Law Students

INTELLECTUAL PROPERTY SELF-REALIZATION v. ANANDA CHURCH (3/23/00 - No. 9717407)

U.S. 9th Circuit Court of Appeals

SELF REALIZATION v ANANDA CHURCH 9717407-FindLaw7

SELF-REALIZATION FELLOWSHIP
CHURCH, a California corporation,
Plaintiff-Appellant,

v.
No. 97-17407

ANANDA CHURCH OF SELF-
D.C. No.
REALIZATION, a California
CV-90-00846-EJG
corporation; FELLOWSHIP OF INNER
OPINION
COMMUNION, a California
corporation; JAMES WALTERS, aka
Sri Kriyananda,
Defendants-Appellees.

Appeal from the United States District Court
for the Eastern District of California
Edward J. Garcia, District Judge, Presiding

Argued and Submitted
February 15, 2000--San Francisco, California

Filed March 23, 2000

Before: Mary M. Schroeder, John T. Noonan, and
A. Wallace Tashima, Circuit Judges.

Opinion by Judge Schroeder

_________________________________________________________________

COUNSEL

Louis P. Petrich, Leopold, Petrich & Smith, Los Angeles, Cal-
ifornia, for the plaintiff-appellant.

Glenn W. Trost, Coudert Brothers, Los Angeles, California,
for the defendants-appellees.

_________________________________________________________________

OPINION

SCHROEDER, Circuit Judge:

This litigation war between two rival churches concerns
copyrights to the writings, photographs, and sound recordings
of Swami Paramahansa Yogananda. The plaintiff, Self-
Realization Fellowship Church ("SRF"), claims that it holds
valid copyrights to all of the works. The defendants and
admitted copiers are a breakaway church and its leader,
Ananda Church of Self-Realization and James Walters
("Ananda"). They contend that none of the copyrights are
valid.

The district court granted summary judgment in favor of
Ananda. On appeal, SRF raises various issues. The most
important are whether the works of a religious leader, living
under a vow of poverty in the church he founded, can be con-
sidered "works for hire" or the works of a "corporate body"
within the meaning of the 1909 Copyright Act and, in the
alternative, whether SRF has adduced evidence from which a
jury could conclude that a valid assignment of common law
copyrights occurred.

With regard to Yogananda's writings and spoken lectures,
we hold that the works are not works for hire or the works of
a corporate body, so that the common law copyrights did not
vest in the church as a matter of law. We hold that there are
triable issues with regard to the purported assignments and
remand for further proceedings on those issues. We also hold
that there is a triable issue regarding whether some of the pho-
tographs involved in this appeal were works for hire.

BACKGROUND

Yogananda, a monk of the Swami order, founded SRF in
1935 when he arrived in California from India. Until his death
in 1952, Yogananda lived in quarters that SRF provided and
received from SRF a small monthly stipend. Yogananda
served as SRF's president and as a member of its board of
directors. While living at SRF, Yogananda wrote books and
articles and gave religious lectures. The lectures were
recorded and later published by SRF. SRF arranged for the
publication of Yogananda's books, and published the articles
in its own magazine. SRF also published in its magazine vari-
ous photographs of Yogananda and other SRF leaders.

In the district court, both parties introduced evidence of
Yogananda's relationship with SRF and his intent regarding
the ownership of his works and the copyrights to those works.
For example, Yogananda observed a vow of poverty, which
led him to assign all of his possessions to SRF in a written
assignment dated May 28, 1935. The assignment transferred
to SRF Yogananda's "books, lessons, monthly araeceptum,
furnitures, personal properties including shawls, blankets,
portable temple of silence, my handwritings, typewriters,
mimeograph machine, cooking utensils and all machinery,
icebox, files, victrola, radio, and/or any other personal prop-
erty which I may own and which is not described or enumer-
ated herein." In 1939, Yogananda signed a standard SRF form
agreeing to renounce any claim for compensation in exchange
for "the privilege of being accepted as a worker" by SRF.
SRF obtained copyrights on most, but not all, of Yogananda's
published books in its own name, describing several of them
as "works for hire." Of particular relevance to Ananda's posi-
tion is the fact that in 1951 Yogananda entered into an agree-
ment with an individual hired to translate six of his works into
Spanish for distribution in Mexico. The agreement provided
that the "Mexican copyrights" to the English and Spanish ver-
sions of those six works would be obtained in Yogananda's
name rather than the name of the translator.

