Markham Concepts, Inc. v. Hasbro, Inc.

Filing 240

FINDINGS OF FACT AND CONCLUSIONS OF LAW. So Ordered by Chief Judge William E. Smith on 1/25/2019. (Jackson, Ryan)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF RHODE ISLAND
_______________________________________
)
MARKHAM CONCEPTS, INC.; SUSAN GARRETSON;)
and LORRAINE MARKHAM, individually and )
in her capacity as trustee of the Bill )
and Lorraine Markham Exemption Trust
)
C.A. No. 15-419 WES
and the Lorraine Markham Family Trust, )
)
Plaintiffs,
)
)
v.
)
)
HASBRO, INC.; REUBEN KLAMER; DAWN
)
LINKLETTER GRIFFIN; SHARON LINKLETTER; )
MICHAEL LINKLETTER; LAURA LINKLETTER
)
RICH; DENNIS LINKLETTER; THOMAS FEIMAN, )
in his capacity as co-trustee of the
)
Irvin S. and Ida Mae Atkins Family
)
Trust; ROBERT MILLER, in his capacity
)
as co-trustee of the Irvin S. and Ida
)
Mae Atkins Family Trust; and MAX
)
CANDIOTTY, in his capacity as
)
co-trustee of the Irvin S. and Ida Mae )
Atkins Family Trust,
)
)
Defendants.
)
_______________________________________ )
FINDINGS OF FACT AND CONCLUSIONS OF LAW
WILLIAM E. SMITH, Chief Judge.
To people of a certain age, who grew up in the America of the
1960s and 70s — where television meant three channels and shows
like Bonanza, Star Trek, and The Art Linkletter Show (more on that
to come); where cars were made in America, period; and where phones
were connected to wires, not cell towers — the Game of Life was a
gangbuster hit found (it seemed) in every household in the country,
alongside Twister, Clue, and Monopoly.

In the Game of Life, the

winner retires to “Millionaire Acres.” In this suit, life imitates
art as the heirs of toy developer Bill Markham have sued over what
they see as proceeds from the exploitation of the Game that they
have been wrongfully denied.
The Game of Life was inspired by the first boardgame invented
by Milton Bradley himself, in 1860, called the Checkered Game of
Life.

It sold millions of copies after hitting the market in 1960,

and continues to sell to this day.

Based on the idea that “life’s

a game that can be played well, or badly,” historian Jill Lepore
writes in The New Yorker, “[o]nly a handful of games have had as
long a shelf life.”

Jill Lepore, The Meaning of Life, The New

Yorker, May 21, 2007, at 38, 39.
had a shelf life of its own.

This case, filed in 2015, has

But after two amendments to the

complaint and considerable motion practice, the parties tried to
the Court (in Los Angeles 1 and Rhode Island) Plaintiffs’ third
claim for relief, which asks for a declaratory judgment that
Markham’s

heirs

control

the

Game’s

intellectual

property.

Specifically, Plaintiffs ask the Court to find that they have
termination rights under section 304 of the Copyright Act of 1976.
With these, Plaintiffs would be able to acquire the copyrights

1

Through the courtesy of the United States District Court
for the Central District of California, this Court was able to
hear live testimony from critical witnesses who, because of their
age, could not travel to Rhode Island. The Court is most grateful
to those who worked to make this possible.
2

to the Game that were long ago transferred to Defendant Hasbro,
Inc.,’s

predecessor-in-interest,

the

Plaintiffs lose this turn, however:

Milton

Bradley

Company.

the facts found below show

that the physical creation of the Game’s prototype was done by
Markham’s erstwhile employees — Grace Chambers and Leonard Israel
— as well as Markham’s wife, Sue, and unnamed parties hired by
Markham to furnish finishing touches.

They also show that this

work was done at the instance and expense of Defendant and toy
developer Reuben Klamer.
I.

Findings of Fact
The series of events leading to the Game 2 hitting the market

in 1960 began a year earlier.
12.

See, e.g., Exs. JTX 9, JTX 11, JTX

In 1959, a Reuben Klamer traveled from his home in Beverly

Hills,

California,

to

Milton

Springfield, Massachusetts.
(“Trial Tr. I”) 23–26.

Bradley’s

headquarters

in

Ex. JTX 9; Nov. 16, 2017, Trial Tr.

Klamer was a toy developer with myriad

contacts in the industry, and had come to pitch Milton Bradley
executives a concept for a new toy.

See Trial Tr. I 18–26.

Milton Bradley passed on the pitch.

Id. at 25.

But the

company’s president at the time, Jim Shay, asked Klamer to develop
a product idea to commemorate Milton Bradley’s 1960 centennial.

