partners for the proposal,
pointed out errors in these publications and said that
since these were written during my lifetime and were
not denied or corrected by me, the historians of the
future might give them a high degree of credibility.
This reasoning impressed me. After I thought it over
for a time, they came back and I said, “I’m ready to
undertake this task but on one condition only: it
seems to me that every time the subject is brought
up, people talk about all the various kinds of publish-
ing rights and so on and I don’t want to be bothered
with such things. Now if you people can come up
with a single package to cover the whole affair so
that I don’t have to argue with too many people, I
will probably undertake something.
DWIGHT D. EISENHOWER, AT EASE 324-25 (Doubleday & Com-
pany, Inc. 1967) (1967).
The evidence showed that despite General Eisenhower’s
initial reluctance, the thought of penning a personal account
of his war experiences had previously crossed his mind.
According to General Eisenhower, he had “tried to draft a bit
of narrative just to satisfy [him]self that [he] had something
to say that was worth hearing.” But ultimately, General Eisen-
hower explained that he had “not convinced [him]self of this
at all,” and any work was merely an “experiment” “more as
a protection to [him]self in the event [he] ever did want to
write.” He did not definitively decide to write and publish his
memoirs, however, until approached by Messrs. Black and
Robinson.
After hearing their initial pitch, General Eisenhower and
his attorney met with representatives from Tribune and Dou-
bleday in Washington, D.C., on December 30, 1947. Double-
TWENTIETH CENTURY FOX v. DASTAR CORP. 15371
day made General Eisenhower an attractive offer to publish
his memoirs and he accepted the terms with a handshake.
General Eisenhower wrote the next day that “all is settled on
a ‘gentleman’s agreement’ basis,” further explaining that the
matter had reached a “definite conclusion.”
Prior to the December 30, 1947, meeting, Doubleday sug-
gested to General Eisenhower that he could potentially avoid
having the publishing deal taxed as ordinary income, and
instead obtain more favorable capital gains treatment. General
Eisenhower contacted the Internal Revenue Service (“IRS”)
and explained his situation. He asked the IRS for an opinion
as to how the sale of the book and publication would be
treated for tax purposes. The IRS explained that under 26
U.S.C. § 117 (since repealed) it could treat him as a nonpro-
fessional, first-time writer, and if he adhered to a specific set
of restrictions, the proceeds could be taxed as capital gains,
instead of as salary. Specifically, the IRS explained that if
General Eisenhower sold “all [his] right, title and interest” in
the book after having held the completed manuscript for a
period of six months, the proceeds of his deal would qualify
for long-term capital gains treatment.
General Eisenhower explained to Doubleday that he would
have to structure the transaction as his advisors directed,
including specifically the need to account for the IRS’ opinion
that any written agreement could only be in the form of an
option to purchase the manuscript in six months, in order to
obtain the favorable tax treatment. Just after reaching the
“handshake” agreement, General Eisenhower wrote to a
friend that his lawyer “[wa]s collaborating with the Treasury
Department and with the Doubleday people to see how a ten-
tative instrument [could] be drawn up that can in no wise be
interpreted either as a bona fide sale or as a ‘contract for ser-
vices.’ ” He later explained to Doubleday that although they
could not have a formal contract in place, “at any time subse-
quent to six months, after my completion of the manuscript,
I shall be prepared to enter into a contract with [Doubleday]
15372 TWENTIETH CENTURY FOX v. DASTAR CORP.
without regard to what any other publishing house might pro-
pose in the interim.” Thus, the district court determined as a
matter of fact that Doubleday understood that General Eisen-
hower could not have put their agreement into writing until
six months after the completion of his first draft without jeop-
ardizing favorable long-term capital gains treatment.
The district court further found that General Eisenhower
began writing the book manuscript after he reached the agree-
ment with Doubleday on December 30, 1947. The writing
process took on almost mythic proportions. General Eisen-
hower typically worked approximately sixteen hours a day,
dictating text in the morning and revising and editing drafts
in the afternoon. Doubleday, for its part, not only supplied
round-the-clock secretarial staff, researchers, and stenogra-
phers, but also supervised much of the work, and paid for the
creation of maps and photos for inclusion in the book. Addi-
tionally, the Doubleday editorial board met with General
Eisenhower in person on numerous occasions, and provided
extensive comments and notes on the work in progress.
General Eisenhower completed the first draft of the manu-
script on March 24, 1948. Just over six months later, as
required by the IRS for favorable tax treatment, General
Eisenhower memorialized the December 1947 “handshake
agreement” in an October 1, 1948, written contract. The docu-
ment signed by General Eisenhower stated that:
In consideration of the sum of [REDACTED] to me
in hand paid, the receipt of which is hereby acknowl-
edged, I do hereby sell, assign, transfer and set over
unto Doubleday & Company, Inc., for its own use,
absolutely and forever, the manuscript of my War
Memoir entitled CRUSADE IN EUROPE, and all
rights of every nature pertaining thereto.
After execution of the written agreement, Doubleday sold
to Fox exclusive television rights to the book, agreeing to reg-
TWENTIETH CENTURY FOX v. DASTAR CORP. 15373
ister the copyright and granting it the right to use portions of
the text as part of the narration in any film version of the
book. Thereafter, in 1948, Doubleday obtained certificates of
registration for the copyrights to the book. Fox subsequently
produced just such a film, also titled Crusade in Europe
(“Crusade in Europe Video”), in 1953. Fox later sublicensed
the right to distribute the Crusade in Europe Video to SFM
Entertainment, which in turn sublicensed manufacture and
distribution rights over home videocassettes to New Line
Home Video.
In 1995, Dastar created its own video documentary named
Campaigns in Europe. The Twentieth Century Fox Parties
sued Dastar, alleging that Campaigns in Europe infringed on
Crusade in Europe by using large sections of the book’s text
as part of the video narration without permission. Dastar sub-
sequently asserted several counterclaims against Twentieth
Century Fox Parties, which later amended their complaint to
include a claim that Dastar had violated § 43(a) of the Lan-
ham Act, 15 U.S.C. § 1125(a), and California unfair competi-
tion law.
Twentieth Century Fox Parties and Dastar raised cross-
motions for summary judgment. The district court granted
Twentieth Century Fox Parties’ motion on both the Lanham
Act claim and the copyright claim, and denied Dastar’s
motion in full. After issuing its summary judgment ruling the
district court granted Twentieth Century Fox Parties’ motion
for attorneys’ fees under § 505 of the 1976 Copyright Act. 17
U.S.C. § 505. The district court determined that Twentieth
Century Fox Parties were wholly successful in their suit, that
Dastar’s copyright defense was “objectively unreasonable,”
that Dastar’s litigation tactics were motivated by “bad faith,”
and that an award of attorneys’ fees and costs was necessary
to deter Dastar from further infringement.