Ten years after Yogananda's death, James Walters, also
known as Sri Kriyananda, left SRF and formed Ananda, a
rival church dedicated to the teachings of Yogananda. Ananda
admits to copying the books, articles, recordings, and photo-
graphs involved in this appeal. SRF filed an infringement
action in 1990. We decided an earlier appeal regarding trade-
mark claims in 1995. See Self-Realization Church v. Ananda
Church of Self-Realization, 59 F.3d 902 (9th Cir. 1995). The
district court entered a final judgment disposing of all copy-
right claims in 1997, and this appeal followed.

DISCUSSION

[1] Because all of the copied works were created before
1978, the Copyright Act of 1909 governs the validity of the
initial copyrights. See Roth v. Pritikin, 710 F.2d 934, 938 (2d
Cir. 1983). These initial statutory copyrights ran for a 28 year
term. See 17 U.S.C. S 24 (repealed). Under the 1909 Act, the
holder of the common law copyright at the time of publica-
tion, either the author or the author's assignee, was the party
entitled to receive statutory protection. See Urantia Found. v.
Maaherra, 114 F.3d 955, 960 (9th Cir. 1997). Assignments
did not have to be in writing to be enforceable. See Magnuson
v. Video Yesteryear, 85 F.3d 1424, 1428 (9th Cir. 1996).
Authors could assign their common law copyrights "without
the necessity of observing any formalities." Urantia Found.,
114 F.3d at 960.

[2] Blanket copyrights on magazines were sufficient to
"protect all the copyrightable components of the work copy-
righted" and gave to the copyright proprietor "all the rights
which he would have if each part were individually copy-
righted under" the Act. 17 U.S.C. S 3 (repealed). The weight
of the case law has concluded that this means that a blanket
copyright gives a magazine publisher rights in an individual
contribution only if the publisher owns the common law
copyright as the author of the contribution, or as the author's
assignee. See Mail & Express Co. v. Life Pub. Co., 192 F.
899, 900 (2d Cir. 1912); The Williams & Wilkins Co. v.
United States, 172 U.S.P.Q. 670, 675 (Ct. Cl. 1972); Kinelow
Publ'g Co. v. Photography in Bus., Inc., 270 F. Supp. 851,
853 (S. D. N.Y. 1967); Ilyin v. Avon Publications, Inc., 144
F. Supp. 368 (S. D. N.Y. 1956); Kaplan v. Fox Film Corp.,
19 F. Supp. 780 (S. D. N.Y. 1937).

[3] The 1909 Act did not extend any protection to sound
recordings, however. With respect to Yogananda's recorded
lectures, SRF claims a common law copyright enforceable
under California law. See Klekas v. EMI Films, Inc., 150 Cal.
App. 3d 1102, 1108-09 (Ct. App. 1984) (explaining that
before passage of the 1976 Act, works not protected by the
federal copyright statute were protected by state law). Cal.
Civ. Code S 980 extends common law copyright protection to
sound recordings, and Cal. Civ. Code S 982 permits authors
to transfer their rights in such works.

The copying at issue in this appeal took place at various
times after 1962. Some works were copied during the initial
copyright term, and some during the renewal term. The prin-
cipal issues with respect to the works authored by Yogananda
are, first, whether the works were "works for hire" or works
produced by a "corporate body" within the meaning of the
1909 Act, and if not, whether Yogananda validly assigned his
common law copyrights to SRF. The district court held that
the works were neither works for hire nor produced by a cor-
porate body, and we agree. The district court further held that
there was no valid common law copyright assignment to SRF.
We disagree, and hold that SRF has presented triable issues
regarding assignment.

Assuming that SRF can establish the validity of its initial
copyright in each work, we must also decide a separate set of
issues with respect to copying that took place during the
works' renewal terms. This is because under the 1909 Act,
renewal rights revert in most circumstances to the author's
next of kin where, as here, the author was not living at the
time the initial copyright expired. We hold that SRF was not
entitled to renew its copyrights in books authored by Yoga-
nanda. We hold, however, that SRF was entitled to renew any
valid initial copyrights in Yogananda's articles.

