George G. Rodrigue, Jr. and Richard Steiner Plaintiffs-appellees, v. Veronica Hidalgo Rodrigue, Defendant-appellant, 218 F.3d 432 (5th Cir. 2000)

Our task in this appeal, before us under Federal Rule of Civil Procedure 54(b), is to sort out and reconcile the respective rights and obligations of authors under federal copyright law and their spouses under Louisiana community property law when those two legal regimes intersect. Defendant-Appellant Veronica Hidalgo Rodrigue ("Veronica") asks us to reverse the district court's ruling that, by virtue of copyright law, her ex-husband, Plaintiff-Appellee George Godfrey Rodrigue, Jr. ("George"), holds all ownership rights in intellectual property that he created during the parties' marriage, to the exclusion of any rights she might otherwise have in those creations by virtue of community property law. Agreeing with Veronica, we reverse and remand with instructions.

Facts and Proceedings

George and Veronica were married in Louisiana in 1967 and were divorced there in 1993. In the absence of an election by them to have any other marital property regime apply, the Rodrigues' Louisiana marriage effected the "legal regime" of matrimonial property,¹  establishing between them a community of acquets and gains, commonly referred to simply as the community.² 

During the marriage, George became a widely acclaimed, highly successful, and very prolific painter. He created numerous paintings both during the existence of the community and after its termination, a number of which depicted a stylized and easily recognizable image of a blue dog. Modeled after the family pet, Tiffany, the first blue dog painting was created in 1984. George obtained certificates of copyright for some but not all of his paintings.

Divorce terminated the community that had existed between Veronica and George throughout their marriage.³  As a general proposition, the Louisiana Civil Code provides that, on termination of the community, the property formerly belonging to it becomes subject to the provisions governingco-ownership⁴ : "Each spouse owns an undivided one-half interest in former community property and its fruits and products"⁵  until partition.⁶ 

Following the dissolution of his marriage with Veronica, George and co-Plaintiff-Appellee Richard Steiner, George's former business associate, filed this action in federal court seeking a declaration that George is the sole owner of intellectual property rights in all the paintings, particularly the blue dog image. They also sought to enjoin Veronica from (1) seeking a declaration of her co-ownership of those works, (2) making image transfers, and (3) suing for copyright infringement. Veronica filed a counterclaim in an effort to obtain a declaration that she owns an undivided one-half interest in (1) all intellectual property rights (including, but not limited to, the blue dog) generated during the existence of the community and (2) all post-community artworks that are "derivative" of that intellectual property. Veronica also sought an accounting for her half-interest in the proceeds of post-community use of those copyrights and derivatives.

After the parties filed cross-motions for summary judgment, the district court granted George's, grounding its decision in federal copyright preemption of state community property law. Veronica filed a motion for reconsideration which the court did not address, entering instead an order dismissing all of her claims. Veronica filed a second motion for reconsideration which the court granted to the extent that the previous order purported to resolve all claims of all parties. The court certified the preemption issue for immediate appeal pursuant to Rule 54(b) and stayed the remaining issues.

In a scholarly and thorough analysis, the district court concluded that, as a matter of conflict preemption, subjecting copyrights on works of the author-spouse to Louisiana community property law would damage federal interests in national uniformity and efficient exchange of copyrights. The court held that, as a result of this conflict, the state marital property law is preempted and cannot appertain. The court also considered 17 U.S.C. § 301, the express preemption provision of the federal Copyright Act of 1976 ("the Copyright Act" or "the Act") but concluded that it did not apply because Louisiana's community property law does not purport to provide rights "equivalent" to those specified by the Act. And the court rejected Veronica's "transfer" argument that, even though § 201(a) of the Copyright Act specifies that a copyright "vests initially" in the author at the time of creation of the work, it is transferred to the community by operation of law immediately following such initial vesting.

In concluding that federal law preempts state law in this instance, the district court voiced particular concern about the practicability of copyright co-management by spouses. Still, in describing problems associated with co-management, the court flagged a possible solution: The author-spouse could retain and exercise sole management and control of the copyright without depriving the non author-spouse of the "more tangible benefits." Instead of so holding, however, the court demurred to Congress to decide whether to adopt that approach.

We are convinced that the district court visualized the correct method for reconciling the apparent conflict, but we disagree about the need for a congressional fix. We therefore adopt the approach considered but rejected by that court, and we reverse.

