USCA1 Opinion

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
amended as follows:

this Court

issued on January

On page 4, footnote 1, line 1:

delete the
"Nimmer on Copyright" and the " " sign.
___________________
On

page 5, line 3:

delete the

29, 1993,

is

comma between

comma between "Nimmer" and

______

the " " sign.

On page 9,
the " " sign.

line 5:

delete

the comma between "Nimmer"

______

and

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
_______________
____________________
appellant.
Gordon P. Katz with whom Kim E. Perry and Jay M. Fialkov were
______________
____________
______________
brief for appellee.
____________________
____________________
* of the District of Maine, sitting by designation.

BOUDIN, Circuit Judge.

_____________
judgment

determining

unpublished

tape

the

This is an appeal from

copyright

recordings

of

the

ownership
musical

of

a final
certain

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

music aficionado and record collector with a special interest

in
a

blues and country music.

bus driver

nightclub

where

immediately

he

the

taken

friendship
members,

when

In 1975, Forward was working as

first
Band

with

was

the

and

Thorogood

at

performing.

Band's

with Thorogood.
a drummer

met

act

Thorogood

a guitar

and

Boston

Forward

was

struck

up a

and his

player, had

fellow band
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

Rounder Records to
Rounder

Records

specializing

sign the
is

Band to

a small,

in blues

and

to persuade his

friends at

a recording

Boston-based

folk music.

record
As part

contract.
company
of

this

effort, Forward arranged and

paid for two recording sessions

for

purpose of the

the Band in

create

a "demo"

interest.

At

1976.
tape

The

that would

sessions was to

capture Rounder

Records'

Forward's invitation, one of the principals of

-2-2-

Rounder Records attended the Band's second recording session.

Other

than

Forward's

requesting

contribution

specific
to

the

songs

to

sessions

be

was

recorded,

limited

to

arranging and paying for them.

Rounder Records was impressed by
after the second session,
contract.
for

his

it arranged to sign the Band

to a

The Band agreed that Forward could keep the tapes

own

enjoyment,

possession ever since.

released

under

singled

out

the
for

acknowledgements.
have

what it heard; the day

released a

and

they

have

remained

In 1977, the Band's first

Rounder

Records label.

"special
Since then,

number of

thanks"

the

Thorogood and

his

album was

Forward

in

records and

in

was

album's

the Destroyers

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

harm its

reputation;
"relatively

they

were,

primitive

the
quality"

the tapes would

district
compared

court
to

published work.

On

July 5, 1988, Forward filed

district court,

seeking a declaratory judgment

found,
the

of

Band's

suit in the
that he held

the

common law

copyright

copyright to

ownership

is

the tapes.

governed

by

Determination
the

common

law

of
of

copyright because the tapes are unpublished and were recorded

-3-3-

in 1976, prior to the January 1, 1978, effective

Copyright

Act of 1976,

17 U.S.C.

date of the

101 et seq.1
______

responded with a counterclaim for declaratory and

The Band
injunctive

relief.
In
theories

the district
in support

After a five-day

court,
of

Forward advanced

his claim

bench trial, the

a number

to copyright

of

ownership.

district court filed

its

findings of fact and conclusions of law,

ruling that Forward

did

of the

not

advanced.
1991).

hold the

copyright under

Forward v.
_______
The court

permanently

theories he

Thorogood, 758 F. Supp. 782

_________

(D. Mass.

entered judgment for

the Band, declaring

Band members to be

the copyright owners

Thorogood and other

and

any

enjoining

exploiting the tapes.

Forward

from

Forward now appeals.

commercially

On this appeal, Forward's first theory in support of his

claim of copyright

ownership is based

possession of the tapes.

a

copyrightable

copyright.
mandated

work

According to
carries

Alternatively,
a

finding

on his ownership

that

he
the

with

and

Forward, ownership of
it

argues

ownership
that

copyright

the
was

of

the

evidence
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).
-4-4-

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
______

courts, in applying
number

of cases

manuscript or
3

Nimmer
______

the common

infer

and

at

subject

exclusions, id., is the

__
The difficulty
this physical

from

an

the band nor

to various

did in
sale

This doctrine,
judicial

often

and statutory

that even under

transfer merely created a

the doctrine

presumption and the

Id.
__

case, the district court

found that "[n]either

any of its members ever

conveyed, or agreed to

in the

tapes

Rather the Band allowed Forward to keep

tapes solely for his personal enjoyment.

of this

to Forward."

central finding is

Id.
__

Forward's

premised on

artificial attempt to claim "constructive possession"

tapes

of

source of Forward's principal claim.

for Forward is

758 F. Supp. at 784.

disregard

The

transfer the copyright.

10-76.1.

convey, their copyright interest

the

2-149.

unconditional

ultimate question was one of intent.