I. Works For Hire

[4] SRF contends that it holds valid initial and renewal
copyrights in Yogananda's writings through the "work for
hire" doctrine. See 17 U.S.C. S 26 (repealed) (stating that the
word `author' shall include an employer in the case of works
made for hire). This circuit has summarized the work for hire
doctrine as follows: "[W]hen one person engages another,
whether as employee or as an independent contractor, to pro-
duce a work of an artistic nature, . . . 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). To
survive summary judgment on a claim of work for hire, SRF
must "present some credible evidence that [Yogananda's]
work was done at the `instance and expense' " of SRF. Dol-
man v. Agee, 157 F.3d 708, 712 (9th Cir. 1998).

[5] The Second Circuit has described the "instance and
expense" test under the 1909 Act as an inquiry into whether
"the motivating factor in producing the work was the
employer who induced the creation." Playboy Enter., Inc. v.
Dumas, 53 F.3d 549, 554 (2d Cir. 1995). SRF has not intro-
duced evidence that would demonstrate that it was at SRF's
"instance" that Yogananda decided to write, teach, and lec-
ture. Works motivated by Yogananda's own desire for self-
expression or religious instruction of the public are not
"works for hire." Furthermore, Nimmer explains that through-
out much of the life of the 1909 Act, courts applied the work
for hire doctrine only to traditional, hierarchical relationships
in which the employee created the work as part of "the regular
course of business" of the employer. Melville B. Nimmer and
David Nimmer, Nimmer on Copyright S 5.03[B][1][a][i]
(1999). In the last decade that the Act was effective, courts
expanded the concept to include less traditional relationships,
as long as the hiring party had "the right to control or super-
vise the artist's work." Id. We have described the rationale for
the doctrine as a presumption that "the parties expected the
employer to own the copyright and that the artist set his price
accordingly." May v. Morganelli-Heumann & Assocs., 618
F.2d 1363, 1368 (9th Cir. 1980). SRF's relationship with
Yogananda was not the type of traditional relationship in
which such a presumption would necessarily hold. Moreover,
there was no evidence of supervision or control of Yoganan-
da's work by SRF. Yogananda's works were thus not "works
for hire."
II. Corporate Body

[6] The 1909 Act also refers in its renewal provision, 17
U.S.C. S 24 (repealed), to works copyrighted by a "corporate
body." We conclude that Yogananda did not create his works
as part of a corporate body. Like many other courts, we have
not had occasion to interpret this part of section 24 of the
1909 Act, but the Second Circuit has noted that "what author-
itative commentary exists concerning the `corporate body'
provision of S 24 indicates that it has no application to works
. . . which are authored and produced by one identifiable per-
son either as an employee for hire or as an independent
author." Epoch Producing Corp. v. Killiam Shows, Inc., 522
F.2d 737, 748 (2d Cir. 1975) (citing Barbara Ringer, Renewal
of Copyright, in Report of the Register of Copyrights on the
Revision of the U.S. Copyright Law, Study No. 31, at 136-37
(1960)).

[7] The little case law that there is regarding the "corporate
body" exception thus indicates that it has no application to
cases in which a single, identifiable individual rather than a
faceless corporate mass has created the work in question. See
Donaldson Publ'g Co. v. Bregman, Vocco & Conn, Inc., 375
F.2d 639, 643 (2d Cir. 1967) (stating that the meaning of the
corporate body clause in section 24 "is not entirely plain" but
that "its scope is quite limited"). SRF offers no more reason-
able interpretation of the phrase. We therefore conclude that
the district court correctly held that SRF did not hold copy-
rights to Yogananda's works through the corporate body doc-
trine.

III. Assignment

[8] Even if Yogananda did not create his works directly for
SRF as works for hire or as part of a corporate body, SRF's
initial copyrights are still valid if before publication SRF
received from Yogananda an informal assignment of his com-
mon law copyrights. See Urantia Found., 114 F.3d at 960.