Analysis

We review the grant of summary judgment de novo, applying the same standardsas the district court.⁷ 

George contends that provisions of both the Copyright Act⁸  and the U.S. Constitution⁹  preempt state community property law, preventing his copyrighted artistic works from ever having become property of the community that was created by his marriage to Veronica and thereby exempting his copyrights from division and partition of the community after divorce. Section 201(a) of the Act specifies that a " [c]opyright in a work protected under this title vests initially in the author or authors of the work." In facial contrast, Louisiana Civil Code article 2338 declares that "property acquired during the existence of the legal regime through the effort, skill, or industry of either spouse" is community property. George insists that federal law, which specifies that the copyrights in the blue dog and other images "vest [] initially" in him as the "author," cannot be harmonized with state law, which would hold those self-same copyrights to have been community property and to belong now to the two former spouses in indivision. He argues that, because, under the Supremacy Clause, state law is preempted to the extent that it conflicts with federal law, his copyrights are immune from Louisiana community property law.

We do not disagree with George's general premise; we do disagree, though, with his expansive view of the scope of the conflict between copyright law and community property law, and thus with the extent of the preemptive effect of such conflict. We are satisfied that the conclusion we reach today ---- that an author-spouse in whom a copyright vests maintains exclusive managerial control of the copyright but that the economic benefits of the copyrighted work belong to the community while it exists and to the former spouses in indivision thereafter ---- is consistent with both federal copyright law and Louisiana community property law and is reconcilable under both.

We begin by delineating the precise scope of the language of § 201(a)¹⁰  on which George bases his sweeping preemption theory. This subsection pertains only to "copyright," which, by the Act's own definition at § 106, is a finite bundle of but five fundamental rights, being the exclusive rights of reproduction, adaptation, publication, performance, and display.¹¹  Notably, none of these rights either expressly or implicitly include the exclusive right to enjoy income or any of the other economic benefits produced by or derived from copyrights.

Section 201(a) specifies that the copyright "vests" in the author. Except in its title,¹²  this subsection never uses the words "own" or "ownership," and the Act does not speak of ownership per se or globally, but only in the sense of the fiveexclusive attributes listed in § 106. "To vest" means to give an immediate, fixed right of present or future enjoyment; to accrue to; to be fixed; to take effect.¹³  "To own" means to have a good legal title; to hold as property; to have a legal or rightful title to; to have; to possess."¹⁴  When analyzed in the framework of the Act's inclusion of only five express attributes of ownership while omitting, inter alia, the attribute of enjoyment of economic benefits, Congress's reference to immediate vesting of the copyright, and not to vesting of ownership, supports the more limited construction advocated by Veronica. We agree with her insistence that, in and of itself, "vesting" of the copyright and its five (and five only) statutorily delineated attributes in one spouse does not preclude classification of other attributes of ownership of a copyright as community property. Moreover, by its very title, § 201(a) addresses only initial ---- not permanent ---- vesting of the copyright in the author. And, even though the author's copyright arises at the moment of creation of the work,¹⁵  the Act explicitly allows for subsequent vesting in non-authors, either jointly with the author or subsequent to him by virtue of transfer of all or lesser portions of the copyright.¹⁶ 

True, the copyright "vests initially" in the "author," and the "author" is the "originator," the "maker," the person to whom a work "owes its origin."¹⁷  We do not question that George is the sole "author" of the copyrights here at issue. Neither do we mean to suggest that Veronica's co-ownership interests arise from co-authorship. We do conclude, though, that the language of § 201(a), providing that a bundle of but five specific rights, those listed in § 106, "vests initially" in the author, does not ineluctably conflict with any provision of Louisiana matrimonial property law that would recognize that Veronica does have an economic interest in George's copyrights.

As a useful framework for understanding the Louisiana Civil Code provisions on which our holding ultimately rests, we begin with general concepts of Louisiana property law. In the Civil Law, the bundle of rights that together constitutes full ownership¹⁸  of property comprisesthree separate sub-bundles: (1) usus - the right to use or possess, i.e., hold, occupy, and utilize the property; (2) abusus - the right to abuse or alienate, i.e., transfer, lease, and encumber the property, and (3) fructus - the right to the fruits, i.e., to receive and enjoy the earnings, profits, rents, and revenues produced by or derived from the property.¹⁹  In Louisiana, those three facets of ownership may be allocated in various combinations among different persons, with each having less than full ownership.²⁰  For example, the owner of a legal usufruct ("usufructuary") has the right to use the property burdened with the usufruct (usus) and to enjoy the fruits of that property (fructus), but does not have the right to alienate the property (abusus); that right belongs to the naked owner, albeit subject to the usufruct.²¹ 