2

When the Court refers to the “Game” or the “prototype”
without specifying any of their composite parts (the box cover,
board, rules, etc.), it means to refer to these in their entirety.
3

Id. at 23; Ex. JTX 9.

Intrigued, Klamer agreed to do so and went

searching for inspiration in Milton Bradley’s archive, where he
stumbled upon an old copy of the Checkered Game of Life, see Ex.
JTX 9, Trial Tr. I 23, which had been invented by the company’s
namesake just before the Civil War to “forcibly impress upon the
minds of youth the great moral principles of virtue and vice,”
Lepore, supra, at 41.

The concept Klamer developed on the trip

back home to California was to update the Checkered Game of Life
to reflect post-World War II American society and values. 3

See

Trial Tr. I 25–27; Exs. JTX 10., PTX 20, PTX 275.
But Klamer was mostly an ideas man — he needed help refining
his concept and, importantly, translating it into a prototype he
could actually sell to Milton Bradley.
Ex. JTX 10.

See Trial Tr. I 28–31, 64;

For this he reached out to one of his toy-industry

contacts, Bill Markham.

Trial Tr. I 28–33.

An experienced

advertiser, Markham was head of a firm set to that purpose named
California Product Development (“CPD”).

See JTX 2; Trial Tr. I

112; Nov. 17, 2017, Trial Tr. (“Trial Tr. II”) 64.

CPD employed

two artists at the time, Grace Chambers and Leonard Israel, who
were very good in Klamer’s estimation, and whose presence at CPD

3

Klamer testified that he had scribbled some of the thoughts
he had on the plane ride from Massachusetts to California. These
notes were admitted into evidence, and reflect many of the
attributes that eventually found their way into the Game. Ex. JTX
10; Trial Tr. I 27–31.
4

convinced Klamer to hire Markham’s firm over others he considered.
Trial Tr. I 28–31.

Chambers had received her training from the

Art Center College of Design in Los Angeles, Trial Tr. II 60;
Israel his from the Chicago Art Institute, Trial Tr. I 100.
Markham agreed to take on the project in the summer of 1959.
See Trial Tr. I 29–33.

With little time to waste — Milton Bradley

wanted the product ready for market by January 1, 1960, see id. at
55 — Markham and his team went to work, see id. at 34–35.

As to

who did what during the approximately six weeks it took to produce
the prototype, the Court credits especially the testimony of
Chambers and Israel, which the Court heard live in Los Angeles. 4
See generally Trial Tr. II 58–111 (Chambers); Trial Tr. I 99–136
(Israel).

Neither has received a cent in royalties from the Game,

nor have they any financial interest in the outcome of this suit.
See Trial Tr. I 108–09; Trial Tr. II 58, 80.

The testimony each

gave was largely consistent with that of the other.
Trial Tr. II 58–111; Trial Tr. I 99–136.

See generally

Both, moreover, had only

good things to say about their time working for Markham at CPD and
with Klamer on the project.

See Trial Tr. I 101; Trial Tr. II 65–

66.

4

Klamer also testified to these events. See Trial Tr. I 36–
37.
And although he, as a successor to the now-defunct Link
Research Corporation, see Ex. JTX 569, has a financial interest in
this suit, the Court found his testimony credible, and largely
corroborative of Chambers’s and Israel’s.
5

They testified that labor was divided:

Klamer and Markham

combined to provide the big ideas, many ahead of their time.

See

Trial Tr. I 34, 103, 107–08, 127; Trial Tr. II 67–71, 75; see also
Ex. JTX 25.

These included that the Game would be played on a

circuitous path; the Game’s board would contain three-dimensional
elements; the Game’s object would be to achieve various life
milestones; and a spinner would dictate movement of the Game’s
players.
25.

See Trial Tr. I 107, 126–29; Trial Tr. II 68–71; Ex. JTX

Klamer also visited Markham’s firm once or twice a week during

development to give real-time edits to Chambers and Israel while
they worked — the former on the game board, the latter on the box
cover —

to

produce

Markham’s ideas.

a

physical

instantiation

of

Klamer’s

and

Trial Tr. I 103–04, 106–08, 129, 130–33; Trial

Tr. II 71–78.
Chambers and Israel both testified that they — not Markham or
Klamer — were the ones at CPD who built the prototype.
I

103–04,

106–07,

130–33;

Trial

Tr.

II

71–78.

Trial Tr.
Asked

who

constructed the prototype’s game board, Chambers said that she did
“most of it.”

Trial Tr. II 72.

Israel went further, testifying

that “once it was decided what we wanted to have on the board,
[Chambers] was the one who put it all together and did the final
art work on it.”

