UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT August Term 2002 Argued: January 22, 2003 Decided: August 29, 2003 Docket No. 02-7312

- - - - - - - - - - - - - - - - - - - - - - - - THE ESTATE OF BURNE HOGARTH, BURNE HOGARTH DYNAMIC MEDIA WORLDWIDE LLC, MICHAEL HOGARTH, as the child of deceased author Burne Hogarth, RICHARD HOGARTH, as the child of the deceased author Burne Hogarth and ROSS HOGARTH, as the child of the deceased author Burne Hogarth,

Plaintiffs-Appellants,

v. EDGAR RICE BURROUGHS, INC.,

Defendant-Appellee.

- - - - - - - - - - - - - - - - - - - - - - - - Before: NEWMAN, KATZMANN, and RAGGI, Circuit Judges . Appeal from the March 21, 2002, judg ment of t he United States District Court for the Southern District of New York (Denise L. Cote, District Judge), rejecting claims of authorship of illustrator of two pictorial versions of Tarzan books and ruling that both books were works for hire, and also rejecting contract claims. Affirmed. Peter Herbert, Lankler Siffert & Wohl LLP, New York, N.Y. (David B. Smallman, Steinhart & Falconer LLP, New York, N.Y ., o n the brief), for PlaintiffsAppellants.1 Tarzan's prior appearances in this Court include Keller v. Lee ,

152 F.3d 918 (2d Cir. 1998) (table), Burroughs v. Metro-Goldwyn-Mayer, I nc. , 683 F.2d 610 (2d Cir. 1982), and Burroughs v. Metro-Gold wyn Mayer, Inc. , 636 F.2d 1200 (2d Cir. 1980) (table). -2- Roger L. Zissu, New York, N.Y. (Evan C. Gourvitz, Fross Zelnic k Lehr man & Zissu, P.C., New York, N.Y., on the brief), for Defendant-Appellee.

JON O. NEWMAN, Circuit Judge . Once again, Tarzan presents this Co urt with copyright issues. 1 The issues, arising under the 1909 Copyright Act, Pub. L. No. 60-349; 35 Stat. 1075 (1909), codified at 17 U.S.C. § 24, et seq. (1976) ("1909 Act"), concern the work-for-hire doctrine as applied to an independent contractor, the significance of incorrect information in applications for registration filed with the Register of Copyrights, and l aches. The appeal also presents contract issues. The Plaintiffs-Appellants-- the Estate of Burne Hogarth, Burne Hogarth Dynamic Media Worldwide LLC, andthree of Hogarth's children (collectively "Hogarths")--appeal from the March 21, 2002, judgment of the District Court for the S o uthern District of New York (Denise L. Cote, District Judge) entered after a b en ch trial. The District Court ruled in favor of the DefendantAppellee Edgar Rice Burroughs, Inc. ("ERB"), rejecting the Hogarths' claim s fo r a declaratory judgment that Burne Hogarth, a well known illustrator, was the author of two bo oks and as such entitled to copyright in the original and renewal terms. The books are pictorial versions of Tarzan of the Apes and of stories from Jungle Tales of Tar zan (col lectively "the Books"). The Hogarths claimed to have-3-

succeededto Burne Hogarth's rights in the Books upon his death. The Court also rejectedthe Hogarths' claim that they had a contract right to receive a portion of licensing revenues paid to ERB by the Walt Disney Company ("Disney") and a right to have so me of H ogarth's original artwork returned. We affirm. Background The facts are meticulously detailed in Judge Cote's comprehensive opinion. Estate of Burne Hogarth v. Edgar Rice Burroughs, Inc. , No. 00 CIV. 9569 (DLC), 2002 WL 398696 (S.D.N.Y. Mar. 15, 2002) (" Dist. Ct. Op. "). We recount only those facts necessary to understand and resolve the issues on appeal. Applying the "clearly erroneous" s tan dard of review, we accept the District Court's findings of subsidiary facts, except for those findings related to certain aspects of the steps taken in the Office of the Register of Copyrights ("Copyright Office"). As to the se, we have been greatly aided by a response from Maryb et h Peters, Register of Copyrights ("Register"), to inquiries we submitted to the Copyright Office after oral argument of the appeal. See Letter of Ma rybe th Peters, Register of Copyrights, to Roseann MacKechnie, Clerk, U.S. Court of Appeals for the Second Circuit (April 8, 200 3 ) (" Peters Lett er ") . Our account of those steps will supplement and slightly modify the District Court's account, but will not change any of the Court's conclusions of law. Creation of the Books. Edgar Rice Burroughs published Tarzan of the Apes , the first of his 26 Tarzan novels, in 1912. Jungle Tales of Tarzan was published in 1916-17. Both works are now in the public2 In this and all subsequent quotations fromthe District Court's

opinion, we have omitted the emph a ses supplied by Judge Cote in her quotation of the relevant documents. -4- domain in the United States. Burroughs formed ERB in 1923 to manage his literary rights. In 1937, Burne Hogarth ("Hogarth") was hired by UnitedFeatures Syndicate, Inc. to illustrate the syndicated comic strip "Tarzan" and continuedthis work until 1950. "During that time, he developed a highly distinctive and still widely acclaimed style of illu strating Tarzan and his universe." Dist. Ct. Op. at *2. In the 1960s, Hogarth and Robert M. Hodes, then Vice President of ERB, had discussions out of which emerged the idea of a new series of Tarzan books. In July 1970, Hodes wrote to Hogarth, suggesting production of "a quality, high priced edition of an adult version of TARZAN OF THE APES in grap hic form." Id. at *3 (quotation marks omitted). In another letter, Hodes proposed terms for the project that wouldprovide the basis for the eventual agreement betw een ERB and Hogarth. The letter stated:

1. We would commissio n you to produce the work at a cost that wouldbe paid one-half now and one-half out of the first proceeds of the book . . . . That one-half deferred payment is the extent of your speculation, or risk. 2. We would undertake to find a U.S. publisher . . . . All expenses would be borne by us, and this, together with the sum paid to you, would be our risk. Id. at *4. 2 Hogarth responded: "Your proposal sounds like a capita l idea." Id. Later in 1970, ERB identified Watson-Guptill Publications, Inc. (" Watso n-Guptill") as a likely publisher. This firm had previously-5-

publishedHogarth's art instruction books. In propo sing a contract between ERB andWatson-Guptill, Hodes wrote the firm's editor, with a copy to Hogarth:

1. Your contract is directly with [ERB]. We undertake to provide the services of Burne Hogarth to furnish you with artwork and text for your proposed illustrated book of Tarzan of the Apes. . . . 2. You are responsible for designing and producing the book, and, in general, supervising Mr. Hogarth's work. . . . We reserv e th e right to require all parties to produce a book that reasonably and substantially tells the story o f Tarzan of the Apes as Edgar Rice Burroughs told that story in his classic novel. . . . As for the artwork itself, we cannot and do not presume to influence or control the work of Mr. Hogarth. Id. The ERB-Hogarth Contract. In an agreement dated November 16, 1970 ("19 70 Agreement"), signed by Hogarth in 1971, ERB and Hogarth establishedthe term s fo r the creation of the first and subsequent books. It included the following provisions:

[¶1] You [Hogarth] will create a book along the lines we [ERB] have discussed with Watson-Guptill b ased u pon approximately one-half o f Tarz an of the Apes . . . . The creative details will be worked out between you an d our publisher. [¶2] We will have the right to approve the content of the books, but our sole interest in this regard will be to preser ve the Burroughs "flavor." We may give you o u r artistic suggestions from time to time, but you will be the final judge of the artwork as distinguished fromthe story or text. [¶3] For all of your services and for all rights being granted, we will pay you, your estate [and] heirs . . . for the term of the copyright, including renewals: (a) $2,500 on January 1, 1971; (b) $2,500 on the completion of all your work; and (c) 50% of all net monies realized by u s from the exploitation of the book.