When the property in question is a copyright, allocation of these attributes of ownership within the community property framework, according to the rule we announce today, produces a division similar to usufruct but different in combination: The author-spouse alone holds the elements of usus and abusus -- a combination that comprises the exclusive rights to possess, use, transfer, alienate, and encumber the copyright as he sees fit -- free of any management, consent, or participation of the non-author spouse.²²  Obviously, § 106's "five fundamental rights" of reproduction, adaptation, publication, performance, and display are includable harmoniously in the conjointment of usus and abusus in the author-spouse. But the community during its existence (and the former spouses or other successors after its termination) holds the element of fructus, i.e., the right to receive and enjoy the economic benefits produced by or derived from the copyright.²³  The exclusive right of the author-spouse to the abusus of the copyright, like that of the naked owner of property burdened by a usufruct, is nevertheless subject to the continuing fructus rights of the community.

With those general Civil Law property concepts in mind, we turn next to the CivilCode's articles on marital property. In broadest form, the Code embodies the concept of "equal management" of property belonging to the community: Each spouse, acting alone, has the right to manage, control, or dispose of community property.²⁴  If this general principle were to be applied across the board to copyrights created by one spouse in community, however, an irreconcilable conflict with the author-spouse's five exclusive § 106 rights of reproduction, adaptation, publication, performance, and display would result. In apparent recognition that such conflicts would likely occur in connection with "movables issued or registered in" the name of one of the spouses,²⁵  the Civil Code specifies, as an exception to equal management, that such spouse alone has exclusive management rights (the combination of usus and abusus) but preserves for the spouses jointly the right to enjoy the benefits (the fructus) of such property. We conclude that copyrights come within the category of exceptional movablles contemplated by such provisions.²⁶ 

Numerous examples of exclusive management of community property and shared enjoyment of those assets exist: A paycheck issued by the employer in the name of the employee-spouse alone can be cashed, deposited, or otherwise negotiated only by that spouse; yet, the proceeds of the paycheck, representing earnings of one spouse in community, belong to the community. Likewise, a motor vehicle purchased with community funds but titled in the name of one spouse alone can be sold, leased, or encumbered only by the named spouse²⁷ ; yet the proceeds of any such disposition belong to the community. And when, during the existence of the community, one spouse joins an existing partnership or joins in the formation of a new one, the partner-spouse has the exclusive right to participate in the partnership and to manage, alienate, or encumber that interest; yet the economic benefits -- and liabilities -- flowing from the partnership belong to the community.²⁸ 

In concluding that copyrights should be treated the same as paychecks, cars, and partnership interests, we rely initially on Louisiana Civil Code article 2351 which proclaims that " [a] spouse has the exclusive right to manage, alienate, encumber, or lease movables issued or registered in his name as provided by law." This right of exclusive management of those kinds of movables is not coterminous with the community but continues until partition of the property formerly belonging to the community is complete.²⁹  Under Louisiana law a copyright is a "movable,"³⁰ and under federal law a copyright is issued or registered in the name of the author-spouse.³¹  In compatible combination, these two systems of law provide for the author-spouse's exclusive management of copyrights created during the existence of the community and thereafter until completion of the partition of the property of the former community, while at the same time ensuring that the non author-spouse is not deprived of his or her right to one-half of the economic benefits of the copyright.

The economic benefits that flow from particular types of one-spouse assets, including but not limited to cars, paychecks, partnership interests - and copyrights - can inure to the benefit of the community without doing violence to the legal results intended by the Louisiana Legislature or Congress in providing for vesting of title in one spouse only, results designed with third parties in mind, not spouses or other co-owners. In the context of these clearly established concepts and principles, we conclude that federal copyright law does not conflict with, and therefore does not preempt, Louisiana community property law to the extent of denying the entitlement of the non-author spouse (Veronica) to an undivided one-half interest in the economic benefits of the copyrighted works created by the author (George) during the existence of the community, and of the derivatives of such works following its termination.

In confirmation of this conclusion, we look first to the express preemption provision in the Act itself. When we do so we reach the same initial conclusion as did the district court, that the Act does not mandate the monolithic preemption of Louisiana community property law in toto. Section 301(a) of the Act states that "all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright . . . are governed exclusively by this title." For openers, "the general scope of copyright" is not broad enough to cover the entire body of marital property law; that is, copyright law does not occupy the entire "field" and thereby totally eclipse all state marital property law.³²  We do not understand George to quarrel with this basic premise.