Trial Tr. I 106.

Chambers was the one who built

the houses, the mountains, and the elevated track out of balsa
wood, cardboard, and colored pantone paper.
6

Trial Tr. II 99–103.

Chambers also placed the printing on the track and constructed a
cardboard spinner.

See id. at 101, 132–33.

Some of these objects,

such as the spinner and the mountains, were later converted to the
plastic replicas used for the prototype by an outside firm Markham
hired for that purpose.
04; Ex. JTX 13.

See Trial Tr. I 121–22; Trial Tr. II 103–

An outside firm also bound the game board and

printed the play money that was part of the prototype.

See Trial

Tr. II 106–07; Ex. JTX 13.
The art for the prototype’s box cover was Israel’s handiwork,
according to both his and Chambers’s testimony.
04, 110–11; Trial Tr. II 72, 74.

Trial Tr. I 103–

Israel created several small-

scale sketches as possibilities for the box cover, from which
Markham and Klamer selected the one they preferred.
103.

Trial Tr. I

The favored design was then made by Chambers into a box cover

of proper scale.

Id. at 134.

As with the board, Markham had

“nothing to do” with the physical creation of the box cover.
at 107.

Id.

Indeed, it was the testimony of both Israel and Chambers

that Markham was often attending to other matters at CPD during
the time the prototype was taking physical form.

Id. at 116; Trial

Tr. II 73–74.
The third major component to the prototype besides the board
and the box — the rules — were a collective, iterative effort.
Trial Tr. I 105–06, 116–18; Trial Tr. II 76–77, 105.

Once the

Game was operational, everyone in and around the CPD offices at
7

the time — Markham, Klamer, Chambers, and Israel — would play it,
and

then

throw

consider.
105.

out

suggested

rule

changes

the

group

to

Trial Tr. I 105–06, 118–19, 128; Trial Tr. II 76–77,

Some of these were tried and, because of some unforeseen

disruptive effect on another rule, discarded.
06.

for

Trial Tr. I 105–

Some, however, were ultimately adopted, then copied by Sue

Markham (Bill’s wife, and a copywriter by profession) into the
prototype’s rule book.

Trial Tr. I 105–06, 116–18, 128; Trial Tr.

II 105.
Once completed, Markham and Klamer presented the prototype to
Milton Bradley executives, including its vice president, Mel Taft,
on or around August 10, 1959, at the famous Chasen’s restaurant in
Hollywood, California.
25, JTX 29.

See Trial Tr. I 38–39, 65–68, 86; Exs. JTX

Also at Chasen’s was radio and television personality

Art Linkletter.

See Trial Tr. I 33, 39; Exs. JTX 25, JTX 29.

He

was there on behalf of Link Research Corporation (“Link”), the
firm

Linkletter

had

founded

with

Klamer

to

develop

consumer

products that could be marketed using Linkletter’s considerable
celebrity.
JTX 42.

See Trial Tr. I 20, 33; Exs. JTX 29, JTX 34, JTX 39,

Part of Klamer’s pitch to Milton Bradley at the Chasen’s

meeting was that Linkletter could help promote the Game. See Trial
Tr. I 38–39; Exs. JTX 11, JTX 12.

The pitch worked:

Taft and

Shea were impressed by the prototype, and left the restaurant
thinking that with some tweaks it could be a commercial success.
8

See Exs. JTX 18, JTX 19, JTX 20, JTX 21, JTX 25, JTX 33; Trial Tr.
I

40–41.

Soon

thereafter,

prototype to Milton Bradley.

on

August

19,

Klamer

mailed

Ex. JTX 12; Trial Tr. I 96.

Two agreements regarding rights to the Game followed.
Exs. JTX 1, JTX 2.

agreement

See

The first, entered on September 21, 1959, was

a License Agreement between Link and Milton Bradley.
This

the

gave

Milton

Bradley

the

Ex. JTX 1.

exclusive

right

to

manufacture and market the Game, which Link “had . . . designed
and constructed.”

Id.

The License Agreement also allowed Milton

Bradley to use Linkletter’s name and image in its advertising of
the Game, and required Linkletter to plug the Game fifty-two times
on his nationally televised show.

Id.

In return, Link received

a six percent royalty on sales of the Game and an immediate, nonrefundable $5,000 advance against these royalties.

Id.

Absent

termination or breach, the Agreement was to last as long as Milton
Id.

Bradley marketed the Game.
The

second

agreement,

between Link and Markham.

the

Assignment

Ex. JTX 2.

Agreement,

was

one

Executed October 20, 1959,

this agreement assigned “all of [Markham’s] right, title, and
interest in and to the Game[] to Link.”

