Monthly Archives: February 2014

Copyright Class 6 – Joint Authorship

So, what we will be looking at this week is two special categories of authorship: joint authorship and works for hire. We’ll examine what the law says about each and then what  impact that has for writers. I’m going to split them into two different posts to keep the length down to a manageable level. So today, it’s joint authorship.

What happens when two or more people contribute to a single work of authorship? That is the basic question we will start with.

Copyright law uses the term joint authors while the copyright act refers to joint works. You may also see terms like co-authors and collaborators.

Section 101 of the Copyright Act provides the following definition:

A “joint work” is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.

The first aspect to note is that the statute defines what qualifies as a joint work, and thus who qualifies as joint authors. What I want you to take away from that initially is that you cannot simply decide who is a joint author. Each putative joint author has to do “something.” So you can’t write a book and then make your best friend is going to be a joint author. You can of course make them a co-owner of the copyright by transferring half of your ownership interest to them, but that does not make them a joint author.

Now, we will see that intending joint authorship status is likely necessary to being joint authors, but it is not  sufficient by itself to create joint authorship. So a court may require that you have intended for the other person to be a joint author, but that by itself won’t accomplish it.

So, what do you have to do to qualify as a joint author?

Let’s look at our first case: Childress v. Taylor. Here’s what led up to the case:

Moms Mabley

Defendant Clarice Taylor has been an actress for over forty years, performing on stage, radio, television, and in film. After portraying “Moms” Mabley in a skit in an off-off-Broadway production ten years ago, Taylor became interested in developing a play based on Mabley’s life. Taylor began to assemble material about “Moms” Mabley, interviewing her friends and family, collecting her jokes, and reviewing library resources.

In 1985, Taylor contacted the plaintiff, playwright Alice Childress, about writing a play based on “Moms” Mabley. Childress had written many plays, for one of which she won an “Obie” award. Taylor had known Childress since the 1940s when they were both associated with the American Negro Theatre in Harlem and had previously acted in a number of Childress’s plays.

When Taylor first mentioned the “Moms” Mabley project to Childress in 1985, Childress stated she was not interested in writing the script because she was too occupied with other works. However, when Taylor approached Childress again in 1986, Childress agreed, though she was reluctant due to the time constraints involved. Taylor had interested the Green Plays Theatre in producing the as yet unwritten play, but the theatre had only one slot left on its summer 1986 schedule, and in order to use that slot, the play had to be written in six weeks.

Taylor turned over all of her research material to Childress, and later did further research at Childress’s request. It is undisputed that Childress wrote the play, entitled “Moms: A Praise Play for a Black Comedienne.” However, Taylor, in addition to providing the research material, which according to her involved a process of sifting through facts and selecting pivotal and key elements to include in a play on “Moms” Mabley’s life, also discussed with Childress the inclusion of certain general scenes and characters in the play. Additionally, Childress and Taylor spoke on a regular basis about the progress of the play.

Taylor identifies the following as her major contributions to the play: (1) she learned through interviews that “Moms” Mabley called all of her piano players “Luther,” so Taylor suggested that the play include such a character; (2) Taylor and Childress together interviewed Carey Jordan, “Moms” Mabley’s housekeeper, and upon leaving the interview they came to the conclusion that she would be a good character for the play, but Taylor could not recall whether she or Childress suggested it; (3) Taylor informed Childress that “Moms” Mabley made a weekly trip to Harlem to do ethnic food shopping; (4) Taylor suggested a street scene in Harlem with speakers because she recalled having seen or listened to such a scene many times; (5) the idea of using a minstrel scene came out of Taylor’s research; (6) the idea of a card game scene also came out of Taylor’s research, although Taylor could not recall who specifically suggested the scene; (7) some of the jokes used in the play came from Taylor’s research; and (8) the characteristics of “Moms” Mabley’s personality portrayed in the play emerged from Taylor’s research. Essentially, Taylor contributed facts and details about “Moms” Mabley’s life and discussed some of them with Childress. However, Childress was responsible for the actual structure of the play and the dialogue.