Dastar brought an earlier appeal challenging the district
court’s summary judgment ruling. In an unpublished memo-
15374 TWENTIETH CENTURY FOX v. DASTAR CORP.
randum decision, we affirmed the district court’s judgment on
the Lanham Act claims, but reversed and remanded the copy-
right claims, holding that there were genuine issues of mate-
rial fact as to General Eisenhower and Doubleday’s intent on
the work-for-hire issue. Dastar successfully petitioned for writ
of certiorari on the Lanham Act claims, and the Supreme
Court reversed and remanded the case back to us. Dastar
Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 38
(2003). We then remanded the case back to the district court
with instructions to dismiss the Lanham Act claim with preju-
dice.
In its summary judgment appeal, Dastar had also appealed
the fee award, arguing that the fee request was not adequately
documented and that the fee rates and hours billed were
excessive. We rejected both arguments, but in light of our
reversal of the district court’s summary judgment in favor of
Twentieth Century Fox Parties on the copyright claim, we
vacated the fee award and remanded to the district court to
recalculate the fees once the copyright claim had been
resolved.
Subsequently, the district court granted Dastar’s motion for
summary judgment and dismissed Twentieth Century Fox
Parties’ unfair competition claim. With only the copyright
claim remaining, the parties then submitted to a bench trial,
during which the district court admitted hundreds of exhibits,
including General Eisenhower’s correspondence, notes, and
recorded recollections. Dastar did not call any witnesses at
trial, relying solely on the documentary evidence submitted
and its cross-examination of Twentieth Century Fox Parties’
only witness, Samuel Vaughn, a Doubleday editor who
worked closely with General Eisenhower. After entering
lengthy findings of fact and conclusions of law, the district
court determined that General Eisenhower’s book was created
as a work-for-hire within the definition of the statute, and that
Dastar’s video infringed the copyright to the book.
TWENTIETH CENTURY FOX v. DASTAR CORP. 15375
Upon conclusion of the bench trial, the court again consid-
ered the issue of attorneys’ fees, and granted Twentieth Cen-
tury Fox Parties’ motion. In its opinion, the district court
incorporated by reference its earlier opinion awarding fees. In
its new order, the district court held that for the same reasons
it had stated previously, Twentieth Century Fox Parties were
still entitled to a fee award because they had prevailed. The
district court recalculated the lodestar fees from its December
2000 award based on expenses incurred in defending the sum-
mary judgment appeal and reduced the fees based on the sub-
sequently dismissed Lanham Act claim.
Dastar appeals both the district court’s adverse judgment on
Twentieth Century Fox Parties’ copyright infringement claim
and the district court’s subsequent re-award of attorneys’ fees.
We affirm.
II
We first consider Twentieth Century Fox Parties’ infringe-
ment claims under the now repealed Copyright Act of 1909,
17 U.S.C. § 1, 61 Stat. 652-61 (repealed 1976) (“1909 Act”),
because Crusade in Europe was published before the January
1, 1978, effective date of the 1976 Copyright Act (“1976
Act”), 17 U.S.C. § 101. Dolman v. Agee, 157 F.3d 708, 712
n.1 (9th Cir. 1998). To demonstrate copyright infringement,
the plaintiff must prove ownership of a valid copyright and
copying of constituent elements of the work that are original.
Walker v. University Books, Inc., 602 F.2d 859, 862 (9th Cir.
1979). Dastar’s defense hinges on its attempt to demonstrate
that Doubleday did not own a valid copyright in Crusade in
Europe in 1995 because Doubleday’s purported attempt to
renew the copyright in 1975 was ineffective.
[1] Section 24 of the 1909 Act provides that the initial
copyright shall last for twenty-eight years. 1909 Act, 17
U.S.C. § 24. The proprietor of “any work copyrighted . . . by
an employer for whom such work is made for hire” is entitled
15376 TWENTIETH CENTURY FOX v. DASTAR CORP.
to a renewal and extension of the copyright for an additional
term of twenty-eight years if the employer makes the appro-
priate application for renewal within one year prior to the
expiration of the copyright original term. Id.[2] In the case of art not created as a work-for-hire, how-
ever, only the author may renew the copyright in the final
year of the initial twenty-eight year period. Id. If the author
is not alive during the one-year renewal period, then such
right of renewal passes to the surviving spouse, or children of
the author, then to the executors of the author’s estate, or in
the absence of a will naming executors, to the next of kin. Id.If no such renewal is made by the appropriate family member
or executor, the copyright expires twenty-eight years from pub-
lication.1 Id.1
In full, the 1909 Copyright Act states:
The copyright secured by this title shall endure for twenty-eight
years from the date of first publication, whether the copyrighted
work bears the author’s true name or is published anonymously
or under an assumed name: Provided, That in the case of any
posthumous work or of any periodical, cyclopedic, or other com-
posite work upon which the copyright was originally secured by
the proprietor thereof, or of any work copyrighted by a corporate
body (otherwise than as assignee or licensee of the individual
author) or by an employer for whom such work is made for hire,
the proprietor of such copyright shall be entitled to a renewal and
extension of the copyright in such work for the further term of
twenty-eight years when application for such renewal and exten-
sion shall have been made to the copyright office and duly regis-
tered therein within one year prior to the expiration of the
original term of copyright: And provided further, That in the case
of any other copyrighted work, including a contribution by an
individual author to a periodical or to a cyclopedic or other com-
posite work, the author of such work, if still living, or the widow,
widower, or children of the author, if the author be not living, or
if such author, widow, widower or children be not living, then the
author’s executors, or in the absence of a will, his next of kin
shall be entitled to a renewal and extension of the copyright in
such work for a further term of twenty-eight years when applica-
TWENTIETH CENTURY FOX v. DASTAR CORP. 15377
[3] Dastar argues that, as a matter of law, Crusade in
Europe cannot be a work-for-hire because where as here,
General Eisenhower authored the book as an independent
contractor, Doubleday was not his “employer.” We disagree.