Id.

Markham received the

right to a royalty stream amounting to thirty percent of the six
percent royalty Link had negotiated with Milton Bradley in their
License Agreement. Id. Along with a nonrefundable $773.05 advance
on

Markham’s

thirty

percent,

Link
9

agreed

to

pay

Markham

the

$2,423.16 he spent producing the prototype, id., for which he had
billed Link, and which included Chambers’s and Israel’s salary,
see Ex. JTX 13. Klamer paid Markham’s bill — a bill he had promised
would be his responsibility at the outset of the project, Trial
Tr. I 41–42, 57–58; Trial Tr. II 49 — out of the aforementioned
$5,000 royalty advance Link secured from Milton Bradley.
2.

Ex. JTX

The Assignment Agreement stated that Markham had “invented,

designed[,] and developed” the Game.
Milton

Bradley

would

communicate

to

Id.

It also provided that

Markham

any

contemplated

changes to the Game, allowing Markham to share his thoughts on
these with Milton Bradley.

Id.

“[T]he final decision regarding

such changes,” however, was to “rest with either LINK or [Milton
Bradley].”
While

Id.
the

parties

hammered

out

these

contractual

arrangements, Milton Bradley was at work turning the prototype
into a commercially viable boardgame.

Trial Tr. I 45–50; see also

Exs. JTX 18, JTX 20, JTX 21, JTX 25, JTX 26, JTX 33, JTX 40, JTX
43.

Both Markham and Klamer helped advise the company as to how

best to carry out this transformation.
JTX, 28, JTX 33, JTX 35, JTX 36.

See Exs. JTX 26, JTX 27,

Comparing early versions of the

Game with the prototype shows a host of changes made — many with
a view toward making the Game less expensive to manufacture, but
that nevertheless altered its aesthetics.

Compare Ex. JTX 509,

with Ex. HTX 14; see also Trial Tr. I 45–50.
10

For instance, the

early versions had the raised mountains directly on the Game’s
circuitous track, whereas the prototype had them as background
scenery surrounding the track.
14; see also Trial Tr. I 45–50.

Compare Ex. JTX 509, with Ex. HTX
Moreover, the board in the early

versions had fewer, and smaller, three-dimensional elements than
the prototype.

Compare Ex. JTX 509, with Ex. HTX 14; see also

Trial Tr. I 45–50.

Milton Bradley also changed the font on the

Game’s box cover to make it more visually appealing, and varied
the wording and order of certain of the Game’s rules to make them
more intelligible.

Compare Ex. JTX 509, with Ex. HTX 14.

Milton Bradley first published the Game on March 12, 1960.
Exs. JTX 3, JTX 4, JTX 5; Trial Tr. I 58.

Later that year, on

December 19, 1960, Milton Bradley applied to register copyrights
in the Game’s board and rules. Exs. JTX 4, JTX 5. These identified
the company as the author.
also

noted

as

the

author

Exs. JTX 4, JTX 5.
of

the

Game’s

application submitted the same day by Link.

Milton Bradley was

box

in

a

copyright

Ex. JTX 3.

The Game,

an instant classic, sold like crazy, and is still a source of
revenue for Milton Bradley’s successor-in-interest Hasbro, as the
latter continues to market the original version of the Game, Ex.
JTX 520, as well as updated versions incorporating various themes
and characters, such as one recent rendition introduced at trial
that included intellectual property from the popular Despicable Me
children’s movie franchise, Ex. JTX 511.
11

The

ensuing

“Pay

Day!”

consternation, however.

has

sometimes

been

the

cause

of

Even before the Game hit stores, there

was a struggle, mostly on Markham’s part, to take credit for its
genius. Trial Tr. I 54–56; see Exs. JTX 2, JTX 16, JTX 32.

A

provision in the Assignment Agreement, for example, required Link
to ask Milton Bradley if Markham’s name could appear on the Game’s
box cover.

Ex. JTX 2.

of Link.

Ex. JTX 16.

request.

Klamer fulfilled this requirement on behalf
But Milton Bradley kindly declined the

Ex. JTX 32.

Then, in 1965, Markham came upon what he considered a false
statement in the trade publication Toy & Hobby World, identifying
Klamer as the designer of the Game.

Exs. PTX 20, PTX 87.

responded with a brusque letter to Klamer.

Ex. PTX 20.

He

“I am

sure you are not so in need of recognition that you take credit
for something in which your only connection was to sell it to
Milton Bradley,” he wrote.

Id.

Markham sought to correct the

alleged misattribution — which he found “very damaging to [his]
reputation” — by asking Klamer that he prepare a letter recognizing
Markham as the “sole inventor, designer and developer” of the Game.
Id.