Such assignments did not have to be in writing to be enforce-
able. See Magnuson, 85 F.3d at 1428 (stating that under the
1909 Act, common law copyrights could be transferred orally
or by implication from the conduct of the parties).

SRF points to several factual matters established in the
record: the 1935 Assignment from Yogananda to SRF of all
his possessions; Yogananda's vow of poverty; Yogananda's
general acquiescence in SRF's decision to copyright many of
his works in its name; and SRF's physical possession of the
manuscripts. These, SRF contends, constitute conclusive evi-
dence that Yogananda informally assigned to SRF his com-
mon law copyrights in his books and periodical articles.
Furthermore, SRF obtained initial statutory copyrights in its
own name in the books written by Yogananda at issue in this
appeal, and these copyrights are entitled to a presumption of
validity under the 1909 Act because of the registration in
SRF's name. See 17 U.S.C. S 209 (repealed) (stating that a
certificate of copyright registration "shall be admitted in any
court as prima facie evidence of the facts stated therein").

Ananda, for its part, submitted evidence showing that
Yogananda obtained copyrights on other works, not at issue
in this appeal, in his own name. Ananda also offered an inter-
pretation of Yogananda's vow of poverty indicating the vow
was less than a complete renunciation of property rights.
Ananda characterizes Yogananda's vow as "simple," rather
than "solemn," arguing that Yogananda intended to retain
some personal property and only wished to disavow profits.
Ananda also points to the evidence that Yogananda sought to
obtain Mexican copyrights in his own name, thus suggesting
that Yogananda never intended to transfer any of his common
law U.S. copyrights to SRF.

[9] The district court characterized as "critical" the fact that
some of SRF's copyright certificates describe SRF as the
owner of a work for hire rather than an assignee. This circuit
has held, however, that a party's own descriptions of the
nature of its copyright at the time of copyright registration or
renewal is not conclusive. See Urantia Found., 114 F.3d at
963. Cf. Lin-Brook, 352 F.2d at 300 (holding that work could
be a "work for hire" as a matter of law despite employer's
decision to receive it through assignment from employee).
Such descriptions may be self serving, and the copyright laws
are not to be applied mechanically, facilitating premature
injection into the public domain, but rather in a "fair and non-
formalistic" manner. See Urantia Found., 114 F.3d at 963.

[10] The district court ultimately agreed with Ananda,
accepting its interpretation of the vow of poverty and placing
weight on the fact that not all of the works Yogananda pro-
duced during his lifetime were copyrighted in SRF's name.
The existence of a transfer or assignment of common law
copyright, however, is a factual question of the author's
intent. See id. at 960. The 1935 assignment is not dispositive
as to Yogananda's writings after 1935, but it is relevant to this
factual issue. While a jury may conclude that on balance the
evidence demonstrates that Yogananda had no intent to trans-
fer to SRF his common law copyrights, at the summary judg-
ment stage, a district court is entitled neither to assess the
weight of the conflicting evidence nor to make credibility
determinations. See Anderson v. Liberty Lobby, Inc., 477 U.S.
242, 250 (1986). SRF has introduced sufficient evidence to
create a triable issue as to whether it held valid initial copy-
rights to Yogananda's writings through an informal assign-
ment of Yogananda's common law copyrights. We therefore
reverse the district court's grant of summary judgment with
regard to any works copied in their initial copyright terms,
and remand for further proceedings.

IV. Right of Renewal

[11] With regard to writings copied during their renewal
terms, SRF must establish its initial copyright and, in addi-
tion, establish that it was entitled to renew any validly
obtained initial copyrights. The 1909 Act vested renewal
rights in the author, if still living at the time the initial copy-
right term expired, or the author's next of kin or executor if
the author was deceased. See 17 U.S.C. S 24 (repealed). The
1909 Act contained only four exceptions to this exclusive
right of reversion. A copyright owner who was not the origi-
nal author could renew copyrights in (1) posthumous works,
(2) periodical, encyclopedic, and composite works, (3) works
copyrighted by a corporate body (other than as an assignee or
licensee of the original author), and (4) works made for hire.
See id.