The 1909 Act does not provide any definition of “work made
for hire” or “employer.” Estate of Burne Hogarth v. Edgar
Rice Burroughs, Inc., 342 F.3d 149, 156 (2d Cir. 2003). It
provides only in § 26 that “[i]n the interpretation and con-
struction of this title . . . the word ‘author’ shall include an
employer in the case of works made for hire.” 1909 Act, 17
U.S.C. § 26. “Because the 1909 Act did not define ‘employer’
or ‘works made for hire,’ the task of shaping these terms fell
to the courts.” Comm. for Creative Non-Violence v. Reid, 490
U.S. 730, 744 (1989) (“CCNV”). Resolution of the issue thus
becomes a mixed question of law and fact.
“Until the mid-1960’s [sic], federal courts applied the
work-for-hire doctrine only to cases in which a traditional
employer/employee relationship existed between the hiring
party and the creator of the work.” Playboy Enters., Inc. v.
Dumas, 53 F.3d 549, 554 (2d Cir. 1995). However, “[i]n the
last decade that the [1909] Act was effective, courts expanded
the concept to include less traditional relationships, as long as
the hiring party had ‘the right to control or supervise the art-
ist’s work.’ ” Self-Realization Fellowship Church v. Ananda
Church of Self-Realization, 206 F.3d 1322, 1327 (9th Cir.
2000) (citation omitted).
Forty years ago, we explained the law of this circuit with
respect to works-for-hire:
tion for such renewal and extension shall have been made to the
copyright office and duly registered therein within one year prior
to the expiration of the original term of copyright: And provided
further, That in default of the registration of such application for
renewal and extension, the copyright in any work shall determine
at the expiration of twenty-eight years from first publication.
15378 TWENTIETH CENTURY FOX v. DASTAR CORP.
[W]hen one person engages another, whether as
employee or as an independent contractor, to pro-
duce a work of an artistic nature, that in the absence
of an express contractual reservation of the copyright
in the artist, the presumption arises that the mutual
intent of the parties is that the title to the copyright
shall be in the person at whose instance and expense
the work is done.
Lin-Brook Builders Hardware v. Gertler, 352 F.2d 298, 300
(9th Cir. 1965); see May v. Morganelli-Heumann & Assocs.,
618 F.2d 1363, 1368 (9th Cir. 1980); Dolman, 157 F.3d at
711-12. Accordingly, we have consistently evaluated claims
that a work was made for hire by asking whether it was cre-
ated at the “instance and expense” of the engaging party. See,
e.g., Dolman, 157 F.2d at 712 (stating that a party asserting
work-for-hire affirmative defense “was required to present
some credible evidence that [the author’s] work was done at
the ‘instance and expense’ ” of the commissioning party);
May, 618 F.2d at 1368 n.4 (“What is necessary is that the art-
ist produce the work at the instance and expense of the
employer (or commissioning party) . . . .”).
Dastar’s argument that independent contractors cannot
create works-for-hire as a matter of law essentially seeks to
overturn forty years of established case law within this circuit,
something we as a three-judge panel cannot and will not do.
Palmer v. Sanderson, 9 F.3d 1433, 1437 n.5 (9th Cir. 1993)
(“As a general rule, a panel not sitting en banc may not over-
turn circuit precedent.”). It has been well established within
this circuit that works by independent contractors may qualify
as works-for-hire so long as they were created at the instance
and expense of the commissioning party. See Dolman, 157
F.3d at 712; Self-Realization Fellowship Church, 206 F.3d at
1326. Nor are we alone in applying the work-for-hire doctrine
to a case in which an employer commissioned a work by an
independent contractor. See Estate of Burne Hogarth, 342
F.3d at 163 (there is no “distinction in the case law under the
TWENTIETH CENTURY FOX v. DASTAR CORP. 15379
1909 Act between employees and independent contractors”);
Playboy, 53 F.3d at 554; see also Murray v. Gelderman, 566
F.2d 1307, 1311 n.7 (5th Cir. 1978) (observing that the work-
for-hire doctrine is applicable when the parties are an
employer and an independent contractor); Forward v. Thoro-
good, 985 F.2d 604, 606 (1st Cir. 1993) (noting that, although
previously confined to the traditional employer-employee
relationship, the work-for-hire doctrine has been expanded to
include commissioned works created by an independent con-
tractor).
To the extent that Dastar argues that the Supreme Court’s
1989 decision in CCNV undermines our existing precedent,
we are unpersuaded. First, as a preliminary matter, we consid-
ered two cases post-CCNV, both of which reaffirmed our law
that works created by independent contractors at the instance
and expense of a commissioning party are presumed to be
works-for-hire. See Self-Realization Fellowship Church, 206
F.3d at 1326; Dolman, 157 F.3d at 712.
Second, the CCNV Court considered the meaning of “work-
for-hire” only under the 1976 Copyright Act. 490 U.S. at 732.
In recounting the history of the work-for-hire doctrine, the
Supreme Court noted that under the 1909 Act, “the courts
generally presumed that the commissioned party had
impliedly agreed to convey the copyright, along with the work
itself, to the hiring party.” Id. at 744 (emphasis added). Dastar
argues, based on this statement, that if the commissioning
party acquires the copyrights from the independent contractor
through an implied agreement to convey, then the work was
not made for hire because, with works-for-hire, the commis-
sioning party automatically owns the copyright upon creation
in the first place — there is no need to convey any rights. See
1909 Act, 17 U.S.C. § 26 (repealed 1976) (“ ‘author’ shall
include the employer in the case of works made for hire”).
[4] We join the Second Circuit in rejecting that argument.
See Estate of Burne Hogarth, 342 F.3d at 162-63. The CCNV
15380 TWENTIETH CENTURY FOX v. DASTAR CORP.
Court was clear that it was considering the meaning of the
work-for-hire provision of the 1976 Copyright Act. 490 U.S.
at 732. No part of its decision rests on the meaning of the
work-for-hire provision in the 1909 Act, rendering its com-
mentary non-binding dicta. See Estate of Burne Hogarth, 342
F.3d at 163 (“[W]e conclude that the historical review in
CCNV, if dictum at all, is dictum of a weak variety . . . .” );
see also Cetacean Cmty. v. Bush, 386 F.3d 1169, 1173 (9th
Cir. 2004) (“A statement is dictum when it is made during the
course of delivering a judicial opinion, but is unnecessary to
the decision of the case and is therefore not precedential.”)
(internal citation, alterations, and quotation marks omitted).2
To the extent necessary, we reaffirm the well-established law
of this circuit: an independent contractor creates a work-for-
hire when it was made at the instance and expense of the com-
missioning party. Lin-Brook, 352 F.3d at 300.