. . . [¶5] . . . You will create the subsequent books and we agree not to employ anybody else to create them. . . .-6- . . . [¶7] We agre e tha t the physical possession and ownersh ip o f the original artwork shall be shared on the following basis : We s hall own the originals for the first book, you shall own them for the second b ook, w e for the thirdbook, you for the fou rth book and so on. We have indicatedto you that we desire the physical possession and ownership of the foregoing artwork in order to place it in an Edgar Rice Burroughs Museum. . . . [¶8] The book will be copyrighted in the name of [ERB] andwe shall be the exclusive proprietors thereof, subject always to our obligation to pay you your participation. You hereby grant us wha tever rights we need to obtain the copyright in our name and to extend and renew that copyright wherever and whenever we can. 1970 Agreement; see also Dist. Ct. Op. at *5-*6. In February 1972, ERB made an agreement with Watson-Guptill, granting it worldwide English language hardcover publication rights in the first book and the opt ion to publish subsequent books. ERB warrantedthat it was the "sole author and proprietor" of t h e first book. Id. at *7. The Books. The first book, published in 1972 ("the 1972 book"), is 157 pages in length, of which 122 pages contain panels of color illustrations and text, with one to four panels per page. The text is

a combination of narration and quotations of what the characters shown

on a panel are saying. The title page shows the title as "Tarzan of the Apes" and credits the creators in these words: BY BURNE HOGARTH Original text by Edgar Rice Burroughs adapted by Robert M. Hodes The second book, publishedin 1976 ("the 1976 book"), is 157 pages in length, of which 122 pages c ontains panels of black and white illustrations and text, of a style similar to that of the 1972 book.3 As previously noted, the registrations for the original text

versions of Tarzan of the Apes and Jungle Tales of Tarzan were filed before 1920, and these works are now in the public domain. -7- The title page shows the title as "Jungle Tales of Tarzan" and credits the creators in these words: BY BURNE HOGARTH Original text by Edgar Rice Burroughs adapted by Burne Hogarth and Robert M. Hodes Neither the 1972 nor the 1976 book enjoyed substantial sales. The Co pyri ght Registrations. The application for the original termregistration for the pictorial version of Tarzan of the Apes was filedin 1973 by Watson-Guptill. 3 It identifies as the claimant "Edgar Rice Burroughs, Inc." and as the authors "Edgar Rice Burroughs . . . (deceased)" and "(illustrated) by Burne Hogarth." In 1999, counsel for ERB submitted an application for a supplementary registration, which identifies the sole author as "Edgar Rice Burroughs, Inc.," and states the explanation for the "correction" as "Work was one made for hire." Three applications for renewal term registrations were submitted for Tarzan of the Apes . On December 6, 2000, Danton Burroughs, on behalf of ERB, sub mit ted an application for a renewal registration listing the author of renewable matter as "Edgar Rice Burroughs, Inc." ("first renewal application"). On December 8, 2000, c ounsel for Hogarth's children submitted an application for a renewal registration listing the author of renewable ma tte r as "Burne Hogarth" ("second renewal application"). On June 4, 2001, counsel for ERB submitted an application for a renewal registration listing the author of renewable4 The certificate issued on the basis of this application modified

three entries. Within the blank headed"TITLE OF WORK IN WHICH RENEWAL IS CLAIMED," which had stated "Tarzan of the Apes," was added "*by Edgar Rice Burroughs." Within the blank headed "AUTHOR(S) OF RENEWABLE MATTER," which hadstated "Edgar Rice Burroughs, Inc.," was added "* illustra t edby Burne Hogarth." Within the blank headed "RENEWABLE MATTER," the description was limited to "pic t orial matter*." The certificate explains that items markedby an asterisk are "Amended by C.O. [Copyrigh t Office] from original registration, limiting new matte r to 'pictorial version.'"

5 Although without consequence to our decision, some co n fusion remains concerning the replacement of the inadvertently proce ssed third -8- matter as "Edgar Rice Burroughs, Inc." 4 ("third renewal application"). Counsel for ERB subsequently advised the Copyright Office that, at the time of filing the third renewal application for ERB, he hadb een

un aware of the earlier filing of the first renewal application on behalf of ERB. The first renewal application was received by the Copyright Office

on Decem ber 15, 200 0, and that date would in the normal course have become the effective date. See 17 U.S.C. § 410(d) (effective date of copyright registration is day on which application, deposit, and fee

are received). However, for reasons that the Register of Copyrights cannot explain, the examiner handling the renewal claims processed the thirdrenewal application. See Peters Letter at 12-13. Reviewing its

recor ds as a result of this Court's inquiry, the Copyright Office concludedthat the e xaminer should have processed the first renewal application, rat her tha n the later filed third renewal application. The Copyright Offi ce therefore issued a new certificate of renewal registration with an effective date of December 15, 2000, andcancelled the inadvertently processed third renewal registration. 5renewal application. The Register informs us that the Office issued

th e replacement certificate "using the earlier December 15, 200 0 application submittedby [ERB]." Peter's Letter at 13. However, that application is dated December 6, 2 000, a nd bears no handwritten signature; the replacement cert ifica te, sent to us by the Register, bears the handw ritten s ignature of Danton Burroughs and the date November 30, 2000. In any event, both the unsigned application filed by Danton Burroughs on December 6, 2000, and the signed applicatio n file dby Danton Burroughs on November 30, 2000, list the autho r o f renewable matter as "Edgar Rice Burroughs, Inc." -9- The second renewal application was also received on December 15, 2000, and given a December 15, 2000, eff ect ive date. Thus, the Copyright Office has two renewal registrations for Tarzan of the Apes with an effective date of December 15, 2000, one identifying ERB as the author an d the claimant, and the other identifying Hogarth as the author and Hogarth's children as the claimants. The a pplication for the original term registration for Jungle Tales of Tarzan was filed by Watson-Guptill in 1976. It identifies as the claimant "Edgard [ sic ] Rice Burroughs, Inc." and as the author "Burne Hogarth." In 1979, Marion T. Burroughs, the daughter-in-law of Edgar Rice Burroughs andan officer of ERB, filed an application for

a supplementary registration to make two changes t o the or iginal regis tration. First, the misspelling "Edgard" in the name of the claiman t was c orrected to "Edgar." Second, under the blank for "AMPLIFIED INFORMATION, " the application stated: "Add name of EDGAR RICE BURROUGHS as auth or of o riginal text. Citizenship: USA (deceased)." The author was listed as "Burne Hogarth," as it had been

on the original application. In 1999, counsel for ERB file d a n application for a second supplementary registration to identify "Edgar-10-