[12] The word "posthumous," as it is used in copyright law
and embodied in the first exception, is a term of art that refers
to works unpublished at the time of the author's death in
which the author at all times maintained the common law
copyright. See Bartok v. Boosey & Hawkes, Inc., 523 F.2d
941, 944 (2d Cir. 1975). SRF does not claim that this excep-
tion applies. The third and fourth exceptions do not apply
because, as we have already held, the work for hire and cor-
porate body doctrines do not apply to Yogananda's writings
as a matter of law. The only possible exception available to
SRF at this point is the exception for "periodical, encyclope-
dic, and composite works."

[13] With regard to books copied during their renewal
terms, the district court's grant of summary judgment for
Ananda must be affirmed. The books are not periodical, com-
posite or encyclopedic works, nor does SRF contend that they
are.

[14] The articles that appeared in SRF's magazine, how-
ever, were published in a periodical. SRF itself held the copy-
right to each issue of the magazine. The 1909 Act allowed
renewal by a copyright holder, even if not the original author
or the author's next of kin, of copyrights to "periodical, ency-
clopedic, and collective works." 17 U.S.C. S 24 (repealed). A
blanket copyright on a periodical protects its constituent parts
as long as the publisher received the common law copyrights
to those parts prior to publication. See 17 U.S.C. S 3
(repealed); Mail & Express, 192 F. at 900. Thus, if SRF suc-
ceeds at trial in proving that Yogananda informally trans-
ferred to SRF his common law copyrights in his individual
articles, SRF's blanket copyrights on each issue of its maga-
zine were sufficient to give SRF rights to the articles as well.
SRF would then have been entitled to renew these copyrights
under the exception contained in section 24 for periodical
works.

Until 1940, section 24 also permitted individual authors to
renew copyrights in periodical contributions "when such con-
tribution has been separately registered." In 1940, Congress
deleted the separate registration requirement, permitting indi-
vidual authors to renew copyrights in periodical contributions
even if the only initial copyright on the work existed by virtue
of the publisher's blanket copyright. Ananda argues that our
decision in Abend v. MCA, Inc., 863 F.2d 1465 (9th Cir.
1988), aff'd sub nom Stewart v. Abend, 
495 U.S. 207
 (1990),
holds that as a result of the 1940 amendment, only the author
of a periodical contribution retains a renewal right in the
work. This is incorrect. In Abend, we recognized that the 1940
amendment granted a new renewal right in individual authors
of magazine contributions. See id. at 1470-71. The discussion
in Abend makes clear, however, that this new right did not
extinguish the pre-existing right in the magazine publisher.
Congress was simply concerned about situations in which the
publisher went out of business before the initial copyright
expired, leaving no one to renew the copyright and thus
injecting the work prematurely into the public domain. See id.
at 1471 (citing H.R. Rep. No. 1612, 76th Cong. 3d Sess. 1
(1940)).

Under the unambiguous terms of section 24 of the 1909
Act, SRF was entitled to renew any initial copyrights in peri-
odical articles that it validly obtained through an informal
assignment of Yogananda's common law copyrights. We
therefore reverse the district court's grant of summary judg-
ment with regard to all periodical articles, and remand for
determination of the factual issues regarding assignment.

V. Recordings of Yogananda's Lectures

[15] The 1909 Act does not cover sound recordings. SRF's
rights, if any, in recordings of Yogananda's religious lectures
are therefore governed by the common law of copyright and
secured by California law. Cal. Civ. Code S 980 protects com-
mon law copyrights in sound recordings, and Cal. Civ. Code
S 982 permits copyrights to be transferred. California courts
define "works for hire" in a similar fashion as federal courts
interpreting the provisions of the Copyright Act of 1909. See
Zahler v. Columbia Pictures Corp., 180 Cal. App. 2d 582,
617 (Ct. App. 1960) ("Where an employee creates something
as part of his duties under his employment, the thing created
is the property of his employer unless, of course, by appropri-
ate agreement, the employee retains some right in or with
respect to the product.").