III
Having concluded that independent contractors may as a
matter of law create works-for-hire, we consider whether in
this case, as determined by the district judge in her capacity
as the trier of fact, General Eisenhower wrote Crusade in
Europe at the instance and expense of Doubleday. May, 618
F.2d at 1368 n.4. We review the district court’s conclusions
of law following a bench trial de novo. Friends of Yosemite
Valley v. Norton, 348 F.3d 789, 793 (9th Cir. 2003). Factual
conclusions, however, are reviewed for clear error. Id.To the extent that Dastar challenges the district court’s
findings of fact, we find no clear error and affirm them. See
2
We further note that CCNV only opined as to what “courts generally
presumed,” CCNV, 490 U.S. at 744 (emphasis added), citing only to dated
Second Circuit cases, and omitting any discussion of or citation to our
own well-established precedent. As we explained, in the final ten years
that it was effective, the 1909 Act work-for-hire doctrine expanded to
include independent contractors.
TWENTIETH CENTURY FOX v. DASTAR CORP. 15381
id. at 793. The determinations of the district court must be
upheld unless on review of all the evidence we are left with
the “definite and firm conviction that a mistake has been com-
mitted.” Easley v. Cromartie, 532 U.S. 234, 242 (2001). “[I]t
is for the district court to resolve the factual disputes and to
draw inferences from that proof.” Husain v. Olympic Airways,
316 F.3d 829, 835 (9th Cir. 2002). Though our colleague in
dissent would reach different factual conclusions from the
evidence adduced at trial, we may not disturb the district
court’s factual findings where we would have drawn different
inferences or determined the facts differently. Easley, 532
U.S. at 242. Thus, although we may agree with the dissent
that the evidence presented could have permitted different
inferences than the district court ultimately drew, we find no
clear error in the district court findings of fact and adopt them
in full for the purposes of our analysis.
A
[5] We recently described the “instance” test as an inquiry
into whether “the motivating factor in producing the work
was the employer who induced the creation.” Self-Realization
Fellowship Church, 206 F.3d at 1326 (quoting Playboy, 53
F.3d at 554). The “instance” test is shaped in part by the
degree to which the “hiring party had ‘the right to control or
supervise the artist’s work.’ ” Self-Realization Fellowship
Church, 206 F.3d at 1327 (citing MELVILLE B. NIMMER AND
DAVID NIMMER, Nimmer on Copyright, § 5.03[B][1][a][I]
(1999)).
[6] General Eisenhower’s case presents the prototypical sit-
uation where the motivating factor for producing the work
was the employer’s inducement. General Eisenhower spurned
all book offers until approached by representatives from Dou-
bleday and Tribune who convinced him to pen his personal
account of the war. Moreover, he did not begin the actual
writing until after December 30, 1947. Cf. Siegel v. Nat’l
Periodical Publ’ns, Inc., 508 F.2d 909, 914 (2d Cir. 1974).
15382 TWENTIETH CENTURY FOX v. DASTAR CORP.
Where, as here, a reluctant author who historically had
refused to engage in the creative process begins to write vora-
ciously after being persuaded by a publisher, the evidence is
sufficient to support the factual conclusion that the work was
at the publisher’s “instance.” See Playboy, 53 F.3d at 556(author’s work was created at the instance of the publisher
where the author “would not have created those particular
[works] if he had not been given the assignments” by the pub-
lisher).
This case stands in stark contrast to our decision in Self-
Realization Fellowship Church. In that instance, we held that
works created by a monk who had taken a vow of poverty,
assigned all his possessions to the church he founded, and
renounced any claim he may have for compensation, were not
works-for-hire under the 1909 Act. 206 F.3d at 1327. We con-
cluded that because the works were “motivated by [the
monk’s] own desire for self-expression” they were not works-
for-hire. Id. at 1326-27; see also Forward, 985 F.2d at 606(holding that demo tapes prepared by the artist for the pur-
poses of enticing a record company to produce and distribute
them were not created at the instance of the employer); Siegel,
508 F.2d at 914 (holding that the Superman comic strip was
not created at the employer’s instance where the Superman
character “had been spawned by the [author] four years before
the relationship between [the] authors and the [employer]”);
cf. Picture Music, Inc. v. Bourne, Inc., 457 F.2d 1213, 1217
(2d Cir. 1972) (holding a work is deemed for hire where the
employer took the “initiative in engaging” the author to create
the work).
[7] Dastar argues that the book could not have been created
at Doubleday’s instance because General Eisenhower had
been drafting notes and small portions of what he thought
might ultimately coalesce into a full book prior to any agree-
ment with Doubleday to publish. The district court rejected
that assertion as a matter of fact, finding that what General
Eisenhower himself described as attempts “to draft a bit of
TWENTIETH CENTURY FOX v. DASTAR CORP. 15383
narrative just to satisfy myself that I had something to say that
was worth hearing,” were nothing more than an “experiment”
done “more as a protection to [him]self in the event [he] ever
did want to write.” Moreover, although General Eisenhower
used notes made throughout the war “to jog and reinforce his
memory,” he otherwise wrote from scratch. Critically, Dastar
did not introduce any evidence suggesting that General Eisen-
hower had begun drafting the book before he reached his
agreement with Doubleday in December 1947.3 In sum, we
think the factual record is more than sufficient to conclude
that General Eisenhower’s creation of Crusade in Europe was
induced by Doubleday.
[8] Additionally, we are satisfied by the evidence that Dou-
bleday had sufficient supervisory powers over General Eisen-
hower’s authorship, a point which Dastar does not contest.
We note that complete control over the author’s work is not
necessary. See Picture Music, 457 F.2d at 1217 (holding that
supervision existed where the commissioning party had “the
power to accept, reject, or modify [the] work”). Instead, the
issue is one of degree where the greater the degree of supervi-
sory power and control a commissioning party has over an
independent contractor, the more likely it is that the work was
created at the commissioning party’s instance.
[9] Doubleday had a significant degree of supervision over
General Eisenhower’s writing. Specifically, the district court
determined that Doubleday’s typical process for most books
involved waiting for the manuscript to be completed, and then
discussing possible improvements with the author. With Cru-
3
Dastar argues that a 1948 magazine article reporting that General
Eisenhower wrote the first 60,000 words of Crusade in Europe in 1942
while stationed in Gibraltar would have demonstrated that General Eisen-
hower began writing his war memoirs not at Doubleday’s insistence, but
of his own volition. However, this article was excluded by the district
court as hearsay. We see no abuse of discretion in the district court’s
exclusion of that inadmissible evidence, and we do not consider it on
appeal.
