Copyright Class 8 – Infringement, Part 1

This week we move into a complicated topic – copyright infringement. This one will be a multi-class topic. The law on the second element of infringement, which we will take up next week, is one of the more confusing and confused parts of copyright law.

We have three cases this week, all involving music. First up is a classic case from the 1940’s, Arnstein v. Porter. That case sets up the two elements of proving infringement: copying and improper appropriation. Then we have two cases examining the first element, copying: Selle v. Gibb and Bright Tunes Music v. Harrisongs Music, Inc.

The Basic Infringement Analysis – Arnstein v. Porter

Ira Arnstein sued Cole Porter claiming that a number of songs recorded by Porter infringed the copyright in a number of Arnstein’s musical works. The Second Circuit, in reviewing the decision of the lower court, set out the two elements a plaintiff needs to prove to make a case for copyright infringement.

[I]t is important to avoid confusing two separate elements essential to a plaintiff’s case in such a suit: (a) that defendant copied from the plaintiff’s copyrighted work and (b) that the copying (assuming it to be proved) went so far as to constitute improper appropriation.

So, a copyright owner has to prove that the defendant copied from the plaintiff’s protected work and that what the defendant copied was protected by copyright.

Cole Porter - Composing or Copying?

Cole Porter – Composing or Copying?

The easiest way to understand the reason you have to separately show copying is to understand what is not copying and therefore not infringement. It is not copying if the defendant came up with the allegedly infringing work on their own without copying (consciously or unconsciously from the plaintiff’s work), even if the two works are identical. That is a maxim of copyright law, though we will see that a defendant whose work is strikingly similar to a plaintiff’s work may have difficulties even if he came up with the work on his own. A court won’t disregard the need to find the copying occurred, but if the two works are identical, the court may have a hard time believing that the defendant did not copy the plaintiff’s work.

Another way in which two works might be very similar and yet not have resulted from one copying the other is if both the plaintiff’s work and the defendant’s work were copied from the same third source. If the plaintiff copied from an older work and the defendant copied from the same old work, the two resulting works could be very similar and yet the defendant did not copy the plaintiff’s work.

Copying can be established either by showing direct or indirect evidence of copying. Direct evidence might be an admission by the defendant, testimony of third parties who witnessed the copying, or some other proof. We saw one other way in Feist v. Rural Telephone Co a few weeks ago. Rural Telephone had inserted a few fake names and numbers in their telephone book in order to detect copying.

Indirect evidence involves the court drawing an inference that copying occurred from circumstantial evidence. Basically, if the plaintiff can show that the defendant had access to the work and that there is substantial similarity between the plaintiff’s work and the defendant’s work, then the court can infer copying took place. The defendant can rebut such an inference by introducing evidence of how the work was created independently.

More controversially, the Arnstein court said that even in the absence of any evidence of access to the plaintiff’s protected work, the inference of copying can still be made if the two works are strikingly similar. Other courts frequently recite this possibility but some courts have said that there needs to be some evidence of access, with the strength of the access evidence varying conversely with the needed level of similarity. Selle v. Gibb takes up this issue.

The improper appropriation element asks a different question. Once the plaintiff has established that the defendant copied form the plaintiff’s work, the plaintiff still has to prove that what the defendant copied is something protected by copyright. For example, ideas are not protected by copyright. So a defendant could admit to stealing the ideas from the plaintiff’s work without having to worry about infringing the plaintiff’s rights under copyright. We’ll look at this element in more detail next week.

Copying – Selle v. Gibb and Bright Tunes Music v Harrisong Music

Is Travolta pointing at copyright infringers?

Is Travolta pointing at copyright infringers?

Selle maintained that the Bee Gee’s song “How Deep Is Your Love” infringed his song “Let It End” (listen for yourself). Selle brought in an expert, a professor of music, who testified about the similarity of the two songs.

According to Dr. Parsons’ testimony, the first eight bars of each song (Theme A) have twenty-four of thirty-four notes in plaintiff’s composition and twenty-four of forty notes in defendants’ composition which are identical in pitch and symmetrical position. Of thirty-five rhythmic impulses in plaintiff’s composition and forty in defendants’, thirty are identical. In the last four bars of both songs (Theme B), fourteen notes in each are identical in pitch, and eleven of the fourteen rhythmic impulses are identical. Both Theme A and Theme B appear in the same position in each song but with different intervening material.

Dr. Parsons testified that, in his opinion, “the two songs had such striking similarities that they could not have been written independent of one another.” He also testified that he did not know of two songs by different composers “that contain as many striking similarities” as do the two songs at issue here. However, on several occasions, he declined to say that the similarities could only have resulted from copying.

Despite what might have qualified as striking similarity, the trial judge overturned a jury verdict in the plaintiff’s favor because the judge said that the plaintiff had not met their burden of proof on the element of copying. More specifically, the judge said that they needed some proof that the defendants had access to the plaintiff’s song, something that extended beyond mere speculation or conjecture.