Childress completed the script within the six-week time frame. Childress filed for and received a copyright for the play in her name. Taylor produced the play at the Green Plays Theatre in Lexington, New York, during the 1986 summer season and played the title role.

Childress and Taylor then had a falling out when they could not agree how to proceed with the play after a few initial runs. After that falling out, Taylor hired a different playwright, gave him a copy of the play written by Childress, and told him which parts to change. That second play was produced in 1987.

Childress sued Taylor and the others involved in the second play for copyright infringement, among other things. In defense, Taylor claimed that she was a joint author of the original play. You see, if she were a joint author of the original, then she would have equal rights with Taylor and thus would be able to do whatever she wanted with the first play without it being copyright infringement (though she would have to account to Taylor for any profits).

The court looked at the definition of a joint work from section 101 of the Copyright Act and identified three essential elements necessary to qualify as a joint author: (1) a copyrightable contribution, (2) the requisite intention, and (3) a unitary whole.  It is the first two that are at issue in most disputes.  The court explained those two:

Nevertheless, we are persuaded to side with the position taken by the case law and endorsed by the agency administering the Copyright Act. The insistence on copyrightable contributions by all putative joint authors might serve to prevent some spurious claims by those who might otherwise try to share the fruits of the efforts of a sole author of a copyrightable work, even though a claim of having contributed copyrightable material could be asserted by those so inclined. More important, the prevailing view strikes an appropriate balance in the domains of both copyright and contract law. In the absence of contract, the copyright remains with the one or more persons who created copyrightable material. Contract law enables a person to hire another to create a copyrightable work, and the copyright law will recognize the employer as “author.” 17 U.S.C. s 201(b). Similarly, the person with non- copyrightable material who proposes to join forces with a skilled writer to produce a copyrightable work is free to make a contract to disclose his or her material in return for assignment of part ownership of the resulting copyright. Id. s 201(d). And, as with all contract matters, the parties may minimize subsequent disputes by formalizing their agreement in a written contract. Cf. 17 U.S.C. s 101 (“work made for hire” definition of “specially ordered” or “commissioned” work includes requirement of written agreement). It seems more consistent with the spirit of copyright law to oblige all joint authors to make copyrightable contributions, leaving those with non-copyrightable contributions to protect their rights through contract.

There remains for consideration the crucial aspect of joint authorship–the nature of the intent that must be entertained by each putative joint author at the time the contribution of each was created. The wording of the statutory definition appears to make relevant only the state of mind regarding the unitary nature of the finished work–an intention “that their contributions be merged into inseparable or interdependent parts of a unitary whole.” However, an inquiry so limited would extend joint author status to many persons who are not likely to have been within the contemplation of Congress. For example, a writer frequently works with an editor who makes numerous useful revisions to the first draft, some of which will consist of additions of copyrightable expression. Both intend their contributions to be merged into inseparable parts of a unitary whole, yet very few editors and even fewer writers would expect the editor to be accorded the status of joint author, enjoying an undivided half interest in the copyright in the published work. Similarly, research assistants may on occasion contribute to an author some protectable expression or merely a sufficiently original selection of factual material as would be entitled to a copyright, yet not be entitled to be regarded as a joint author of the work in which the contributed material appears. What distinguishes the writer-editor relationship and the writer- researcher relationship from the true joint author relationship is the lack of intent of both participants in the venture to regard themselves as joint authors.

The court went on to find that Childress had not had the requisite intent to be a joint author with Taylor. The court deduced that intent not from the playwright’s statements during litigation but rather from objective indicia contemporaneous to the creation and production of the play.

A different court came to an identical conclusion given very similar facts in Erickson v. Trinity Theater. Erickson held both that each putative joint authors contributions had to be separately copyrightable and that each author have the requisite intent described in Childress.

Take note of the step that Childress took and that Erickson followed with respect to intent. The statute appears to require only that the putative joint authors have created their contributions with the contemporaneous intent to joint that contribution with someone else’s contribution to form a unitary work. It’s their intention in the act of creation. However, the Childress court, later followed by the Erickson court, added to that intention requirement by saying that each putative joint author had to intend the legal status of joint authorship.