15384 TWENTIETH CENTURY FOX v. DASTAR CORP.
sade in Europe, however, the degree of in-person supervision
was much greater than usual, including regular face-to-face
meetings between General Eisenhower and Doubleday during
the writing process where its editorial board provided him
with extensive notes and comments. Doubleday also hired a
fact checker who “offered suggestions for modifications and
additions . . . where the original draft did not conform with
historical facts.” The district court did not clearly err in decid-
ing that this evidence supported a conclusion that General
Eisenhower would not have written the work without the urg-
ing of Doubleday and Tribune.
B
[10] Moreover, there is little doubt that the book was
authored at Doubleday’s expense. Doubleday took on all the
financial risk of the book’s success, agreeing to pay General
Eisenhower a lump sum for writing the book, instead of nego-
tiating a royalty deal. In addition, Doubleday shouldered the
expense for the entire staff who assisted General Eisenhower
in drafting the manuscript, including three secretaries, a fact
checker, and the services of the editorial board at Doubleday.
Finally, Doubleday took responsibility for all the costs neces-
sary to produce the maps and photographs that were included
in the book. There was no evidence that General Eisenhower
paid for a single expense associated with writing and publish-
ing the book.
[11] We thus uphold the district court’s conclusion that,
because General Eisenhower would not have authored or pub-
lished Crusade in Europe without Doubleday’s convincing,
and because there is no question that Doubleday carried the
financial load of preparing the book, it was in fact created at
the instance and expense of the commissioning party.
IV
[12] Where we determine that a work was produced at the
instance and expense of another party, we indulge the legal
TWENTIETH CENTURY FOX v. DASTAR CORP. 15385
presumption that it is a work-for-hire — that the copyright
lies ab initio with the commissioning party. See Dolman, 157
F.3d at 711-12; Self-Realization Fellowship Church, 206 F.3d
at 1326. “The work for hire presumption can be overcome by
evidence of an agreement by which the employee or indepen-
dent contractor retained the copyright in his work.” Dolman,
157 F.3d at 712.
Dastar argues that the October 1, 1948, contract purporting
to assign all rights in Crusade in Europe to Doubleday is
inimical with the work-for-hire doctrine. Had Doubleday
acquired the copyrights under the work-for-hire doctrine,
there would be no need for a later assignment of those very
rights. Thus, according to Dastar, the 1948 conveyance proves
that the parties never intended the work-for-hire presumption
to apply.
[13] The presumption may be rebutted only by evidence
that the parties did not intend to create a work-for-hire. See id.
at 712-13; Lin-Brook, 352 F.2d at 300 (holding that the evi-
dence was insufficient to rebut the presumption because there
was no evidence “as to the circumstances or intendment” of
the parties). And thus, the contract alone, however, is insuffi-
cient to rebut the presumption. Lin-Brook, 352 F.2d at 300. In
Lin-Brook, we faced a similar situation where just before the
commencement of the lawsuit, the independent contractor/
author executed an assignment to the commissioning party of
the copyrights in allegedly infringed drawings. 352 F.2d at
300. We rejected the district court’s determination that the
assignment demonstrated prior lack of title in the commis-
sioning party because “without any evidence as to the circum-
stances or intendment of its execution” the agreement was
insufficient to rebut the presumption. Id. (emphasis added).
[14] The only rebuttal evidence of intent to which Dastar
points is the IRS tax treatment of the book. We are, however,
unconvinced that the tax treatment of a publishing deal bears
on whether Doubleday and General Eisenhower intended the
15386 TWENTIETH CENTURY FOX v. DASTAR CORP.
work to be a work-for-hire. Doubleday and General Eisen-
hower’s 1947 agreement to publish the book evidenced their
intent to create a work-for-hire. As General Eisenhower
stated:
I’m ready to undertake this task but on one condition
only: it seems to me that every time the subject is
brought up, people talk about all the various kinds of
publishing rights and so on and I don’t want to be
bothered with such things. Now if you people can
come up with a single package to cover the whole
affair so that I don’t have to argue with too many
people, I will probably undertake something.
Thus, the record supports the district court’s conclusion that
General Eisenhower and Doubleday contemplated a work-for-
hire scenario where General Eisenhower need never be con-
cerned with the rights to the book. As the district court deter-
mined, the only reason that the parties did not execute a
formal agreement purporting to create a work-for-hire in 1947
was to comply with the formalistic tax requirements set out by
the IRS. Doubleday, in particular, was sensitive about not cre-
ating any formal written instrument that could potentially
jeopardize capital gains treatment of the Eisenhower deal —
a strange concern had it been worried that delay in reducing
the agreement to writing could have had a negative impact on
its ownership of the copyright.
[15] Moreover, there is no evidence in the record that either
General Eisenhower or Doubleday thought that Doubleday
did not own the copyright. Nor is there evidence that General
Eisenhower thought that he had to legally transfer such title
for Doubleday to acquire title to the copyright. Finally, Dou-
bleday acted in a manner consistent with its status as the
copyright owner. When it renewed the copyright in 1975,
Doubleday listed itself as the proprietor of the copyright as a
work-for-hire. We agree with the district court that there is
TWENTIETH CENTURY FOX v. DASTAR CORP. 15387
insufficient evidence to rebut the presumption that Crusade in
Europe was a work created for hire.4
V
Dastar next argues that Doubleday did not hire General
Eisenhower until February 8, 1948, and Doubleday can only
claim rights in material created after that date. We again dis-
agree. The district court properly determined as a matter of
fact that Doubleday and General Eisenhower entered into an
agreement on December 30, 1947. We uphold its legal con-
clusion that the entire published contents of Crusade in
Europe were properly copyrighted.
[16] Moreover, the district court determined that Dastar
admitted to copying without authorization substantial portions
of Crusade in Europe to create Campaigns in Europe. Dastar
has presented no arguments that give us cause to reverse the
district court’s judgment. We affirm the district court’s judg-
ment of infringement.