In this

at

law of copyright,

painting an intent to
10.09[B],

criticized

2.10[A](2)(a),

a highly
of the

from the outset and then to argue that any reservation

by the Band at the end of the sessions was an invalid attempt

-5-5-

to

reconvey or qualify his

the Band never

copyright.

The

reality is that

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

mistaken, pointing
made
A

the

in particular

option"

on

that

the tapes,

constitutes

an

copyright.

The Band

and

$500

was

for an

"advance

that

the check

Forward argues
that

he owned

the

before Forward

demo tape made by the

a record company.

Band had
The Band

another such misadventure, it sought

option on the physical

Forward contests

the check

third party to

is

on behalf of the Band.

counters that, shortly

claims that, to prevent

an

1979 check for

"unambiguous admission"

was given the check, another

sold by a

court's finding

to a

out to him from Rounder Records

notation indicates

been

district

tapes held by

this explanation, the

Forward.

Although

district court heard

the evidence, chose reasonably between conflicting inferences

as to the
matter.

import of the

check, and that is

the end of

the

See Anderson v. City of Bessemer City, 470 U.S. 564,

___ ________

_____________________

573-74 (1985); Fed. R. Civ. P. 52(a).

Forward's
the

"works

second theory of copyright ownership involves

for hire"

judicially developed

doctrine.

Under this

notion later codified

Act of 1909, 17 U.S.C.

doctrine,

in the Copyright

1 et seq., an employer is deemed the

______

-6-6-

"author"

and

employee

acting within

initially

copyright

confined

relationship, the
commissioned

to

holder

of

the scope
the

doctrine

a work

of employment.

traditional
has

works created by

created

been

by

an

Although

employer-employee

expanded

to

include

independent contractors, with

courts treating the contractor as an employee and

creating a

presumption of copyright ownership in the commissioning party

at

whose "instance

e.g.,
___
1978);

Murray v.
______

and expense"

Gelderman, 566
_________

the work

was done.

F.2d. 1307, 1310

Brattleboro Publishing Co.

____________________________

v.

See,
____

(5th Cir.

Winmill Publishing
___________________

Corp., 369
_____

F.2d

maintains

that

expense,"

are

565,
the

567-68
tapes,

commissioned

(2d

Cir.

created at
works

1966).2
his

to which

Forward

"instance

and

he

the

holds

copyright.
The district court rejected this claim, finding that the
evidence did not support
Forward booked
employed

nor

and

it.

paid for

commissioned

The court said

the
the

studio time,
band

compensate or agree to compensate them.

While

the lack

of compensation

that, although

may

members

he
nor

neither
did

he

758 F. Supp. at 784.

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.
-7-7-

(donated commissioned

work), the

evidence as a

supports the trial judge's conclusion.

the tapes were prepared
Rather, the purpose

this effort,

Nothing suggests that

for the use and benefit

was to

recording company.

whole amply

provide demo tapes

of Forward.
to entice

Forward was a fan and friend who fostered

not the

Archbishop of

Saltzburg commissioning

works by Mozart.
Finally, Forward argues that he
of

is at least a

co-owner

the copyright as a "joint author" of the tape recordings.

The doctrine

of joint authorship, recognized

is incorporated in
U.S.C.

the current

201(a).

with Forward's

In

at common law,

Copyright Act of

appraising this claim,

1976.

17

our concern is

musical or artistic contribution

rather than

his encouragement to the Band or his logistical support.

The district
or

artistic

Forward

court found that "Forward

contribution"

did not

serve as

direct the manner

in which

758 F. Supp. at 784.

request that
played

always played them."

the

tapes, explaining

the engineer

at the

the songs were

The trial judge noted

certain

those songs

to

songs be
in

played

precisely the
Id.
__

made no musical

sessions or

played or

sung.

that Forward did

but "the
same

that

band

manner that

The district court's

then
it

concise and

unqualified findings are fully supported by the evidence

Forward

has only one legal prop

and it is a weak one.

for his contrary claim

In the House Report on the

Copyright

-8-8-

Act of 1976,
sound

the committee

observed that

recordings "will usually,

`authorship' both
producer

and

compiling

and

recording."

H.

though not

[by the

responsible for

capturing

(1976).

. . .

editing

them

Rep. No.

processing
to

make

in

always, involve

artist and by]

setting up the

electronically

the copyright

the record

recording session,
the

sounds,

the

final

94-1476, 94th Cong.,

and
sound

2d Sess.

56

It is apparent from this passage that the "producer"

envisaged by the committee is one who engages in artistically

supervising
Nimmer
______

and editing

the

2.10[A](2)(b), at

production.

2-150 to 2-151.

See generally
_____________
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

We think that

that Forward's appeal

the appeal comes

very close to

is frivolous.
the line

does not quite step over it and therefore deny the motion.
Affirmed.
________

but

-9-9-