Rice Burroughs, Inc." as the author instead of "Burne Hogarth." Under "Explanation of Correction," this second application stated: "Work was one made for hire." No renew al applic ation has yet been filed for Jungle Tales of Tarzan because its renewal term will not begin until January 1, 2005, 28 years after the 1976 publication. The ERB-Disney License. In an agreement dated April 1, 1994, ERB licensed Dis ney to use the Tarzan character and stories in animated movies andtelevi sion programs ("Disney license" or "the license"). Paragraph 1 ( a) of the agreement defined the scope of the license to include the characters, plots, settings, themes, and incidents co ntainedin or suggested by all or any portion o f th e stories . . . written by Edgar Rice Burroughs, schedules of which are attached hereto as Exhibit "A" and Exhibit "B." Dist. Ct. Op. at *14. Exhibits A and B lis t the 25 Tarzan novels written by Burroughs for which U.S. or Berne Conve n tion copyright protection existed in 1994. Id. Neither of the Books at issue in this litigation are included in these exhibits. Id. at *26. In paragraph 14(b)(ix) of the license, ERB warrants (A) That, except as set forth in Exhibits "A" and "B," . . . to the best of [ERB's] knowledge, there are no other stories authorizedby [ERB] or its predecessors in interest in which the TARZAN character appears. If there are an y other Stories in which [ERB] has an interest, such stories shall be deemed Stories hereunder to the extent of [ERB's] rights therein, in any. Id. at *15. Disney released i ts Tarzan movie in 1999. Pursuant to the license, Disney paid ER B $15 m illion, $12 million to buy out ERB's6 How ERB placed its work-for-hire contention before the District

Court is not clear from the pleadings. ERB's answer does not assert, either as an affirmative defense or in a counterclaim, that the Books were works for hire. The answer includes, as an affirmative defense, that the Hogarths' claims to own exclusive rights in the renewal terms are barred "because, without regard to whether Hogarth's contributions thereto were work for hire, the [Books] were created by Burroughs and Hogarth as joint works under the U.S. copyright laws," presumably referring to the definition of "joint works" in the Copyright Act of -11- share of Disney revenues from Tarzan merchandise and $3 million based on box office receipts from the movie. The Pending Litigation. Burne Hogarth diedin 1996. In September 1999, two months after Disney's release of its Tarzan movie, counsel for the Hogarth estate sent a cease-and-desi st lette r to Disney, claimin g tha t the movie infringed Burne Hogarth's copyrights in the Books. Both Disney and ERB rejected the claim. The Hogarths then brought the pending litigation, alleging three claims: (1) that Burne Hogar th was the sole author of the Books and that his heirs are

en titledto the renewal term copyrights in the Books; (2) th at th e Hogart hs are entitled to a share of the proceeds ERB received fr o m Disney; and (3) that ERB breached paragraph 7 of the 1970 Agreement by retain ing possession of the original artwork for the 1972 Book but failing to establish a museum for its display. ERB's answer, denying the Hogarths' claims, cont ai ned no counterclaim, but did include, in the prayer for relief, a request that the Court declare "that [ERB] is owner of all copyrig ht rights, including the renew al copyrigh ts" in the Books. By the time of the trial, the District Court understood ERB to be contending, among other things, that the Books were works for hire. 61976, 17 U.S.C. § 101 ( 2000). That definition, referring to the

"prepar[ation]" of a w ork "by two or more authors," is properly understoodto cover a work of co-authorship. See Childress v. Taylor , 945 F.2d 500, 504 (2d Cir. 1991). At oral argument, however, both sides disclaimed co-authorship. -12- The District Court's Decision. After a bench trial in 2002, Judge Cote rejected all of the Hogarths' claim s. With respect to the copyright claim, she ruled (1) that, although the c opyrigh t registrations constituted prima facie evidence that Burne Hogarth was the author, as stated in the registrations, the evidence established that th e registrations were not reliable, Dist. Ct. Op. at *18; (2) that "[i]n the Second Circ uit 'an independent contractor is an "employee" and a hiring party is an "employer" for p urposes of the [1909 Act] if the work is made at the hiring party's instance and expense,'" id. (citing Playboy Enterprises, Inc. v. Dumas , 53 F.3d 549, 554 (2d Cir. 1995) (emphases deleted); (3) that the Books were created at the "instance and expense" of ERB, id. at *19-*20 ; (4) that the Books are works for hire, id. at *23; and(5) that ERB, as an employer in the case of works made for hire, is the "author" for purposes of the 1909 Act and ent i tled to the copyrights in the original and renewal terms, id. at *18-*24. With respect to the Hogarths' laches defense, Judge Cote r u led that, although the registrations listing Burne Hogarth as the author remained unc orrected for many years, the existence of incorrect registrations alone didnot establish a laches defense and that ERB had promptly acted to assert its copyright cla ims as soon as adversity developedbetween the Hogarths and ERB. Id. at *24-*25. With respect-13-

to the Hogarths' contrac t cl aims, Judge Cote ruled that the Disney license gave Disney only the right to use the character Tarzan and the stories listed in Appendix A and Appendix B of the license, and not any rights with respect to the Books. Id. at *25-*27. The Court also ruled andthat, even i f D isney acquired rights in the Books, the 1970 Agreement did not give Hogarth any right to revenue received by ERB by virtue of the Disney li c ense, id. at *28-*29. Finally, as to the Hogarths' claimconcerning original artwork, Judge Cote ruled that ERB hadnot promised to build a museum to house Hogarth's drawings and had not breached the clause of the 1970 Agreemen t concerning original artwork. Id. at *29. The District Court's judgment denies all of the Hogarths' claims, but neither grants nor denies the request in ERB's answer fo r a declaration that it owns all copyrights, including renewal copyrights in the Books. Discussion I. Copyright Claim A. Work for Hire and the Renewal Term Two concepts of copyright law under the 1909 Act are at issue on this appeal--a work made for hire and the renewal term. The 1909 Act provides no definition of "work made for hire," but it s ta tes the consequence of that designation. "[T]he word 'author' shall include an employer in the case of works mad e for hire." 1909 Act § 26. Thus, with respect to works made for hire, the employer is legally regarded

as the "author," as distinguishedfrom the creator of the work, whom7 The 1976 Act replaced the renewal term of the 1909 Act with a new

provision, applicable to "any work other than a work made for hire," permitting termination of "the exclusive or nonexclusive g rant of a transfer or license of co p yright or of any right under a copyright, executedby the author on or aft er Januar y 1, 1978," 17 U.S.C. § 203(a), within "a period of five years beginn in g at the end of thirty-five years from the date o f execu tion of the grant," id. § 203(a)(3). The legislative history explains: [The termination provision is] based on the premise that the reversionary provisions of [secti on 24 of the 1909 Act] shouldbe eliminated, a nd that [the 1976 Act] should substitute for them a provision safeguarding authors against unremunerative transfers. A provision of this sort is neededbecau se of the unequal bargaining position of authors, re sulting in part from the impossibility of determining a work's value until it has been exploited. H.R. Rep. No. 94-1476, at 124 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5740.