VI
[17] Dastar also claims on appeal that the district court
erred by restricting the scope of the trial on remand. We dis-
4
Dolman does not compel a different result. In that case we held that the
defendant had introduced sufficient evidence to rebut the work-for-hire
presumption, relying in part on evidence that the author, Shield, assigned
away the copyrights to the subject works. 157 F.3d at 713. We concluded
that the presumption had been successfully rebutted by relying specifically
on evidence in addition to the assignment, including evidence that the
assignee filed copyright registrations and renewals naming Shield as the
author. Id. Here, however, Doubleday initially registered itself as the
copyright owner and indicated on the 1975 copyright renewal that it was
the proprietor as a work-for-hire. The evidence in Dolman, unlike here,
went to the parties’ intent regarding the issue of copyright ownership. Id.Dastar’s reliance on the attempt to obtain favorable tax treatment does
nothing to undermine the presumption that the parties intended to create
a work-for-hire.
15388 TWENTIETH CENTURY FOX v. DASTAR CORP.
agree. We vacated the district court’s initial grant of summary
judgment on Twentieth Century Fox Parties’ copyright
infringement claim because “the evidence raise[d] doubt as to
Eisenhower’s intent with respect to Crusade in Europe.”
Twentieth Century Fox Film Corp. v. Entm’t Distrib., 34 Fed.
Appx. 312, 314 (9th Cir. 2002) (unpublished). There is noth-
ing in our prior decision that indicates that we issued an open
remand. Rather, in remanding to the district court, our opinion
contemplates a trial to resolve the only remaining genuine
issue of material fact: General Eisenhower’s intent to create
a work-for-hire. See also Dastar Corp. v. Twentieth Century
Fox Film Corp., 539 U.S. 23, 28 n.2 (2003) (stating that the
“Ninth Circuit held that the tax treatment General Eisenhower
sought for his manuscript of the book created a triable issue
as to whether he intended the book to be a work for hire”).
The district court properly conducted the trial we ordered.
VII
A
[18] We now consider the district court’s award of attor-
neys’ fees under 17 U.S.C. § 505.5 Under § 505, the district
court has discretion to award “reasonable attorney[s’] fee[s]
to the prevailing party.” 17 U.S.C. § 505. “[A]n award of
attorney[s’] fees to a prevailing [party] that furthers the under-
5
Although the 1909 Act clearly applies to the substantive nature of the
protection, Twentieth Century Fox Parties successfully moved for attor-
neys’ fees under § 505 of the 1976 Act. We note that this is not the first
instance where a party sought relief for infringement under the 1909 Act,
but pursued its attorneys’ fees claim under the 1976 Act. See Magnuson
v. Video Yesteryear, 85 F.3d 1424 (9th Cir. 1996). And although both acts
have substantially similar provisions for awarding attorneys’ fees, Fogerty
v. Fantasy, Inc., 510 U.S. 517, 523-24 (1994), we do not consider whether
the attorneys’ fee award should be analyzed under the 1909 Act or under
the 1976 Act because neither party raised that issue on appeal. We simply
accept the parties’ contention that the district court’s award of fees under
§ 505 should be reviewed for an abuse of discretion.
TWENTIETH CENTURY FOX v. DASTAR CORP. 15389
lying purposes of the Copyright Act is reposed in the sound
discretion of the district courts . . . .” Fantasy, Inc. v. Fogerty,
94 F.3d 553, 555 (9th Cir. 1996). In awarding fees, the district
court may consider the following factors: (1) frivolousness;
(2) motivation; (3) objective unreasonableness both in the fac-
tual and legal components of the case; (4) and the need in par-
ticular circumstances to advance the dual goals of
compensation and deterrence. Fogerty v. Fantasy, Inc., 510
U.S. at 534 n.19.
[19] “A district court’s fee award does not constitute an
abuse of discretion unless it is based on an inaccurate view of
the law or a clearly erroneous finding of fact.” Fantasy, 94
F.3d at 556 (quoting Schwarz v. Sec’y of Health & Human
Servs., 73 F.3d 895, 900 (9th Cir. 1995)). “Generally, a dis-
trict court’s order on attorney[s’] fees may be set aside if the
court fails to state reasons for its decision . . . .” Mattel, Inc.
v. Walking Mountain Prods., 353 F.3d 792, 815 (9th Cir.
2003). Remand is required only where the record does not
support the district court’s fee award. Id.[20] Nothing in the record, and none of Dastar’s arguments,
convince us that the district court abused its discretion in
awarding fees based on the copyright claims. The mere fact
that it relied on its earlier findings to support its fee award
does not equate with a failure to articulate reasons for an
award. Quite the contrary, as all the parties agree, the district
court incorporated its earlier findings into its December 2004
fee award, thereby providing us with a sufficient basis to
determine that it considered the factors listed in Fogerty v.
Fantasy, Inc. See Magnuson v. Video Yesteryear, 85 F.3d at
1432.
Similarly, we reject Dastar’s claim that the district court
improperly granted fees to Twentieth Century Fox Parties for
defending against Dastar’s unfair competition and slander
claims. Fee awards may include costs and fees associated with
defending against counterclaims if the counterclaims “involve
15390 TWENTIETH CENTURY FOX v. DASTAR CORP.
a common core of facts or are based on related legal theories.”
Webb v. Sloan, 330 F.3d 1158, 1168 (9th Cir. 2003) (empha-
sis omitted). Dastar’s counterclaims are predicated on its
assertion that Doubleday did not own the copyright to Cru-
sade in Europe, and are thus sufficiently related.
Finally, Dastar argues that the district court improperly
awarded fees generated by Twentieth Century Fox Parties in
defending against Dastar’s prior appeal of the district court’s
summary judgment award. Relying heavily on Circuit Rules
39-1.6 and 39-1.8, Dastar contends that the district court was
without jurisdiction to award appeal fees, primarily because
Twentieth Century Fox Parties did not first file an application
with us to recover fees and expenses.
In Cabrales v. Los Angeles, 935 F.2d 1050 (9th Cir. 1991),
we held that a party requesting fees under 42 U.S.C. § 1988,
a fee and cost provision similar in form to § 505, see 17
U.S.C. § 505, was improperly denied fees for an intermediate
appellate stage of its litigation where it was unsuccessful,
although it was ultimately successful on the merits of its
claims. In that case, the plaintiff secured a judgment from the
district court that was affirmed on appeal. Id. at 1051. The
Supreme Court vacated our decision, however, and remanded
for reconsideration. Id. We affirmed our prior holding and
reinstated the district court’s judgment. Id. After the Supreme
Court denied the defendant’s second petition for certiorari, the
plaintiff moved in the Supreme Court for its attorneys’ fees.