This reflects judicial hostility toward finding joint authorship. That hostility stems from the broad, virtually unchecked rights granted to joint authors. A joint author can do whatever they want with the copyrighted work without the need to seek any permission whatsoever from the other joint author. The only “limit” is that one joint author has to account to the other joint author for any profits from said activity. But if one joint author wanted to give the work away, the other joint author could do nothing about it.  As the court in Childress said,

Intent matters.

Intent matters.

Examination of whether the putative co-authors ever shared an intent to be co- authors serves the valuable purpose of appropriately confining the bounds of joint authorship arising by operation of copyright law, while leaving those not in a true joint authorship relationship with an author free to bargain for an arrangement that will be recognized as a matter of both copyright and contract law. Joint authorship entitles the co-authors to equal undivided interests in the work, see 17 U.S.C. s 201(a); Community for Creative Non-Violence v. Reid, 846 F.2d 1485, 1498 (D.C.Cir.1988), aff’d without consideration of this point, 490 U.S. 730, 109 S.Ct. 2166, 104 L.Ed.2d 811 (1989). That equal sharing of rights should be reserved for relationships in which all participants fully intend to be joint authors. The sharing of benefits in other relationships involving assistance in the creation of a copyrightable work can be more precisely calibrated by the participants in their contract negotiations regarding division of royalties or assignment of shares of ownership of the copyright, see 17 U.S.C. s 201(d).

There are several other interesting cases in this area: Neil Gaiman and Todd McFarlane fighting over joint authorship of some side characters in the Spawn universe in Gaiman LLC v. McFarlane; an expert on Malcom X claiming joint authorship in the Spike Lee movie based on consulting work done on set in Aalmuhammed v. Lee; and a very recent case about an actress in the video “Innocence of Muslims” claiming a copyright interest in her parts of the video. In the last case, the underlying situation was similar to other joint authorship cases but her legal claims were slightly different.

So what should you take away from this as an author?

First, you don’t need to worry too much about losing a case in which an editor or critique group member claims to be a joint author of your work. Intent within a working relationship is very important. (But not this sort of intent.)

Second, because the default rules for joint authors do very little to regulate control between the two joint authors, you really should not rely on the default rules. Instead, you should have collaboration agreement with any co-authors. See this earlier post.

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Copyright Class 5 – Snow Delay

Can't … reach … keyboard ...

Can’t … reach … keyboard …

 

Our regularly scheduled class will be snow delayed.  The winter fun has altered my travel plans which has in turn pushed this blog post back a day or two. I should be able to get the class up by Saturday night or Sunday at the latest.

Once I post it, we will be talking about two special types of authorship under US copyright law: Joint Authorship and Work for Hire. The cases we will be reading are Childress v. Taylor and CCNV v. Reid, in case you want to get a head start.

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Copyright Class 4 – Superstars Special Edition

Today I’m going to take a slight detour with the class. The live class at the law school is canceled today because I am in Colorado Springs speaking at the Superstars Writing Seminar. So what I thought I would do today is share with you some of the thoughts that I am including in my talk at the seminar. My session is basically a primer on copyright and other intellectual property law for authors. For class today, I am going to focus on two of the most important parts of my talk: “a bundle of sticks” and “can I?”

A Bundle of Sticks

Understanding this metaphor is important to making proper business decisions regarding one of your primary assets as a writer – your copyright.

In law, we use the metaphor of a bundle of sticks to describe property. Typically, a lay person (i.e. someone who is not trained as a lawyer) would think that property is a thing – a ring, a car, or a house.  For a lawyer, property is an intangible set of rights. The thing – the ring, the car, the house – are the subjects of property. They are the things to which the rights attach.

A bundle of sticks is the metaphor we use to describe that intangible set of rights. We describe it as a bundle of sticks rather than saying it is a single stick because each of those sticks can be owned by different people. For example, if someone owns an easement right of way over your land, then ownership is split. You own most of the sticks in the bundle, but the owner of the easement owns a few sticks in that bundle.