8 The duration of the renewal term was extended to 47 years by the 1976 Act, 17 U.S.C. § 304(a)(1)(C) (1982), and to 67 years by the Sonny -14- Le arn edHand referred to as "the 'author' in the colloquial sense." Shapiro, Bernstein & Co. v. Bryan , 123 F.2d 697, 699 (2d Cir. 1941). The concept of a "work made for hire" remains in the Copyright Act of 1976, 17 U.S.C. § 101 et seq. (2000) ("1976 Act"), which defines the phrase to mean "a work prepared by an employee within the scope of his

or her employment" or, for certain types of works, "a work specially ordered or commissioned." 17 U.S.C. § 101 (2000); see Community for Creative Non-Violence v. Reid , 490 U.S. 730, 737 (1989) (" CCNV "). The second concept--the renewal term--is a distinctive feature of the 1909 Ac t, n ot carried into the 1976 Act for works created on or after January 1, 1978, see 17 U.S.C. § 302(a) (establishing sing l e copyright term). 7 As enacted, the 1909 Act authorized an original term of 28 years and a renewal term of an additional 28 years, 8 ifBono Copyright Term Extension Act, 17 U.S.C. § 304(a)(1)(C) (2000). See

Nimmer on Copyright § 9.11[A]-[B] (2003).

9 The Copyright Renewal Act of 1992, Pub. L. No. 102-307, 106 Stat. 264, codified at 17 U.S.C. § 304(a)(2)(A)(ii), provides for automatic extension, but also provides advantages for claiming renewal within one year of the expiration of the original term. Id. at § 304(a)(2)(A)(i). -15- application for the renewal term was made "within one year prior to the expiration of the original term." 9 1909 Act § 24. An important aspect of the renewal term is that, although it is assignable by the author,

see Fred Fisher Music Co. v. M. Witmark & Sons , 318 U.S. 643, 647-59 (1943) , t he assignment of the "expectancy" in acquiring the renewal term, see Miller Music Corp. v. Charles N. Daniels, Inc. , 362 U.S. 373, 375 (1960), is voided by the author's death prior to the date when the renewal term vests, see 1909 Act § 24; Miller Music , 362 U.S. at 374- 78. In that event, the renewal right belongs to the author's surviving spouse or children, if living, or, if they a re not l iving, to the author's executor. See 1909 Act § 24; Miller Music , 362 U.S. at 376. However, in t he c ase of a work made for hire, the proprietor of the copyright in the original term, i.e. , the employer or its assignee, is entitled to the renewal term. 1909 Act § 24. In the pending litigation, the concepts of a work made for hire andthe renewal term are at i ssue concerning a work claimed to be "c ommissioned." ERB makes no claim that Burne Hogarth was it s employee. Instead, ERB contends that Hogarth was an independent contractor whom ERB com missioned to create original artwork for the Books under circumstances that render the Books works for hire under the case law of this Circuit. This claim raises the issue of whether10 Judge Katzmann does not join this part of the opinion because he

believes it is not necessary to the decision we reach in this appeal. -16- a commissioned work should be considered a work for hire under the 1909 Act, in which event the right to obtain the renewal term belongs to the commissioning party, or whether that right remains with t he

co mm issionedparty, absent an assignment to the contrary. In the pending case, where the commissioned party, Burne Hogarth, assigned to the commissioning party, ERB, his renewal right (technically, the “expectancy” in acquiring the renewal term, see Miller Music Corp. , 362 U.S. at 375), see 1970 Agreement, ¶8, andthen died before the renewal termvested, the issue of whether the Books a re works for hire is critical because, if they are not, Hogarth’s death during the original te rmwould leave the renewal right with his children. See 1909 A c t § 24; Miller Music , 362 U.S. at 374-78. C ommissionedworks under the 1909 Act. 10 In a series of case s decidedo ver more than sixty years, this Court has considered the status of commissioned works under the 1909 Act, with respect to both the original copyright term and the renewal term. In the process, we have developed what the Fifth Circuit describes as “an almost irrebut[t]able presumption that any person who paid another to create

a copyrightable work was the statutory ‘author’ under the ‘work for hire’ doctrine.” Easter Seal Society for CrippledChildren and Adults of Louisiana, Inc. v. Playboy Enterprises , 815 F.2d 323, 327 (5th Cir. 1987) (reviewing relevant Second Circuit cases). Our Court first recognized a “presumptio n” in favor of a-17-

commissioning party in 1939 in Yardley v. Houghton Mifflin Co. , 108 F.2d28 (2d Cir. 1939), a case involving an artist who had been commissionedby the City of New York to paint a mural. The artist had diedbefore the expiration of the copyright's original term, and his sister claimed to own a copyright for the original term by virtue of

an assignment from her brother's executor. In addition, the sister had filedfor andobtained a registration for the copyright's renewal term. Focusing on the original term, we ruled that, although the contract commissioning the artist’s work was silent as to which party wouldhold the copyright, and alt hough the artist had included a copyright notice in his favor on the painting, this termbelonged to the City because it had commissioned the artist to paint the mural. Id. at 30-32. In so holding, we adopted a “presumption” that the commissioning party "desires to control the publication of copies" of the commissioned work and that the artist "consents" to such control in the absence of a contract to the contrary. Id. at 31. O ur conclusion that the artist “consents” to his patron’s right to control reproduction of the commissionedwork, coupled with the absence of any reference to the work as a “work for hire,” may have been intended to reflect a conclusion that the copyright for the original term and the expectancy of a copyright for the renewal term were transferred by the artist t o the patron by an implied assignment , in which event t h e artist ’s heirs or executor would retain renewal rights if the artist11 It is possible that the implied assignment rationale of Yardley

appliedonly to the original term of the copyright, in which event the executor wouldhave been entitled to apply for the renewal term because th e right to the expectancy in the renewal term, if not impliedly assigned, wouldhave remained the property of the decedent. Whether the executor was entitled to apply for the renewal right because the expectancy in the renewal right was deemed to be within the scope of the implied as si gnment and then voided by the death of the artist du ring the original term, or because that expectancy was deemed n o t within the scope of the implied assignment, Yardley ’s use of an implied assignment rationale strongly indicates that the work was not regarded as a work for hire. The important point is that the commissioning party was not entitled to the renewal right. -18- died before the renewal term vested. 11 Some support for this conclusion can be drawn fromour rejection of the sister’s renewal claim on the ground that “only [the artist’s] executor couldlegally obtain a renewal.” Id. at 32 (citing Fox Film Corp. v. Knowles , 216 U.S. 326 (1923)). Presumably, if we had regarded the mural as a work for hire, the commissioning party wouldhave been deemedin law the author and, as such, would have been entitled to the copyright for both the original and the renewal terms, regardless of whether the artist had died during the original term. Se e Shapiro, Bernstein , 123 F.2d at 699-700; Tobani v. Carl Fisher, Inc. , 98 F.2d 57, 59-60 (2d Cir. 1938). On the other hand, because the sister had

co ncededthat only the executor “could legally obtain a re newal, ” Yardley , 108 F.2d at 32, we had no occasion to consider the effect, if any, of the Yardley presumption on a renewal right dispute between the executor and the City. We seemed to resolve the question of renewal rights in commissionedworks in 1955, when we considered a work (song lyrics) created"as a spe cial job assignment, outside the line of [the12 The creator of the l yrics in Vogel Music II was in fact an

employee of the company that hadcontracted with him, but the lyrics were created "as a special job assignment, outside the line of hi s regular duties." Vogel Music II , 221 F.2d at 570. -19- lyricist's] regular duties" for his employer. Shapiro, Bernstein & Co.