[16] The district court correctly rejected SRF's argument
that Yogananda had created the recorded works as works for
hire or as part of a corporate body, but incorrectly held that
SRF had not presented a triable issue as to whether Yoga-
nanda ever assigned his common law copyrights in the
recordings to SRF. We reverse the district court on the ground
that SRF has introduced evidence sufficient to create a triable
issue regarding assignment. For reasons we have already
explained, the evidence is conflicting on the critical issue of
intent to transfer intellectual property rights.

VI. Photographs

The final category of works in which SRF claims valid
copyrights are not works by Yogananda but rather photo-
graphs of Yogananda and another religious leader, taken by
various third parties and published in SRF's magazine under
its blanket copyright. For four of the photographs, SRF can
identify no known photographer as the author. A fifth was
taken by a man identified only by his name, Arthur Say, while
the remaining photographs were taken by SRF employees
Clifford Frederick and Durga Mata. The district court rejected
SRF's claims that the photographs were taken as works for
hire or by a corporate body, and held that SRF had not intro-
duced a triable issue regarding assignment.

[17] To succeed in a claim that the photographs were
"works for hire," SRF must introduce evidence that the photo-
graphs were taken by an SRF employee or independent con-
tractor at SRF's "instance or expense." Lin-Brook, 352 F.2d
at 300. Likewise, in order to reach a jury on the issue of
assignment, SRF must introduce evidence regarding the
author's intent. Urantia Found., 114 F.3d at 960. For the four
photographs with unknown authors, SRF cannot satisfy either
of these requirements; the district court's grant of summary
judgment must be affirmed. Similarly, SRF offered no evi-
dence that Arthur Say was an SRF employee or independent
contractor or that he intended to transfer his common law
copyrights to SRF. We therefore also affirm the district
court's grant of summary judgment with regard to the Arthur
Say photograph.

The district court's grant of summary judgment with regard
to the remaining photographs, all taken by SRF employees
Clifford Frederick and Durga Mata, was principally based on
the court's rejection of the declaration of Ananda Mata, SRF's
Secretary and Treasurer. The district court characterized
Ananda Mata's declaration testimony as "insufficient" and
"uncertain," and commented on the possible inaccuracy of
Ananda Mata's memory.

We conclude that the district court discounted the declara-
tions by making a determination of credibility. This is some-
thing the court should not undertake at the summary judgment
stage. Liberty Lobby, 
477 U.S. at 250
. Ananda Mata's decla-
rations set forth facts based on personal knowledge that give
rise to a triable issue regarding whether the Frederick and
Durga Mata photographs were created for SRF as works for
hire. Ananda Mata stated in her first declaration that Frederick
and Durga Mata were SRF employees and that photographing
Yogananda constituted part of their employment. Personal
knowledge can be inferred from an affiant's position. See
Sheet Metal Workers' Int'l Ass'n Local Union No. 359 v.
Madison Ind., Inc., 84 F.3d 1186, 1193 (9th Cir. 1996) (gen-
eral manager's personal knowledge of hiring events could be
presumed); Barthelemy v. Air Lines Pilots Ass'n, 897 F.2d
999, 1018 (9th Cir. 1990) (CEO's personal knowledge of var-
ious corporate activities could be presumed). As a corporate
officer of SRF, Ananda Mata could be expected to know the
identity of SRF employees and their tasks. Ananda Mata fur-
ther stated in her declarations that the photographs were taken
at her own instruction using equipment belonging to SRF.
This constitutes personal knowledge of facts demonstrating
that the photographs were taken at SRF's instance and
expense.

[18] We therefore hold that SRF has presented a triable
issue as to whether the photographs taken by Frederick and
Durga Mata were taken for SRF as works for hire. We reverse
the district court's grant of summary judgment as to these
works, and remand for further proceedings.

CONCLUSION

We affirm the district court's grant of summary judgment
for Ananda with regard to books copied during their renewal
terms, the photographs by unknown authors, and the photo-
graph by Arthur Say. We reverse and remand for further pro-
ceedings the claims of copyright infringement pertaining to
the books copied during their initial terms, all periodical arti-
cles, the sound recordings, and the photographs by Clifford
Frederick and Durga Mata.

AFFIRMED IN PART, REVERSED IN PART, AND
REMANDED. Each party to bear its own costs.

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