Markham

would

append

this

letter

to

the

press

release

correcting the error that he was preparing for publication.

Id.

Klamer responded that he was “puzzled” by Markham’s letter,
and pushed back on Markham’s suggestion that Klamer’s only role in
what had already become a “great success” was selling the Game to
12

Milton Bradley.

Id.

Disinclined to upset the applecart, however,

Klamer grudgingly acceded to Markham’s demand for recognition,
writing that the Assignment Agreement obligated Klamer to agree
that Markham invented the Game.

Id.

Going forward, Klamer went

out of his way to prevent any publicity that would similarly offend
Markham. See, e.g., Ex. PTX 20. For instance, Klamer preemptively
wrote a publication called The Westerner to warn that they not
associate

him

with

the

Game

in

a

forthcoming

article.

Id.

“Although I know what my contribution was in the project,” Klamer
wrote,

“I

want

to

eliminate

individual . . . .”

any

hassle

with

this

particular

Id.

Markham and Klamer fought not just over the limelight, but
over money too.

In a letter to Klamer dated August 15, 1963,

Markham complained that the Assignment Agreement had been a raw
deal, grumbling that his share of the royalties was “ridiculously
low” and that Art Linkletter had done little to promote the Game
on television.

Ex. PTX 21.

Markham, feeling slighted, asked that

he receive fifty percent of the three percent royalty Milton
Bradley was then offering Link on sales of the Game overseas,
instead of the thirty percent of Link’s share he had been receiving
under the Assignment Agreement.

Id.

Klamer waited until October 3, 1963, to respond, explaining
his delay as follows:

“Someone whom I respected very much told me

to count to twenty-five, not just to ten, when I got annoyed about
13

a situation.”

Id.

Setting the pattern he would follow in his

later skirmishes with Markham over public recognition, Klamer
noted his disagreement with Markham’s version of history, before
caving to Markham’s demands.

Id.

That is to say, Klamer agreed

to hand over fifty percent of the royalty Link received on foreign
sales, but stated his belief that this was more than Markham was
due under the Assignment Agreement, which, contrary to Markham’s
laments, “was and is a fair one.”

Id.

Klamer also came to

Linkletter’s defense, asserting that Milton Bradley was more than
satisfied with Linkletter’s promotion of the Game, and indeed “was
highly impressed with the TV commercial which Art did on the Game.”
Id.
An exchange of passive-aggressive letters was not enough to
settle the next royalty dispute. Again having to do with Markham’s
share of foreign royalties, this skirmish led to Markham and Klamer
suing each other in California state court in the late 1980s.
Ex. HTX 111.

See

The litigation ended on July 9, 1989, when the

parties signed a handwritten settlement agreement.

Ex. JTX 58.

Among other things, the agreement set Markham’s share of overseas
sales at 36.66 percent of Link’s foreign royalties, while keeping
his share of U.S. sales at thirty percent of Link’s domestic
royalties, as stipulated in the Assignment Agreement.

Id.

The

parties styled the Settlement Agreement as an amendment to the
Assignment Agreement, which they agreed in 1989 they “continue[d]
14

to be governed by.”

Id.

The present litigation is an attempt by Markham’s successors
in interest — Markham passed away in 1993, see Ex. PTX 218 — to
put an end to government by Assignment Agreement.
Compl. ¶¶ 77–82.

See Third Am.

These Plaintiffs insist that their right to do

so lies in section 304 of the Copyright Act of 1976.
II.

Conclusions of Law
Plaintiffs are, however, mistaken in their insistence:

the

facts as found above show that this case fits squarely within the
work-for-hire exception to the termination right granted authors
in section 304.
The Copyright Act of 1976 provides a work’s author the right
to terminate a previously bestowed grant of copyright in that work.
17 U.S.C. § 304(c).

The idea behind this right is to give an

author a second chance to negotiate the rights to her work when —
after it has been exploited during the term of an initial grant —
she can better gauge the work’s value.
Snyder, 469 U.S. 153, 172–73 (1985).

Mills Music, Inc. v.
Termination rights are

especially important when hindsight shows the author made a bad
deal the first time around.

Id.; see 3 Melville B. Nimmer & David

Nimmer, Nimmer on Copyright § 11.01[A] (Matthew Bender rev. ed.).
Although
circumstances,

necessary
termination

to

achieve

rights

are

fairness
not

in

without

these
various

qualifications, Nimmer & Nimmer, supra, § 11.02, one of which —
15

that excepting works for hire, 17 U.S.C. § 304(c) — determines
this case.