Indeed, the Copyright Act, in defining the scope of its own preemptive effect, expressly acknowledges that state law continues to operate unless there is a direct and irreconcilable clash between a state law right and an exclusive right under the Act with which such state law right is equivalent. Section 301(b) expresses that " [n]othing in [§ 301(a) of the Copyright Act] annuls or limits any rights or remedies under the common law or statutes of any State with respect to . . . activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106."³³  To repeat, the only ownership rights that the Act grants exclusively to the author are the rights to (1) reproduce, (2) prepare derivative works, (3) distribute copies, (4) perform, and (5) display the work.³⁴  Among the entire "bundle" of rights comprising full ownership of property generally, the preemptive effect of federal copyright law extends onlyto this explicitly-enumerated, lesser-included quintet. As those five exclusive rights of the author conflict with Louisiana's general principle of equal management of community property, that principle cannot operate. InsteadCivil Code article 2351's special exception for exclusive management by one spouse applies.

Notably absent from the Copyright Act's exclusive sub-bundle of five rights is the right to enjoy the earnings and profits of the copyright. Nothing in the copyright law purports to prevent non-preempted rights from being enjoyed by the community during its existence or thereafter by the former spouses in community as co-owners of equal, undivided interests.

The § 301 preemption provision of the Copyright Act was intended to accomplish a "fundamental and significant change" in the existing state of the law, under which published works were governed by federal copyright law and unpublished works were governed by the common law of copyright. The new statute substituted a single, uniform system in place of the existing anachronistic and highly complicated dual system. That goal was accomplished in part by specifying a limited preemption which trumps only those common law or state law rights that are equivalent to federal copyright,³⁵  such as state laws that purport to grant copyright protection to particular works. We discern nothing in the Act's plain wording or legislative history to indicate that Congress ---- fully aware of the existence of community property laws in a number of states ---- had any intention of preempting that entire body of non-federal law as well.³⁶  Our conclusion is buttressed by the explicit clarification in § 301(b) (3), noted above, that the preemptive effect does not extend beyond the subject matter of the Act.

George nevertheless insists in the alternative that, even if § 301 preemption does not apply, "conflict preemption" does because designating copyrights as community property would do substantial damage to important federal interests.³⁷  In this argument, George fails (or refuses) to recognize the jurisprudential corollary that " [s]tate family and family-property law must do 'major damage' to 'clear and substantial' federal interests before the Supremacy Clause will demand that state law be overridden."³⁸  He attempts to bolster his conflict preemption argument by demonizing the Louisiana Civil Code doctrine of equal management: If copyrights were to be deemed community property, George contends, both he and Veronica would have the right, acting alone, to control, encumber, or dispose of the copyrights, which in turn would impair federal interests in uniformity and efficient exchange of rights to ensure predictability,³⁹  and in providing incentives to authors to create.⁴⁰  George argues that (1) copyrights will not be amenable to efficient or predictable exchange if spouses have equal rights to impair or dispose of such rights, possibly in conflicting manners, (2) predictability and uniformity will not be served if varying state laws are applied to copyright management issues, and (3) authors will have less incentive to create if they must share the fruits of their creative works. His reliance on these three arguments is misplaced.

George's first contention is negated by our ready recognition today that the author-spouse has the exclusive right to manage and control the copyright, i.e., to deal with it in any manner that is not inconsistent with federal copyright law. This conclusion is supported by our acknowledgment that the general rule of equal management is pre-empted vis a vis copyrights and by Louisiana Civil Code article 2351's provision for the exclusive management of movables registered or issued in the name of one spouse. As equal management does not apply to copyrights, federal interests in predictability and efficiency are not impaired by it. A potential purchaser or licensee will still be able to obtain good "title" from the author-spouse alone free of interference from the other spouse.⁴¹ 

George's second contention does not persuade us that allowing differing state laws ---- in particular, community property laws that differ from state to state among the eight that presently have some version of such marital property regimes⁴²  ---- to apply just to the economic benefit derived from copyrights will somehow damage the federal interests in predictability and uniformity. Indeed, the Act itself subjects copyrights to varying state laws for other purposes. For example, copyrights are expressly transferrable by conveyance,⁴³  yet such conventional transfers are governed by individual, non-uniform state contract laws, yet no significant obstruction of federal interests has occurred to prompt preemption.⁴⁴  In like manner, copyrights are expressly transferable by testamentary disposition or in intestacy,⁴⁵  either of which is likely to produce co-ownership of undivided interests in the copyright among the author's heirs or legatees. State law governs such death-related transfers and the resulting co-ownerships they produce, and does so routinely without impairing federal interests.⁴⁶  The litigation and management issues arising from contractual conveyance and post-mortem devolution of copyrights⁴⁷  has not resulted in obstruction of federal interests leading to preemption of state law, and we discern no reason why the community property result we decree today should fare differently.