How does this relate to copyright?

Copyright is a type of property. Instead of being an intangible set of rights that attach to a physical object, copyright is an intangible set of rights that attach to an intangible object – the work of authorship. So copyright can also be thought of as a bundle of sticks.

Why is understanding this so important for writers?

You can (and often should) transfer the sticks in that bundle separately.  In fact, one of the most important parts of negotiating any contract is looking at which sticks are transferred and making certain that you are not transferring more sticks than what you are being paid for. If someone is paying you a value that is appropriate for book rights in North America but you are granting that person all of the sticks in the bundle, all of the copyright, then you are giving away value.

Can I?

I frequently get questions from authors along the lines of “Can I do this”? An example would be “Can I use song lyrics in my short story?”

That is a question that seems straightforward but I maintain that it is really three questions. Or at least, writers should think about it as three different questions.  Here are the three questions for traditional publishing:

  • What will a court of law determine?
  • Will I have to defend a suit by a copyright holder?
  • How will an editor/publisher react to the possibility of a lawsuit?

For indie publishing, the third question is slightly different:

  • What will a court of law determine?
  • Will I have to defend a suit by a copyright holder?
  • How will a retailer react to a take-down notice from the rights holder?

The first question is what both the writer and the lawyer typically think of first. It is important and it impacts the other question, but it may not be what drives your ultimate decision.

The second question (“Will I have to defend a suit by a copyright holder?”) may drive your decision because having to litigate a lawsuit may cost you a lot of money and time, even if you ultimately win the case in slam dunk fashion. You have to ask yourself if this particular part of your story, the element that may get you sued, is worth the risk of that cost. What is your purpose? Is it to make a living? Is it to make a point that requires the questionable content?

The third question (“How will an editor/publisher react to the possibility of a lawsuit?”) keys on your ability to get past a gatekeeper in traditional publisher. If you include something in your story or novel that scares an editor or publisher about the possibility of getting sued, then that may make the editor reject your work in favor of a work of similar quality that does not carry the same risk. For indie publishers, you have to worry about a retailer (e.g. Amazon) pulling your book if they are threatened by a rights holder.

Thus, questions two and three quite often will dictate your choice even without having a full answer to the first question or even when the answer to the first question is that you would win the lawsuit.

I’ve discussed this in detail previously, a discussion you can find here.

So, how might this relate to what we have talked about in this class so far? Recall what we talked about last week

Judge Hand started his analysis by pointing out that if literal copying were required in order for infringement to be found, then it would be painfully easy for someone to copy a work while escaping liability. Would you think someone could just change the names of the characters in a book and thereby escape from copyright infringement? Clearly not. Thus it should be apparent that an exact word for word copy is not necessary for a plaintiff to make out a basis for infringement.

However, if the copier only takes the most basic premise, then the copier may not be an infringer. Note that the case is not talking about a motion picture that happens to be similar to a play. The analysis and conclusion assumes that the creators of the movie did take the premise from the play – and still found no infringement.

But when the plagiarist does not take out a block in situ, but an abstract of the whole, decision is more troublesome. Upon any work, and especially upon a play, a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may perhaps be no more than the most general statement of what the play is about, and at times might consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his “ideas,” to which, apart from their ex- pression, his property is never extended.

This series of abstractions is at the heart of what we call the idea/expression dichotomy. Ideas are not protected but expression is. Thus, copying ideas is not infringement while copying expression is. But what constitutes “idea” and what constitutes “expression”? That’s where the series of abstractions comes into play.

So, you’ve written a book that has a plot similar to another book. Can you do that? Well, we could do the analysis described by Judge Hand. We could apply the idea/expression and try to answer the question of what a court would conclude. But we should also consider the likelihood we might be sued and whether an editor we might submit our book to might not want to publish our book because it is too similar to the other book.

The answers to the second and third questions may be more influential in your decision-making than the answer to the first question. Now, the questions are all related. The closer the call is on the first question, the more certain we are that the action is infringing, the more likely we will reach negative answers on questions two and three.

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