Section 304(c) states, in relevant part, that “[i]n

the case of any copyright subsisting in either its first or renewal
term on January 1, 1978, other than a work made for hire, the
. . . grant of a transfer . . . of the renewal copyright, executed
before January 1, 1978, . . . is subject to termination . . . .”
17 U.S.C. § 304(c) (emphasis added).
copyrights

granted

prior

to

The rule, then, is that

January

1,

1978,

are

subject

to

termination, but not if the copyright is one in a work for hire.
See Nimmer & Nimmer, supra, § 11.02 (“[The 1976 Act] moves in
categorical

fashion,

disallowing

all

works

for

hire

from

termination.”).
What counts as a work for hire depends on when the work was
created.

See Martha Graham Sch. & Dance Found., Inc. v. Martha

Graham Ctr. of Contemporary Dance, Inc., 380 F.3d 624, 633–34 (2d
Cir. 2004); Forward v. Thorogood, 985 F.2d 604, 606 n.2 (1st Cir.
1993).

Works created on or after the effective date of the 1976

Act (January 1, 1978) have their work-for-hire status determined
according to the statutory definition given in the 1976 Act.
17 U.S.C. § 101.
this

status

is

See

However, for works created before that date,
determined

under

the

Copyright

Act

of

1909,

predecessor to the 1976 Act, which contained the concept, but
lacked a statutory definition, of a work for hire
§

26

(repealed

1978)

(“[T]he

word
16

‘author’

See 17 U.S.C.

shall

include

an

employer in the case of works made for hire.”); Forward, 985 F.2d
at 606 n.2. Without definitional guidance from the statute, courts
have had the task of tracing the term’s 1909 Act contours.

Cmty.

for Creative Non-Violence v. Reid, 490 U.S. 730, 744 (1989).
The First Circuit’s efforts in this regard led it to adopt a
definition of the term that tracks the instance-and-expense test.
Forward, 985 F.2d at 606 & n.2.

Borrowed from the Second and Ninth

Circuits, this test has it that the presumptive “‘author’ and
copyright holder of . . . [a] commissioned work[] created by
independent contractors” is “the commissioning party at whose
‘instance and expense’ the work was done.”

Id. at 606 (citing

Brattleboro Publ’g Co. v. Winmill Publ’g Corp., 369 F.2d 565, 567–
68

(2d

Cir.

1966));

see

also

Lin–Brook

Builders

Hardware

v.

Gertler, 352 F.2d 298, 300 (9th Cir. 1965) (adopting instance-andexpense test).
In Forward, the First Circuit held that demo tapes with music
from the blues band George Thorogood and the Destroyers were not
works for hire where there was no evidence they were “prepared for
the

use

and

benefit

of”

plaintiff

music

arranged for the band to record the tapes.
604–06.

aficionado,

who

Forward, 985 F.2d at

Instead, the tapes had been recorded for the purpose of

enticing a record company to sign the band to a record deal.
at 606.

had

Id.

Moreover, the aficionado, as the alleged commissioning

party, “neither employed nor commissioned the band members nor did
17

he compensate or agree to compensate them.”

Id.

Because the tapes

were not produced at plaintiff’s instance and expense, the First
Circuit ruled, he was not their author under the 1909 Act.

Id.

In this case, though, the work at issue was “prepared for the
use and benefit” of, and paid for by, a commissioning party, namely
Reuben Klamer.

See id.

That is to say, the Game’s prototype was

produced at his instance and expense.

Instance here “refers to

the extent to which the hiring party provided the impetus for,
participated in, or had the power to supervise the creation of the
work.”

Marvel Characters, Inc. v. Kirby, 726 F.3d 119, 139 (2d

Cir. 2013).

And it was Klamer who provided the impetus for the

prototype’s creation when, after visiting the archives at Milton
Bradley,

he

prototype.

selected

Markham’s

company

to

help

him

make

the

Ex. JTX 9; Trial Tr. I 23–26, 28–33; see Twentieth

Century Fox Film Corp. v. Entertainment Distrib., 429 F.3d 869,
879 (9th Cir. 2005) (describing “the ‘instance’ test as an inquiry
into whether the motivating factor in producing the work was the
employer who induced the creation” (quotation marks omitted)).
This selection is the sole reason for Markham’s involvement, and
spurred everything that came after:

the fast work of everyone at

CPD to bring the prototype into existence, Trial Tr. I 99–136;
Trial Tr. II 58–111; the presentation of the prototype to Milton
Bradley executives at Chasen’s restaurant, Trial Tr. I 38–39; Exs.
JTX 25, JTX 29; and ultimately the manufacture and sale of the
18

Game, Exs. JTX 12, JTX 18, JTX 19, JTX 20, JTX 21, JTX 25, JTX 33.
Klamer had the power to supervise the prototype’s creation.
See Twentieth Century Fox, 429 F.3d at 879 (“The ‘instance’ test
is shaped in part by the degree to which the hiring party had the
right to control or supervise the artist’s work.” (quotation marks
omitted)); Martha Graham, 380 F.3d at 635.