v. Jerry Vogel Music Co. , 22 1 F.2d 569, 570 (2d Cir.), modified on other grounds , 223 F.2d 252 (2d Cir. 1955) (" Vogel Music II "). 12 The District Court had foundthat the employer paidthe lyricist $25 "for the lyric and his rights therein." Shapiro, Bernstein & Co. v. Jerry Vogel Music Co. , 115 F. Supp. 754, 757 (S.D.N.Y. 1953) (" Vogel Music I "). We ruled that the lyricis t's right to the copyright for the original term"passed to [the employer] under [the lyricist's] original contract w ith [the employer] to write a lyric." Vogel Music II , 221 F.2dat 570. But we also ruled that the lyricist retained his right to the renew al term (until he subsequently assigned that right to a thirdparty). Id. Al though we did not amplify this conclusion, the Dis trict Court had explained: "Since [the lyricist] was not [th e employer's] employee for hire, [the employer] had no renewal interest in the [lyricist's] lyric." Vogel Music I , 115 F. Supp. at 760. Ten yea rs later, in Brattleboro Publishing Co. v. Winmill Publishing Corp. , 369 F.2d 565 (2d Cir. 1966), we “merged” the Yardley presumption into the work-for-hire doctrine, as the Fifth Circuit characterizedour approach, see Easter Seal Society , 815 F.2d at 326, thereby laying the foundation for the law as it now stands in this Circuit. Brattleboro concerned a claim of copyright infringement d uring the original term brought by merchants who had requested a13 Brattleboro involved a somewhat unusual context for a dispute as

to a co mmissioned work. Normally, the party claiming to h av e commissioneda work is a large entity that publishes numerous works and the party claiming to hold the renewal ter m is an individual who createdthe work. In Brattleboro , however, the individual advertising merchants commissioned the works, and the newspaper createdthem. This reversal of the usual roles mig ht have influenced the outcome: the Court characterized the commissioning parties as "small merchants" who "we re naive with respect to the complex provisions of the copyright -20- newspaper to design and publish advertisements . In ruling that the merchants were entitled to copyrights in their ads, we, for the first time, explicitly applied to "independent contractors," 369 F.2d at 568, i. e. , the newspaper, the "instance and expense" standard that had previously been used for determining when an employee's work should be deemedto be a work for hire, which would re sult in the employer's right to the copyright for both the original and the renewal term. Id. at 567-68 (citing Nimmer on Copyright 238 (1964)) . Brattleboro , like Yardley , did not refer to the works, i.e. , the ads, as works for hire. But Brattleboro , u n like Yardley , did identify the work-for-hire doctrine as “the grounds” for the Court’s disposition. Id. at 56 7 . After reviewi ng the principles applicable to work-for-hire claims, Brattleboro specifically observed: “We see no sound reason why these

same principles are no t appli cable when the parties bear the relationship of employer and independent contractor.” Id. ; see Easter Seal Society , 815 F.2dat 3 26 (describing cited language as Brattleboro ’s “cri tic al twist” on established work-for-hire doctrine). Although we had no occasion in Brattleboro to consider the parties’ rights in a copyright for the renewal term, the citedlanguage, if not the facts in Brattleboro , 13 providedsupport for our subsequent holdinglaw." Brattleboro , 369 F.2d at 568.

1 4 The C ourt's review of the earlier decisions can be viewed as somewhat overstating their language. First, the Court characterized Brattleboro as having "expressly appliedthe statutory work for hire doctrine to the case of an independent contractor." Picture Music , 457 F.2dat 121 6. In fact, what Brattleboro had done was apply the "instance and expense" test to determine that a party commissionedto create a work shouldbe deemed to have assigned its copyright for the original termto the commissioning party. Brattleboro never classified the work as a work for hire, although it did say that the work-for-hire "principles" were applicable to a commissi oned wor k. Second, in Picture Music , the Court stated that Yardley "h eld tha t one who commissions an artist to paint a mu ral owns all rights to its reproduction." Id. (emphasis added). In fact, Yardley had recognized that the executor of the deceased artist, not the commissioning party, held the renewal right. -21- in Picture Music, Inc. v. Bourne, Inc. 457 F.2d 1213 (2d Cir. 1972) . Picture Music involved a song-w riter who was asked by a music publisher to adapt music and one line of a lyric from an animated movie into a ne w song. For her efforts she received a percentage of song royalties. She claimed an interest in the renewal t erm o f the copyright in the song. In rejecting her claim, this Court ruled that the songwriter had acted "in the capac ity of an independent contractor"; that the music publisher and the creator of the movie were the "'motivating factors'" in the composition of the new song; that they hadthe power to "accept, reject, or modify" the song; and that these circumstances rendered the song a work for hire. Id. at 1217. Somewhat extending this Court's earlier decisions, 14 Picture Music statedthat the "instance and expense" test, which had previously been usedto identify an employee's work as a work for hire and to deem a commissionedpar ty to have assignedto the commissioning party a copyright for the original term, would now be used to determine whether-22-

a commissioned work was a work for hire, thereby e ntitl ing the commissioning party to the renewal term in addition to the original term. Rejecting a distinction between an employee and an independent contractor as long as the "instance and expense" test was satisfied, the Court stated t hat "the purpose of the [1909 Act] is not to be frustratedby conceptualistic formulations of the employment [ sic ] relationship," id. at 1216, and concluded: "That [t he song-writer] actedin the capacity of an independent contractor does not preclude a finding that the song was done for hire." Id. at 1217. The Court's willingness to treat a commissioned work as a work for hire might have resulted fromthe way the case was presented on appeal. Although the appellant contended that the song was not a work for hire, its brief did not cite, much less discuss, the decisions in Yardley , Vogel Music II , or Brattleboro . After the decision in Picture Music , Professor Melville Nimmer entered the fray, filing a rehearing petition that discussed our earlier commissionedwork decisions and reminded the Court that its prior decision in Yardley had left the renewal term in

a commissioned work with the execut or of the estate of the work's creator. App arently, his argument came too late; the rehearing petition was denied without comment. See Picture Music, Inc. v. Bourne, Inc. , No. 71-1222 (2d Cir. May 25, 1972) (denying petition f o r rehearing). The Supreme Court also denied Prof. Nimmer’s petition for certiorari, with only Justice Douglas dissenting. Picture Music, Inc. v. Bourne, Inc. , 409 U.S. 997 (1972). By the time we next encountered a commiss ioned work, in 1995,15 Playboy acknowledged that "[u]ntil the mid-1960's, 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," 53 F.3d at 554, and cited the Ninth Circuit's decision in Lin-brook Builders Hardware v. Gertler , 352 F.2d 298, 300 (9th Cir. 1965), as the first case to apply the doctrine to a commissioned work. Playboy , 53 F.3d at 554. Playboy repeated the overstatement in Picture Music that Brattleboro had "held" that a party commissioning a work at its instance and expense is an "employer" for purposes of the 1909 Act. Id. See footnote 11, supra . -23- Picture Music had carried the day, and we relied o n it and it s expansive reading of Brattleboro to hold that, as long as the "instance andexpense" test is met, the work is a work for hire, and the party commissioning the work is regarded as the "author," entitled to all rights of copyright. See Playboy Enterprises, Inc. v. Dumas , 53 F.3d 549, 553-55 (2d Cir. 1995). 15 Significance of CCNV. Whatever questions might be raised about the law’s progression in this Circuit from Yardley t h rough Picture Music , we wouldnormally be obliged to follow Picture Music , especially after its holding was reconfirmed in Playboy . We are given pau se, ho wever, by language in the Supreme Court's opinion in CCNV . CC N V concernedthe work-for-hire provision of the 1976 Act . That Act defines a work for hire as:

(1) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commissioned for [any of nine specified uses] if the parties expressly agree in a written instrument signed by them that the wor k shall be considered a work made for hire. 17 U.S.C. § 101. CCNVstated that to determine whet he r a work is a work for hire under the 1976 Act, "a court should first ascer tai n, using principles of general common law of agency, whether the work was-24-

preparedby an employee or an independent contractor" and then apply the appropriate subsection of the 1976 Act's definition. 490 U.S. at 750-51. The Court rejected the contention that Congress, in enacting th e 1976 A ct, had intended to incorporate commissioned work cases decidedunder the 1909 Act such as Picture Music and Brattleboro , which the Cou rt cha racterized as "holding that an employment relationship exists sufficient to give the hiring party copyright ownership whenever that party has the right to control or supervise the artist's work." Id. at 748. Although ruling that the approach of these cases was not applicable to cases governed by the 1976 Act, the Court had no occasion to rule as to their continued viability for cases still governed by the 1909 Act. However, in recounting the history of the work-for-hire doctrine under the 1909 Act, the Court explained that, as to commissionedworks, courts of appeals "generally presumedthat the commissioned party had impliedly agreed to convey the copyright, along with the work itself, to the hiring part y." Id. at 744. For this account, CCNVcited our decisions in Yardley and Vogel Music II . Id. By emphasizing our early cases' reliance on an implied agreement between the commissioning and the commissioned parties, this account could be read to confirm the view of Vogel Music II that a commissioned work is not a work for hire andto support an interpretation of Yardley that, upon the death of the commissionedparty during the original term, the right to obtain the renewal term belongs to his executor (if no spouse or childsurvives) either because the renewal right was not impliedly ass i gned or, if1 6 After quoting in italics the statement from CCNVrecounting

lower c ourts' use of an implied assignment theory as the basis for transfer of copyright by a commissioned pa rty , the Nimmer treatise states: The effect of the italicized senten ce i s that the hiring party owns a commissioned work created under the 1 909 Ac t via assignment, not as its initial proprietor. The right to renew such a work, in the first instance, should therefore revert to that author rather than vesting automatically in th e hiring party. To that extent, the holding of Pictu r e Music becomes untenable. 3 Nimmer § 9.03[D], at 9-28.4. -25- impliedly assigned, such assignment is voided by his death before the vesting of the renewal term. The argument would be that, since with

a true work for hire, copyright ownership and the right to obtain the renewal term are with the employer automatically upon the employee's creation of the work, the Court's reference to the commissioned party's impliedagreement to convey the copyright re f lects a view that the commissioning party does not have the right to obtain a renewal term if the creator dies before the term vests. Interestingly, the Nimmer treatise takes this precise message from Justice Marshall's opinion in CCNV . See Nimmer § 9.03[D], at 9-28.4. 16 Our issue thus becomes whether to adhere to the clear holdings of Picture Music and Playboy or reject themon the basis of the language used in CCNVto describe our Court's earlier treatment of commissioned works under the 1909 Act. Although the co ntent of a Supreme Court opinion can provide a basis that permits us to reject a precedent of this Court without the needfor in banc reconsideration, see Gerosa v. Savasta & Co., Inc. , 329 F.3d 317, 326-28 ( 2 d Cir. 2003) (circuit precedent rejected by-26-

panel because of reasoning in intervening Supreme Court opinion); Boothe v. Hammock , 605 F.2d 661, 663-64 (2d Cir. 1979 ) (same), we conclude that the language in CCNVis an insufficient basis to warrant

a panel’s disregardof two clear holdings of this Court. CCNVwas not concernedwith the status of commissioned works under the 1909 Act. The language that mentions such works is a brief historical account. Indeed, in Playboy , our own Court acknowledged the same history, noting that “[u]ntil the mid-1960's, federal courts appli ed the works-for -hire doctr in e only to cases in which a traditional employer/employee relationship existed between the hiring party and the creator of the work.” 53 F. 3d a t 554. But, as we also noted in Playboy , Lin-brook Builders Hardware v. Gertler , 352 F.2d 298, 300 (9th Cir. 1965), became the first case to extend the work-for-hire doctrine to commissioned works. Playboy , 53 F.3d at 554. After Picture Music , the doctrine was similarly extended in Murray v. Gelderman , 566 F.2d 1307, 1310 (5th Cir. 1978), and Real Estate Data, Inc. v. Sidwell Co. , 907 F.2d 770, 773 (7th Cir. 1990). In sum, because we agree with Judg e Gee’s observation in Easter Seal Society that any distinction in the case law under the 1909 Act between employees and independent contractors "was erasedlong before the 1976 Act’s arrival,” Easter Seal Society , 815 F.2dat 330 n.13, we conclude that the historical review in CCNV , if dictumat all, is dictum of a weak variety, and not grounds to relieve us from our obligation to follow Picture Music and Playboy . The Hogarths' copyright claim therefore turns on whether they can successfully challenge either the District Court's ultimate conclusion-27-

that the Books were created at the "instance and expense" of ERB or the factual findings that underlie this conclusion. Application of the "instance and expense" test. T he Hog arths challenge to the District Court's conclu sion that the Books were createdat the "instance andexpense" of ERB, as those terms have been usedin this Circuit to determine copyright ownership of commissioned works, see Playboy , 53 F.3d at 553-56; Picture Music , 457 F.2dat 1216; Brattleboro , 369 F.2d at 567-68, is essentially a dispute about the facts. Judge Cote carefully considered the evidence and made precise findings to support her conclusion that the Books were createdat the instance andexpense of ERB. See Dist. Ct. Op. at *18-*24. We see no basis for disturbing her findings or her conclusions. Furthermore, as the District Court suggested, id. at *19, *24, the Books are derivative works based on original works for which ERB heldthe copyrights, and

we ruled in Pi c ture Music that in such circumstances the copyright proprietor has the right to "'direct and supervise'" the work of the commissionedparty, sufficient to render it a work for hire, Picture Music , 457 F.2dat 1216 (quoting Donaldson Publishing Co. v. Bregman, Vocco & Conn, Inc. , 375 F.2d 639, 643 (2d Cir. 1967)).-28- B. Timeliness The Hogarths contend that ERB is barredfrom claiming to be the author of the Books pursuant to the work-for-hire doctrine because of the statute of limitations, laches, and equitable estoppel. Statute of limitations. Civil actions seeking copyright remedies

are barred unless "commenced with in three years after the claim accrued." 17 U.S.C. § 507(b). "A cause of action accrues when a plaintiff knows or has reason to know of the injury upon wh ich the claimis premised." Merchant v. Levy , 92 F.3d 51, 56 (2d Cir. 1996). The Hogarths contend that ERB's "work-for-hire" claimis time-barred because it "accrued when [ERB] had notic e of the contents of the copyright registration certificates identifying Hogarth as author of the Books in the 1970's." Brief for Appellants at 23-24. The initial obstacle to the limitations defense is that ERB has not made a "claim" to which even a validlimitations defense could be assertedby the H ogar ths. ERB did not file a counterclaim. As the issues were presented to the District Court for trial, ERB's work-forhire contention was a defense to the Hogarths' cl aim for renewal rights. A defendant who is not seeking any affirmative relief and who asserts a defense only to defeat a plaintiff's claim is not barred by

