The opinion of the court was delivered by: LEINENWEBER
HARRY D. LEINENWEBER, UNITED STATES DISTRICT JUDGE
A professional free-lance photographer, Stan Malinowski ("Malinowski"), has brought this action against Playboy Enterprises, Inc. ("Playboy") claiming copyright infringement and quantum meruit. The suit involves two sets of photographs taken by Malinowski at Playboy's request, some of which were published by Playboy in its magazine. Defendant has counterclaimed seeking declaratory judgment that it is the owner of the copyrights to the photographs in question and seeking to enjoin plaintiff from publishing or otherwise exploiting any of them. The parties have filed cross-motions for summary judgment.
Piecing together the facts that appear to be uncontested the following unfolds: Malinowski is a professional fashion and beauty photographer with an office in Chicago, has thirty years of experience, and is well-known in the fashion and beauty photography world. Playboy is a corporation that has its principal place of business in Chicago. Playboy is the publisher of Playboy magazine, a monthly magazine that regularly includes within its pages photographs taken for it by professional photographers. During its almost thirty-five years of existence Playboy has regularly hired free-lance photographers to take photographs.
A. Carrie Leigh Photographs
In the summer of 1985 Hugh Hefner, the Editor and Publisher of Playboy magazine, decided that the magazine would publish a feature containing photographs of Carrie Leigh ("Leigh"), who was his then live-in girlfriend and the "first lady of the Playboy mansion." Marilyn Grabowski ("Grabowski"), Playboy's West Coast Photo Editor, was responsible for conceiving and producing this feature. During that same summer Grabowski called Malinowski and asked him if he would be available to take photographs of Leigh. Malinowski was selected primarily because he had done previous similar work for Playboy and he was known to be a reliable professional photographer.
Malinowski agreed to accept the assignment. The parties therefore entered into an oral agreement whereby Malinowski agreed to photograph Leigh and in return Playboy agreed to pay him for his services and expenses, including a page rate if the photographs were published in the magazine. The oral agreement was silent as to ownership of the copyright. There was some evidence submitted that in the past Playboy routinely issued assignment sheets, i.e., a document setting forth the terms and conditions of the oral agreement to take photographs, which included a statement that Playboy was to own the copyrights to the photographs. In the case of the Leigh photographs, through an oversight, no assignment sheet was sent by Playboy to Malinowski.
Photographs of Leigh were taken at Playboy's studio in Los Angeles in August and September of 1985. On or about October 23, 1985 Malinowski sent an invoice in the amount of $ 13,598.55 to Playboy covering the Leigh photography.
On January 28, 1986 Playboy issued a check in the full amount of Malinowski's invoice in payment for the Leigh photography.
Playboy's accounting department stamped a legend on the back of the check stating:
"ANY ALTERATION OF THIS LEGEND-AGREEMENT VOIDS THIS CHECK. CONTAINS THE ENTIRE UNDERSTANDING OF THE PARTIES AND CANNOT BE CHANGED EXCEPT BY WRITING SIGNED BY BOTH PARTIES. BY ENDORSEMENT, PAYEE: acknowledges payment in full for the services rendered on a work made for hire basis in connection with the work named on the face of this check, it confirms ownership by Playboy Enterprises, Inc. of all rights, title and interest, including all rights of copyright, in and to the work."
Malinowski through a white-out process deleted the stamped legend and added the following counter-legend to the check:
"All photos: copyright Stan Malinowski 1986."
Malinowski then negotiated the check by depositing it in his bank. However on or about March 5, 1986 Playboy advised Malinowski that it was reclaiming the money because of Malinowski's assertion of copyright ownership in the photographs. Playboy subsequently obtained the return of the proceeds from Malinowski's account on the grounds that Malinowski had altered Playboy's legend. Playboy never made any other payment to Malinowski for the Leigh photographs.
On April 3, 1986 and April 24, 1986 Malinowski wrote to Playboy asserting his copyright ownership in the photographs and advised Playboy not to make unauthorized use of the photographs. Playboy subsequently published two of Malinowski's Leigh photographs in the July 1986 issue of Playboy magazine. The final pre-publication date after which changes could not feasibly be made to the contents of the July issue was March 24, 1986. On May 2, 1986 Malinowski sent to the United States Copyright office an application for a copyright registration for four of the photographs of Leigh, none of which was among those that were published by Playboy.
In January 1986 Playboy decided to run a fashion pictorial featuring swim wear in its June 1986 issue. James Larson ("Larson"), Associate Photo Editor for Playboy magazine, was responsible for the photographs for this issue. He and other Playboy personnel decided that the photos for the June 1986 issue should be shot in Jamaica by a free-lance photographer. Subsequently Malinowski was asked to and did accept the assignment. In return Playboy agreed to pay Malinowski for his services in taking the photographs and for his expenses incurred. After the agreement was reached Larson sent to Malinowski's studio an assignment sheet dated January 28, 1986 which set forth and highlighted terms of Playboy's acquisition of all rights to the photographs and that the photographs would be understood to be works made for hire. The assignment sheet required Malinowski to sign a copy and return the signed copy to Playboy. Malinowski denies receiving the assignment sheet prior to completing the assignment. When he did receive the assignment sheet he crossed out every line on it, signed it, and returned it to Playboy. Playboy subsequently refused to pay Malinowski's invoice for the swim wear assignment.
On May 7, 1986 Malinowski registered in his own name and claimed copyright ownership of the photographs taken for the swim wear issue. On May 23, 1986 Playboy registered with the United States Copyright office its copyright in the June 1986 issue of Playboy magazine.
Malinowski's Statement of Material Facts includes the following:
14. Grabowski contacted Malinowski and asked him if he would be interested in doing the assignment. He agreed to do the assignment.
15. Playboy agreed to pay Malinowski for his professional services and expenses and agreed to pay a "pay rate" if the photographs were published in the magazine.
16. At no time did Grabowski or Playboy discuss copyright ownership of the Leigh photographs with Malinowski.
33. Larson contacted Malinowski and asked him if he would be interested in doing the [swim wear] assignment. Malinowski agreed to do the assignment.
34. Playboy agreed to pay Malinowski for his professional services and expenses and agreed to pay a "pay rate" if the ...