Both Chambers and

Israel testified to Klamer’s frequent presence at CPD while they
worked on the prototype.

Trial Tr. I 106–08; Trial Tr. II 73.

They considered Klamer the client for the project, and one whose
suggestions for changes they were expected to, and did, implement.
Trial Tr. I 103–04, 106–07, 130–33; Trial Tr. II 71–78; see Marvel,
726 F.3d at 139 (“Actual creative contributions or direction
strongly suggest that the work is made at the hiring party’s
instance.”).

They also considered Klamer the final arbiter of the

prototype’s look and feel.

Trial Tr. I 103–04, 106–07, 130–33;

Trial Tr. II 71–78.
The

preeminence

of

Klamer’s

predilections

is

See Ex. JTX 2.

evidenced in the Assignment Agreement.

further
There,

Markham recognized that while he had a right to learn of any
contemplated changes to the prototype’s design, he “understood
that the final decision regarding such changes shall rest with
either LINK or [Milton Bradley].”

Id.; see Picture Music, Inc. v.

Bourne, Inc., 457 F.2d 1213, 1217 (2d Cir. 1972) (finding the song
“Who’s

Afraid

of

the

Big

Bad
19

Wolf”

a

work-for-hire

because

commissioning parties had “the power to accept, reject, or modify
[the composer’s] work”).
Because Klamer “provided the impetus for, participated in,
[and] had the power to supervise the creation of [the prototype],”
the Court concludes it was made at his instance.

Marvel, 726 F.3d

at 139, 141 (“Marvel’s inducement, right to supervise, exercise of
that right, and creative contribution with respect to [comic-book
artist Jack] Kirby’s work during the relevant time period is more
than enough to establish that the works were created at Marvel’s
instance.”).
The prototype was also created at Klamer’s expense. 5

In

determining who bore the expense of creation, the lodestar is
financial risk; the question being who took it, or most of it.
See, e.g., id. at 140 (noting that the law here is ultimately
interested in who took the “risk with respect to the work’s
success”); Twentieth Century Fox, 429 F.3d at 881 (affirming that
General Dwight D. Eisenhower’s World War II memoir was produced at

5

An argument could have been made (but was not) that the Game
was created at the instance and expense of Milton Bradley. After
all, it was Milton Bradley that solicited Klamer to come up with
something for the company’s anniversary, and it was Milton Bradley
that, once it accepted the Game, paid Klamer $5,000 and bore the
risk of its failure to sell to the public.
There are problems
with this theory. For example, it was Klamer who hired Markham,
not Milton Bradley. In any event, this argument was not made by
Hasbro, presumably because, as a recipient of a license in the
prototype, it would not affect the result, and because Hasbro
thought it in the company’s interest to present a unified theory.
20

the publisher’s expense because it “took on all the financial risk
of the book’s success”); Siegel v. Warner Bros. Entm’t. Inc., 658
F. Supp. 2d 1036, 1058 (C.D. Cal. 2009) (noting that the focus of
the expense calculus is “on who bore the risk of the work's
profitability”).
One feature of Klamer’s arrangement with Markham and his
company — and what likely accounted for the level of control Klamer
had over the making of the prototype — was that Klamer would pay
any and all costs Markham incurred during the project.
I 41–42, 57–58; Trial Tr. II 49; see Exs. JTX 2, JTX 13.

Trial Tr.
This was

true even if Klamer was unable to convince Milton Bradley to
manufacture the Game.

Trial Tr. I 41–42, 57–58; Trial Tr. II 49

see Exs. JTX 2, JTX 13.

In other words, if the Milton Bradley

executives at Chasen’s had been thoroughly unimpressed by the
prototype and passed on it completely — as they had on the other
idea Klamer brought to them just months earlier — Klamer would
have remained on the hook for the $2,423.16 Markham billed him on
October 12, 1959.

Trial Tr. I 41–42, 57–58; Trial Tr. II 49; see

Exs. JTX 2, JTX 13; see also Ex. PTX 20 (evidencing Markham’s
understanding that Klamer’s role in creating the Game was “to sell
it to Milton Bradley”).

This sum included the cost of Chambers’s

and Israel’s labor along with the material used in the prototype.
Ex. JTX 13.
Klamer also agreed to pay Markham thirty percent of the
21

royalty he negotiated for himself from Milton Bradley.