a statute of limitations. See United States v. Western Pacific R.R. Co. , 352 U.S. 59, 72 (1956) ("To use the statute of limitations to cut off the consideration of a particular defense in the case is quite foreign to the policy of preventing the commencement of stale litigation."); Luckenbach St eamship Co. v. United States , 312 F.2d17 The judgment denied the Ho garths' claim that Burne Hogarth is

the sole author of the Books and denied their claim that t hey are successors t o the co pyright renewal terms. It did not make any declaration of ERB's rights. -29- 545, 548-51, 552 n.3 (2dCir. 1 963) ("The law is well settled that limitations do not normally run against a defense."); 133-24 Sanford Avenue Realty Corp. v. Cisneros , 940 F. Supp. 83, 85 (S.D.N.Y. 1996) (" It is we ll established that statutes of limitations run against affirmative claims for relief, but not against defenses."). Even if circumstances hadexisted when Watson-Guptill filed applications for regi stration in the 1970s that would have entitled ERB to seek a declaration of non-liability against a claim by Burn e Hogarth, ERB wouldnot have been obliged to seek such declaratory relief. Potential defendants are not required to seek at the e ar liest opportunity a declaration that a defense to a claim not yet brought is valid. Arguably, ERB's inclusion, in the prayer for relief of its answer, of a request for a declaration that ERB owns all copyright rights in the Boo ks funct ions as a counterclaim against which the Hogarths' limitation defense can be asserted. But the District Court apparently didnot understand ERB to be asserting a counterclaim, and the judgment does not adjudicat e one. 17 Moreover, even if ERB had filed a timebarredcount erclaim , the statute of limitations would not have preventedERB fromasserting its affirmative defense to the Hogarths' claim. See Delaware Chemicals, Inc. v. Reichhold Chemicals, Inc. , 35 Del. Ch. 493, 503, 121 A.2d 913, 918 (1956) (dismissing counterclaims

as time-barred but permitting counter-claimant to seek leave to amend18 Our Court has not decided whether a copy right ownership claim

accrues solely up on an adverse party's filing of a registration refle cting ownership incompatible with that of the claimant. I n Merchant , we upheld a jury's determin ation that a claim of coauthorship had accrued when the alleged co-authors reached the age of majority. 92 F.3d at 56. The critical circumstance bearing on accrual in Merchant was not that a certificate of registration, omitting the claimants as co-authors, had been issued prior to the claiman ts' reaching the age of majority; it was the claimants' knowledge that they were not receiving royalties to which they believed themselves entitled. Id. at 53 ("The jury also found . . . that the only period during which Plaintiffs did not know, andcould not have known with the exercise of reasonable di ligen ce, that royalties to which they were entitledhadaccrued lastedfrom 1955 to 1961, while Plaintiffs were underage.") (emphasis added). In Stone v. Williams , 970 F.2d 1043 (2d Cir. 1992), we ruled that the claim of an author's daughter a ccrued when she was put on notice that "she might be the child of [a well known singer], and she knew then that she was receiving no money as a result of such relationship. " Id. at 1049. As in Merchant , accrual occurredwh en t he claimant became aware that she had sustained the injury of not receiving royal ties. Marg o v. Weiss , 213 F.3d 55 (2d Cir. 2000) (applying Merchant ), li kewise concluded that a co-authorship claimconcerning a song written in 1961 accrued when the claimant knew or should have known of the grounds for the claim, id. at 60. However, because the Court ruled that th e plaintiffs knew of the grounds for their claim no later than 1992, id. at 61, more than three years before their complaint was filed in 196 6 , the Court must have thought that accrual could have occurred in 1992 by reason of events happening long after the plaintiffs made their alleged contribution to the so ng' s creation. -30- to assert the counterclaims defensively). We n eed n ot rest solely on the pleadings, however, because the limitations defense lacks merit. Contrary to the Hogarths' contention, ERB's claim to copyright interests in the Books did not accrue in the 1970s when the applications for registrations were filed. Even if the filing of an application for registration by an adverse party could start a limitations period, a matter we do not decide, 18 a party cannot be held t o have s tarted the limitations period for assertion of its copyright claims by filing its own applications for registration, no-31-

ma tter h ow erroneous. Recognizing that ERB's work-for-hire "claim" cannot accrue until it has suffered some injury, the Hogarths contended in the District Court that ERB s u ffered a "self-inflicted injury." Dist. Ct. Op. at *24. Not surprisingly, there is no authority for such

a contention. The district court cases in which a claimant has been t ime-barred fromasserting claims contrary to the information disclosed in a copyright registration involve applications for registrations filedby a party with interests adverse to those of the claimant. See Carell v. Shubert Organization, Inc. , 104 F. Supp. 2d 236, 249 (S.D.N.Y. 2000); Willsea v. Theis , No. 98 Civ. 6773 (BSJ), 1 999 WL 595629, at *5 (S.D.N.Y. Aug. 6, 1999); see also Netzer v. Continuity Graphic Associates, Inc. , 963 F. Supp. 1308, 1315-16 (S.D.N.Y. 1997) (copyright ownership claim accruedwhen claimant received comic book with copyright notice id entifying adverse party as copyright proprietor). In the pending case, as the District Court ruled, the injury to ERB "came at the e arliest in 1999, when Hogarth's heirs asserted an undefinedcopyright claim in their letter to Disney." Dist. Ct. Op. at *24. The statute of limitations does not bar ERB from defending on the ground that the Books are works for hire. Laches andequitable estoppel. The District Court correctly ruled that ERB is not barred from asserting its defense because of laches or equitable estoppel. Id. at *25. The Hogarths presented no evidence of reliance to their detriment arising fromthe registrations or from any other action taken by ERB. See Ivani Contracting Corp. v. City of New19 Since Burroughs had died before the pictorial version of Tarzan

of the Apes was created, he could not have been a co-author of any of the new material in this derivative work, and only such new material was entitled to a copyright. See Durham Industries, Inc. v. Tomy Corp. , 630 F.2d 905, 909 & n.6 (2d Cir. 1980). The Register has noted that since the new m atter is identified in the registration as "Burne Hogarth's pictorial version of Edgar Rice Burroughs' novel ," the registration should be understood to have identifiedonly Burne Hogarth as the author of the new mat t er and to have identified Edgar Rice Burroughs as the author of the underlying work. Peters Letter at 9. -32- York , 103 F.3d257, 259 (2d Cir. 1997) (laches defense unavailable in absence of prejudice); General Electric Capital Corp. v. Eva Armadora, S.A. , 37 F.3d 41, 45 (2d Cir. 1994) (equitable estoppel requires, among other things, reliance on misrepresent ations causing change of position by innocent party). C. Effect of Registrations The Hogarths contend t hat the registrations for the Books that became effective in the 1970s created a presumption that Burne Hogarth

was the author and that ERB has not overcome this presumption. Section 209 of the 1909 Ac t pr ovides that the Register's certificate of registration "shall be admitted in any court as prima facie evidence of the facts stated therein." The 1973 application for registration of Tarzan of the Apes , filed by Watson-Guptill, identified the authors

as "Ed gar R ice Burroughs (deceased)" and "(illustrated) by Burne Hogarth." 19 The 1976 application for registration of Jungle Tales of Tarzan , also filed by Watson-Guptill, identified the author as "Burne Hogarth." ERB did not fully correct these registrations until 1999, when it filed applications for supplemental registrations identifying20 The 1976 Act provides that "th e cert ificate of a registration

made before or within five years after first publication of the work shall constitute prima facie evidence . . . of the facts stated in the certificate" and that "[t]he evidentiary weight to be accordedth e certificate of a registration made the r eafter shall be within the discretion of the court." 17 U.S.C. § 410(c).