As for George's third contention ---- that community entitlement to the "fruits" of copyrights would lessen the author's incentiveto create or exploit his works, thereby conflicting with the federal interest in encouraging authorship ---- we decline to assume globally that the commercial and economic interests of spouses during marriage are so at odds that one spouse would be disinclined to create copyrightable works merely because the economic benefits of his endeavors would inure to the benefit of their community rather than to his separate estate. As for a former spouse's lack of incentive following divorce, we perceive the presence of the proverbial stick and carrot. To mix metaphors, the carrot is the half-a-loaf incentive of the author to exploit pre-divorce copyrights to the best of his ability rather than shelve them and receive no benefit whatsoever; the stick is exemplified by the provision of the Louisiana Civil Code that specifies an affirmative duty "to manage prudently" former community property that remains under one spouse's exclusive control.⁴⁸  Indeed, that article imposes a higher duty on a spouse managing former community property than the Code otherwise imposes on that same spouse during the marriage⁴⁹  or on a third party co-owner who is not a former spouse.⁵⁰  "The reason for imposing a higher standard of care in managing former community property is that, after termination of the community property regime, the law no longer assumes that a spouse who has former community property under his control will act in the best interest of both spouses in managing it."⁵¹  Although we need not and therefore do not reach the question of specific management duties, we observe that this affirmative duty imposed by Louisiana law refutes George's argument regarding a former spouse's disincentive to exploit fully a copyright simply because the economic benefits are subject to community property laws. We are convinced that the duty imposed by Louisiana is consistent with ---- not contrary to ---- the federal interest in encouraging authorship and exploitation of copyrights, just as we are convinced that most if not all authors will continue to exploit their copyrights after termination of the community rather than cutting off their noses to spite their faces by letting copyrighted works languish.

Conclusion

In the end, we disagree with the district court only to the extent that it held the conflict between Louisiana community property law and federal copyright law irreconcilable absent congressional intercession. We therefore reverse the court's grant of summary judgment declaring George alone to be the owner of the blue dog and other copyrights created during his marriage to Veronica. Accordingly, we remand this case, appealed pursuant to Rule 54(b), for entry of an appropriate ruling regarding Veronica's rights with respect to the copyrights and for consistent disposition of all remaining issues still pending before that court.

Specifically, we instruct the district court to determine on remand which copyrights are subject to the rules of community property law that we announce today, either directly as works created during the existence of the community of acquets and gains or derivatively as works created after the termination of the community but based on pre-divorce works.⁵²  Eventhough the parties briefed the issue of derivative works in the instant appeal, the district court has not yet ruled on it so that issue is not ripe for our consideration and disposition. In holding that George alone is the owner of all copyrights in the artistic works, the district court denied Veronica's cross-motion for a summary judgment declaring her economic interests in the copyrights, including determination of which post-divorce works were derivative of the artwork created during the marriage. That ruling, however, was not certified to be a final judgment ready for appeal under Rule 54(b). As we now hold that Veronica does have economic rights with respect to the copyrights at issue, the district court must determine on remand which works are derivative as well.

We further instruct the district court, following such determinations, to enter judgment recognizing Veronica's entitlement to an undivided one-half interest in the net economic benefits generated by or resulting from copyrighted works created by George during the existence of the community and from any derivatives thereof. Such judgment also must recognize George's continued entitlement to the exclusive control and management of the five rights in such intellectual property specified in § 106, albeit subject to his duty to "manage prudently" all such copyrights and derivatives thereof under his control.⁵³ 

We acknowledge that it is for the state court that has jurisdiction over judicial partition and settlement of the Rodrigue community to determine both the proper method for establishing the value of Veronica's share of these net economic benefits and the proper procedure for delivery of that share to her, whether that be, for example, by (1) an accounting based on the present value of the appraised fair market value of the fully exploited copyrights and derivatives during their expected lifetimes, (2) periodic accountings and payments to Veronica as the copyrights and derivatives are exploited and proceeds are derived from them, or (3) some other altogether different procedure.⁵⁴  It follows, of course, that Veronica may continue to pursue judicial partition of former community property in that forum.

Finally, in the interest of judicial economy, we reserve to this panel limited appellate jurisdiction over this case with respect to future appeals ---- if any ---- from judgments rendered by the district court on remand in implementation of our instructions.

REVERSED and REMANDED WITH INSTRUCTIONS.