Ex. JTX 2.

And while the use of royalties as payment, as opposed to a fixed
sum,

“generally

weighs

against

finding

a

work-for-hire

relationship,” Playboy Enters. v. Dumas, 53 F.3d 549, 555 (2d Cir.
1995), “[t]he absence of a fixed salary . . . is never conclusive,”
Picture Music, 457 F.2d at 1216, and has been found “a rather
inexact method of properly rewarding with ownership the party that
bears the risk with respect to the work’s success,” Marvel, 726
F.3d at 141.

Markham was, moreover, not obliged to pay back the

$773.05 advance on royalties he received from Klamer.

Ex. JTX 2;

cf. Picture Music, Inc. v. Bourne, Inc., 314 F. Supp. 640, 651
(S.D.N.Y. 1970) (“[T]he fact that the author was obliged to repay
advances on royalties which were never accrued is an indicant that
the relationship was not an employment for hire.”).

So the

royalties involved here do nothing to change the reality that the
risk, and therefore the expense, was Klamer’s.
Klamer having provided the instance for and bearing the
expense of the prototype’s invention, the presumption arises under
the 1909 Act that he was the prototype’s author and entitled to
its copyright ab initio.

See Twentieth Century Fox, 429 F.3d at

881;

at

Forward,

985

F.2d

606.

And

contrary

to

Markham’s

contention, nothing in the Assignment Agreement overcomes this
presumption.

See Lin-Brook Builders, 352 F.2d at 300 (holding

that “an express contractual reservation of the copyright in the
22

artist” is necessary to rebut the presumption of the copyright in
the hiring party); Nimmer & Nimmer, supra, § 5.03 (noting that
under the 1909 Act, “in the absence of persuasive evidence of an
agreement to the contrary, it was generally held that if an artist,
writer, photographer, architect or other ‘author’ is commissioned
to create a work, the copyright in such work would vest in the
person commissioning the work”). The Agreement states that “[u]pon
the request of LINK, MARKHAM will pursue any copyright . . . to
which he may be entitled as the inventor, designer and developer
of the Game . . . [and] will assign any such copyright . . . to
LINK.”

Ex. JTX 2.

But this language, far from naming a copyright holder other
than Klamer, is operative only in a hypothetical world where
Markham

held

a

copyright

in

the

prototype.

The

Assignment

Agreement’s post hoc description of Markham as the “inventor,
designer and developer of the Game” does not make this hypothetical
world a reality.

Id.; see Nimmer & Nimmer, supra, § 11.02

(“Insofar as a work is made ‘for hire’ because it has been prepared
by an employee within the scope of his employment, it is the
relationship that actually exists between the parties, not their
description

of

that

relationship,

that

is

Neither does anything else in the Agreement.

determinative.”).
See Ex. JTX 2.

So

it remains the case that in the real world — where, as the foregoing
has

shown,

the

presumption

was
23

that

copyright

ownership

was

Klamer’s — this clause in the Assignment Agreement is but an empty
precaution.

Cf. Marvel, 726 F.3d at 143 (“It is all too likely

that, if the parties thought about it at all, Kirby’s assignments
at the time he was paid or later were redundancies insisted upon
by Marvel to protect its rights; we decline to infer from Marvel's
suspenders that it had agreed to give Kirby its belt.”).
of

post-publication

understanding as well:

history

show

this

was

the

Decades
parties’

Markham was never asked to “pursue any

copyright” because he had no copyright to pursue.

Ex. JTX 2; see

Exs. JTX 7, JTX 8, JTX 9, JTX 23.
In the final analysis, the prototype was a “work[] made for
hire” under the 1909 Act, 17 U.S.C. § 26 (repealed 1978), and
Plaintiffs are thus without termination rights under the 1976 Act,
17 U.S.C. § 304(c).
III. Conclusion
Like the Game of Life itself, this fifty-nine-year tug-ofwar for renown and royalties has followed a long, circuitous path.
And one that — on this “Day of Reckoning,” to use the Game’s
parlance — ends essentially where it began:

for it is sometimes

said, in disbelief, that success has many fathers, but failure is
an orphan; nevertheless, the weight of the evidence in this case
is that the success that met the Game of Life was, in fact, nothing
if not the result of collective effort.

And although the credit,

in the colloquial sense, can be split pro rata, the law dictates
24

that the copyrights cannot be.

For this reason — and not because

of the unparalleled contribution of any one person as compared to
another — Plaintiffs’ third claim for relief fails.
IT IS SO ORDERED.

William E. Smith
Chief Judge
Date: January 25, 2019

25