Id. The Supreme Court then remanded to the district court
which awarded her attorneys’ fees for work done on the sec-
ond petition, but not the first. Id. We reversed, holding that
“plaintiffs are to be compensated for attorney[s’] fees incurred
for services that contribute to the ultimate victory in the law-
suit.” Id. at 1052; see also NAACP v. Richmond, 743 F.2d
1346, 1358-1359 (9th Cir. 1984) (remanding to the district
court to award attorneys’ fees for services at the trial and
appellate level to the Appellant, who ultimately prevailed).
TWENTIETH CENTURY FOX v. DASTAR CORP. 15391
[21] We think the same rationale is applicable here. “Rare,
indeed, is the litigant who doesn’t lose some skirmishes on
the way to winning the war. Lawsuits usually involve many
reasonable disputed issues and a lawyer who takes on only
those battles he is certain of winning is probably not serving
his client vigorously enough . . . .” Cabrales, 935 F.2d at
1053. We see no abuse of discretion in the district court’s
decision to award Twentieth Century Fox Parties its fees for
the prior summary judgment appeal.
B
[22] Dastar further argues that the district court erred in
awarding non-taxable costs under § 505 because only costs
specified as taxable costs in 28 U.S.C. § 1920 can be included
in an attorneys’ fee award. On this final point we again dis-
agree with Dastar. Section 505 provides that “the court in its
discretion may allow the recovery of full costs by or against
any party . . . .” 17 U.S.C. § 505. Section 1920, however, lim-
its the costs taxable against the losing party, enumerating five
categories of costs that may be awarded. 28 U.S.C. § 1920.
In Crawford Fitting Co. v. J.T. Gibbons, Inc., 482 U.S.
437, 445 (1987), the Supreme Court considered the power of
the federal courts to require a losing party to pay the compen-
sation of the winning party’s expert witness. Holding that
costs taxable under Fed. R. Civ. P. 54(d) are limited to those
set forth in 28 U.S.C. §§ 1920 and 1821, the Supreme Court
explained that “[a]ny argument that a federal court is empow-
ered to exceed the limitations explicitly set out in §§ 1920 and
1821 without plain evidence of congressional intent to super-
sede those sections ignores our longstanding practice of con-
struing statutes in pari materia.” Crawford Fitting, 482 U.S.
at 445.
While we have not considered the question, our brethren
who have addressed the issue are split. In Pinkham v. Camex,
Inc., 84 F.3d 292 (8th Cir. 1996), for example, the Eighth Cir-
15392 TWENTIETH CENTURY FOX v. DASTAR CORP.
cuit concluded that § 505 did not clearly evidence congressio-
nal intent that it exceeded the scope of costs authorized by
§ 1920. Id. at 295; see also Artisan Contractors Ass’n, of Am.,
Inc. v. Frontier Ins. Co., 275 F.3d 1038, 1039-40 (11th Cir.
2001). On the other hand, the Seventh Circuit has suggested
that non-taxable costs, outside the gambit of those available
under § 1920, may be awarded under § 505. Susan Wakeen
Doll Co. v. Ashton Drake Galleries, 272 F.3d 441, 458 (7th
Cir. 2001) (“[A]ny award of fees and non-taxable costs must
come through [§ 505], and not through the general cost provi-
sions of 28 U.S.C. § 1920.”); see also Invessys, Inc. v.
McGraw-Hill Cos., Ltd., 369 F.3d 16, 22 (1st Cir. 2003)
(holding that costs of electronic legal research, costs not enu-
merated as taxable under § 1920, are nevertheless reimburs-
able under § 505); Coles v. Wonder, 283 F.3d 798, 803 (6th
Cir. 2002) (affirming award of non-taxable costs under § 505
without discussion).
[23] Crawford Fitting instructs us to carefully inspect § 505
for clear evidence of congressional intent that non-taxable
costs should be available. We respectfully disagree with those
circuits who have concluded differently, but we think that
there can be no other import to the phrase “full costs” within
§ 505. Construing § 505 as limiting the costs that may be
awarded to any particular subset of taxable costs effectively
reads the word “full” out of the statute. We must give every
word in a statute meaning. To do otherwise would be to vio-
late the long standing principle of statute interpretation that
“statutes should not be construed to make surplusage of any
provision.” Northwest Forest Res. Council v. Glickman, 82
F.3d 825, 834 (9th Cir. 1996) (internal alteration omitted).
Thus, we hold that district courts may award otherwise non-
taxable costs, including those that lie outside the scope of
§ 1920, under § 505.
AFFIRMED.
TWENTIETH CENTURY FOX v. DASTAR CORP. 15393
D.W. NELSON, Circuit Judge, dissenting:
I respectfully dissent from the opinion of my colleagues. I
do not agree that Eisenhower and Doubleday intended Cru-
sade in Europe to be a “work-for-hire” under the 1909 Copy-
right Act. Given the state of copyright law at the time that
Eisenhower and Doubleday entered their agreement, I do not
believe the parties intended that the work be “for hire” as that
term was then understood. Furthermore, the contract between
Eisenhower and Doubleday, the tax treatment that Eisenhower
received for the manuscript, and the evidence in the record
that several publishers were offered the opportunity to com-
pete for the right to publish Eisenhower’s manuscript point to
one conclusion only: that Eisenhower sold Doubleday a prod-
uct, not his services. Thus, I conclude that Crusade in Europe
was not written as a work for hire, and accordingly would
reverse the district court judgment in favor of Doubleday.
As the majority explains, the 1909 Copyright Act does not
contain a definition for the term “work-for-hire.” See Majority
Op. at 15377. The majority describes how courts have devel-
oped the doctrine establishing the meaning of the term, and
how that doctrine has evolved to encompass a broader range
of employment relationships. Id. at 15377. As the majority
acknowledges, this court-made doctrine initially held that
only works created by traditional “employees” fell under the
“work for hire” doctrine. Id.; see also Cmty for Creative Non-
Violence v. Reid, 490 U.S. 730, 749 (1989) (“CCNV”), Self-
Realization Fellowship Church v. Ananda Church of Self-
Realization, 296 F.3d 1322, 1327 (9th Cir. 2000). It was not
until the 1960s that this Circuit for the first time included
work created by independent contractors in the scope of the
“work for hire” doctrine. CCNV, 490 U.S. at 749; Lin-Brook
Builders Hardware v. Gerstler, 352 F.2d 298, 300 (9th Cir.