21 ERB seeks to minimize the significance of the listing of Burne Hogarth as co-author or author of the Books by pointing out that the Register's instructions applicable to registrations for the r en ewal termunder the 1909 Act state, "The term ' author' does not include employers for hire." Letter o f Roger L. Zissu, Esq. to Roseann B. MacKechnie, Clerk, U.S. Court of Appeals for the SecondCircuit (May 1, 2 003) (enclosing Compendium of Copyright Practices, Compendi um I § 11.7.1(II)(a)). ERB argues that including an employer as an author in the case of a work for hire under the 1909 Act and not includ in g such an employer as an author for purposes of the renewal term creates an "inconsistency" that "illustrates the difficulty for a lay person, or even a lawyer, in p reparing applications and understanding the evolving work for hire doctrine." Id. We are not persuaded that lawyers are entitled to be so easily confusedbetween a provision concerning the original term and one concerning the renewal term. -33- ERB as author on the basis of work for hire. 20 In 2 000, conflicting applications for registrations for the renewal term for Tarzan of the Apes were filed by ERB and by th e Hogar ths. ERB's initial renewal application listed "Edgar Rice Burroughs, Inc." as the author (on a work-for- hire theory), and the Hogarths' application listed Burne Hogarth as the author. The appli cati on forms on which Watson-Guptill applied for registration of a copyright for both of the Books stated: "Where a work

was made for hire, the employer is the author." The Hogarths contend that, in li ght of t his explicit instruction, the omission of ERB as "author" on the applications filed by Wa tson- Guptill resulted in registration certificates in effect "disclaiming 'employer for hire' status for ERB." 21 Brief for Appellants at 36.-34- As the Regis ter's letter to this Court explains, however, the Copyright Office's examina ti on of copyright applications is "necessarily limited," Peters Letter at 4, andshould be "distinguished fromthe Patent and Trademark Office 's process for issuance of patents," id. at 3-4. "[T]he O ffice does not make factual determinations with respect to publication or any othe r act done outside of the Office" and"will register adverse claims by more than

one party," id. at 4, which are "not unusual," id. at 14. Commenting

on ERB's a pplica tion for supplementary registration, filed in 1999, which identified ERB as the author of Tarzan of the Apes on a work-forhire theory, the Register's letter also points out that it i s not unusual for correcting information to be submitted at any time during the original term. Peters Letter at 10. The Register's letter specifically endorses the following passage fromJudge Cote's opinion concerning the sig n ificance of the registrations: "[A] cert ificate of registration creates no irrebuttable presumption of copyright validity. Extending a presumption of validity to a certificate of copyright merely orders the burdens of proof." Carol B arnhart, Inc. v. Econ. Cover Corp. , 773 F.2d411, 414 (2d Cir. 1985) (citations omitted). Furthermore, "where other evidence in the record casts doubt on the question, validity will not be assumed." Durh a m Indus., Inc. v. Tomy Corp. , 630 F.2d 905, 908 (2 d Cir. 1980). Peters Letter at 22 (quoting Dist. Ct. Op. at *1 7). "Thus, " the Register concludes, "all that the statutory presumptions flowing from the certificates of regis tration do is to shift the burden of going22 Although "'the Copyright Office has no authority to give

opinions or define legal terms,'" Morris v. Business Concepts, Inc. , 283 F.3d502, 505 (2d Cir. 2002) (quoting Bartok v. Boosey & Hawkes, Inc. , 523 F.2d 941, 946-47 (2d Cir. 1975), we have sometimes found the Office's views "persuasive," id.

23 ERB's evidence also sufficed to rebut whatever presumption arose f romthe Hogarth's renewal term application for Tarzan of the Ap es , even if that presumption was not already dissipated by the filing of ERB's conflicting renewal term application. See Martha Graham School andDance Foundation, Inc. v. Martha Graham Center of Cont emp orary Dance, Inc. , 2 24 F. Sup p. 2d 567, 586-87 (S.D.N.Y. 2002); NBC Subsidiary, Inc. v. Broadcast Information Services, Inc. , 717 F. Supp. 1449, 1451 (D. Colo. 1988). -35- forward." Id. at 23. We agree. 22 See Langman Fabr ics v. Gr aff Californiawear, Inc. , 160 F.3d 106, 111 (2d Cir. 1998). In the pending case, ERB has adequately dischargedits burden of rebutting the presumption to be accorded the facts reflected in the original registrations. On the facts as foundby the District Court andunder this Circuit's case law applicable to those facts, the Books

are works for hire. ERB is legally regardedas the "author" entitled to both the original and the renewal terms. 23 We acknowledge that we are disturbed that a corporation as sophisticatedin the protectio n o f its copyrights as ERB did not correct the registrations for the Books to identify them as works for hire until 26 and 23 years, respectively , aft er the initial registrations. It is even more perplexing that Marion Burroughs, an officer of ERB and the daughter-in-law of Edgar Rice Burroughs, would file an application for a supplementary registration for Tarzan of the Apes in 1979 that only corrected the misspelling "Edgard" and added Edgar Rice Burroughs as author of original text, but left Burne Hogarth24 Perhaps, in considering the registrations for the Books, Burne

Hogarth shared the view expressedby counsel for the Hogarths during this litigation that, when confront ed with the original term registrations for the Hogarth comic strips, which are conceded to be works for hire yet identified Hogarth as "author," he inferred that the word"author " was be ing used, not as a "legal conclusion," but "colloquially." -36- iden tifi edas the author of the work with no indication that ERB claimedto be the proprietor of a work for hire. However, as we noted in rejecting the Hogarths' laches contention, there is no evidence of prejudicial reliance by Burne Hogarth or his heirs on the lack of workfor-hire identif icat ion before 1999, nor is there any basis for rejecting the District Court's well supported conclusion that the Books are works for hire. 24 II. Contract Claims The Hogarths' two contract claims merit no discussion beyond the analysis provided by the District Court. Concerning the claim for a portion of the payment ERB received fromDisney, Judge Cote properly concludedthat ERB did not license to Di sney any rights in the copyri g htable material in the Books, Dist. Ct. Op. at *25-*27, and that, even if that had occurred, the 1970 Agreement gave Burne Hogarth

no entitlement to any portion of the Disney payments, id. at *28-*29. As to the claim that ERB's fai lure to build a museum to house the Tarzan artwork breached the 1970 Agreement and entitled the Hogarths to retu rn of the original artwork for the 1972 book, Judge Cot e properly concluded that ERB was not obligated to buildthe museum, and that the artwork had been correctly distributed pursuant to the 1970 Agreement. Id. at *29.-37- Conclusion The judgment of the District Court is affirmed. Although, as we have noted, the incorrect identification of the author in the original registrations andERB's long delay in correcting those registrations

are not grounds for disturbing the District Court' s judgment, we observe that had ERB been more attentive to the filings made on its behalf, this litigation would in all likelihood have been avoidedor at least substantially reduced in scope. We therefore exercise our discretion to deny ERB an award of appellate costs. See Fed. R. App. P. 39(a) (cost provisions apply unless court "orders otherwise").