1965). The presumption that a given work is “for hire” is sim-
ply that — a presumption, “based on the presumed mutual
intent of the parties.” May v. Morganelli-Heumann & Assocs.,
618 F.2d 1363, 1368 (9th Cir. 1980). I conclude that as the
15394 TWENTIETH CENTURY FOX v. DASTAR CORP.
law stood in 1948, it is unlikely that either party to the trans-
action viewed the sale of Crusade in Europe to Doubleday as
the creation of a work for hire. No one has suggested that in
1948, when Eisenhower entered his deal with Doubleday, he
was in a traditional employment relationship with Doubleday.
Yet the law governing “work for hire” in 1948 extended only
to such relationships. Thus, I fail to see how the majority can
conclude that the parties intended the work to be “for hire”
when that doctrine was understood to encompass only works
created by employees.
Furthermore, in making its factual findings, the district
court relied heavily on documents and testimony addressing
Eisenhower’s and Doubleday’s hindsight reconstruction of the
events, to the exclusion of other evidence in the record that
cast the events in a different light. For instance, the record
contains evidence that Eisenhower had been seeking a pub-
lisher prior to his meeting with Doubleday, such as notes by
Robinson (of the Tribune), indicating that Eisenhower was
looking for a publisher (as opposed to Doubleday looking for
an author), as well as evidence that other publishers were
offering to buy Eisenhower’s manuscript. The record also
contains evidence in the form of correspondence with Dick
Simon of Simon & Schuster that reveals that Eisenhower had
made initial attempts to write his memoirs over a year before
his meeting with Robinson. The record shows that in 1947,
Eisenhower wrote to his wife in order to convey his papers in
the event of his death, revealing that Eisenhower had long
contemplated that his writings could be lucrative and take
care of his family’s financial needs. It is hardly as clear that
“Eisenhower would not have written the work without the
urging of Doubleday and Tribune,” as the majority appears to
indicate. Majority opinion at 15384.
The majority simply defers to the district court’s interpreta-
tion of the facts. But the district court selectively relied on
after-the-fact recollections and the testimony of a witness who
was not even employed at Doubleday during the negotiations
TWENTIETH CENTURY FOX v. DASTAR CORP. 15395
with Eisenhower. In my opinion, this reliance resulted in a
lopsided view of the facts that is overly influenced by the way
the parties viewed the events many years down the road, once
the significance of the events was clear in the parties’ minds.
I cannot arrive at the majority’s conclusion about the parties’
intentions without disregarding significant evidence in the
record, and I have no reason to assume that the evidence that
has been disregarded is any less reliable than the evidence that
the district court relied upon.
The majority concludes that neither the contract for the sale
of Crusade in Europe nor the tax treatment of the income that
Eisenhower received rebuts the presumption that the parties
intended to create a work for hire. Majority Opinion at 15384-
87. Here, again I must part ways with my colleagues. I cannot
read the contract for the manuscript’s sale without concluding
that it clearly provided for the sale of publication rights, an
action that is completely at odds with the idea that the book
had been created “for hire.”
The contract states: “I hereby sell, assign, transfer and set
over unto Doubleday . . . for its own use, absolutely and for-
ever, the manuscript of my War Memoir entitled CRUSADE
IN EUROPE, and all rights of every nature pertaining there-
to.” The explicit terms of the contract reveal that Eisenhower
had the right, at the time of the transaction, to sell his copy-
right interest in the work to Doubleday. The contract thus
reflects a transfer of Eisenhower’s common law copyright
interest to Doubleday. See, e.g., Urantia Found’n v.
Maaherra, 114 F.3d 955, 960 (9th Cir. 1997) (“Under the
1909 Copyright Act, an unpublished work was protected by
common law copyright from the moment it was created . . .”)
(citation omitted). However, if Crusade in Europe were a
work for hire, the copyright would have vested in Doubleday
from the moment it was created. See, e.g., Dolman, 157 F.3d
at 713. In Dolman, we considered the copyright to songs cre-
ated by Roy Shield, who was an employee of Victor Talking
Machine. 157 F.3d at 710. The composer assigned his copy-
15396 TWENTIETH CENTURY FOX v. DASTAR CORP.
right in the songs to Southern Music Publishing Company, the
publishing arm of Victor. Id. We concluded that the assign-
ment of the copyright rebutted the presumption that the
employee’s work was for hire. “Had the works been intended
to be works for hire for Victor, there would have been no rea-
son for Southern to accept an invalid assignment of rights
from Shield, knowing that its parent company already owned
those rights.” Id. at 713. This sentiment is equally relevant
here — why would Eisenhower transfer his copyright to Dou-
bleday if it was already in Doubleday’s name by virtue of its
status as being created at Doubleday’s “instance and expense”?1
If the oral agreement of the parties was intended to transfer
ownership of the manuscript to the Doubleday prior to its
completion, the signed agreement would have no purpose.
Eisenhower would have had nothing to convey to Doubleday:
he would have conveyed the rights to the manuscript by virtue
of its creation as a “work for hire.” I conclude that the con-
tract on its face rebuts the presumption that the parties
intended the work to be for hire.
Similarly, I am not persuaded by the majority’s analysis of
the tax treatment of the proceeds of the sale of Crusade in
Europe. In my opinion, the tax treatment that Eisenhower
obtained rebuts the presumption that he was “hired” to write
a book. Although tax law does not dictate the copyright status
of a work, it reveals how the parties themselves viewed their
employment arrangement. In this case, the income was treated
as if it were derived from the sale of an asset, not from per-
sonal income. Clearly, Eisenhower was not paid by Double-
day for his writing services; he was paid by Doubleday for the
end product.
1
The majority attempts to distinguish Dolman by pointing out that in
that case, the assignee of the copyrights named the composer as the author
in copyright registrations. Majority opinion at 15387, n.4. I fail to see how
that fact is relevant, and note that in this case, Doubleday specified that
Eisenhower was the author of the work on its initial copyright registration.
Doubleday did not indicate that the work was “for hire” until it filed a
copyright renewal in 1975.
TWENTIETH CENTURY FOX v. DASTAR CORP. 15397
I cannot look at the record in this case without concluding
that these facts are far from “the prototypical situation where
the motivating factor for producing the work was the employ-
er’s inducement.” Majority Op. at 15381. In my mind, it is
clear that Eisenhower wanted to write Crusade in Europe, and
would have done so under the auspices of the publisher who
arranged things most favorably to him. By calling Crusade in
Europe a “work for hire,” the majority establishes a standard
by which nearly any work produced with the financial and
logistical support of a publisher could be considered to have
been produced “for hire.” I do not think that such an expan-
sive conception of the term was intended by the drafters of the
1909 Copyright Act. Therefore, I must dissent.