As a threshold matter, therefore, it would appear that there must be at least some other evidence which would establish a reasonable possibility that the complaining work was available to the alleged infringer. As noted, two works may be identical in every detail, but, if the alleged infringer created the accused work independently or both works were copied from a common source in the public domain, then there is no infringement. Therefore, if the plaintiff admits to having kept his or her creation under lock and key, it would seem logically impossible to infer access through striking similarity. Thus, although it has frequently been written that striking similarity alonecan establish access, the decided cases suggest that this circumstance would be most unusual. The plaintiff must always present sufficient evidence to support a reasonable possibility of access because the jury cannot draw an inference of access based upon speculation and conjecture alone.

In granting the defendants’ motion for judgment notwithstanding the verdict, Judge Leighton relied primarily on the plaintiff’s failure to adduce any evidence of access and stated that an inference of access may not be based on mere conjecture, speculation or a bare possibility of access. 567 F.Supp. at 1181. Thus, in Testa v. Janssen, 492 F.Supp. 198, 202-03 (W.D.Pa. 1980), the court stated that “[t]o support a finding of access, plaintiffs’ evidence must extend beyond mere speculation or conjecture. And, while circumstantial evidence is sufficient to establish access, a defendant’s opportunity to view the copyrighted work must exist by a reasonable possibility — not a bare possibility” (citation omitted).

It should also be noted that the Bee Gee’s introduced quite a bit of testimony about the process by which they created their song “How Deep Is Your Love.”

In Bright Tunes, the plaintiff claimed the that George Harrison’s song “My Sweet Lord” infringed “He’s So Fine” composed by Ronald Mack and recorded by The Chiffons.

Did they always leave the ‘c’ as lowercase or was it just done here to accommodate her right foot?

Here, unlike Selle’s “Let It End”, The Chiffon’s “He’s So Fine” enjoyed quite a bit of popular success. It was #1 in America for a time and was a top hit in England as well. So access was easily established. Substantial similarity was also shown fairly easily. The main import of this particular case is that the court accepted that George Harrison did not intentionally or consciously copy “He’s So Fine.” The court accepted Harrison’s proffered description of how he wrote and composed “My Sweet Lord.” However, the court said it did not matter that the copying was unconscious; it still satisfied that element of the copyright infringement analysis.

What happened? I conclude that the composer, in seeking musical materials to clothe his thoughts, was working with various possibilities. As he tried this possibility and that, there came to the surface of his mind a particular combination that pleased him as being one he felt would be appealing to a prospective listener; in other words, that this combination of sounds would work. Why? Because his subconscious knew it already had worked in a song his conscious mind did not remember. Having arrived at this pleasing combination of sounds, the recording was made, the lead sheet prepared for copyright and the song became an enormous success. Did Harrison deliberately use the music of He’s So Fine? I do not believe he did so deliberately. Nevertheless, it is clear that My Sweet Lord is the very same song as He’s So Fine with different words, and Harrison had access to He’s So Fine. This is, under the law, infringement of copyright, and is no less so even though subconsciously accomplished.

Next week – Improper Appropriation

So copying is the first element that must be shown. Well technically you have to show ownership of a valid copyright first, but once that is done, the court moves on to the two step infringement analysis. Once copying is established the next step in the analysis is to prove improper appropriation. Next week!

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A Second Guest Post – The Basics of Copyright

I have a second guest post up today on The Fictorians. It covers, as the title suggests, the basics of copyright.

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Guest Post on Fictorians – What is IP?

Today, I have a guest post up on The Fictorians entitled Intellectual Property – What is it? First, it relates how lawyers conceptualize property, including property in objects of the mind – in other words, intellectual property. Then it gives a brief description of the major types of IP.

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Copyright Class 7 – Work For Hire

Last week we looked at one special type of authorship, joint authorship. This week, we will be examining the other special type of authorship, work for hire. This is one of areas of copyright that I see misused or misstated quite often.

What is a Work For Hire?

Section 101 of the Copyright Act provides two ways that a work can be a work for hire (or work made for hire in the Act’s terminology):

A “work made for hire” is—

(1) a work prepared by an employee within the scope of his or her employment; or

(2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a “supplementary work” is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an “instructional text” is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.

An Employee Within the Scope of His or Her Employment

Let’s consider the first means – a work created by “an employee within the scope of his or her employment.” For many years, courts developed their own tests specifically for this area of copyright. They focused on whether the hiring party had the right to control or actually controlled aspects of the creation of the work. However, the Supreme Court swept these aside in our primary case for today’s class, CCNV v. Reid (oral arguments).

The Community for Creative Non-Violence, an organization devoted to combatting homelessness, made the decision to commission a sculpture:

Snyder and fellow CCNV members conceived the idea for the nature of the display: a sculpture of a modern Nativity scene in which, in lieu of the traditional Holy Family, the two adult figures and the infant would appear as contemporary homeless people huddled on a streetside steam grate. The family was to be black (most of the homeless in Washington being black); the figures were to be life-sized, and the steam grate would be positioned atop a platform “pedestal,” or base, within which special effects equipment would be enclosed to emit simulated “steam” through the grid to swirl about the figures. They also settled upon a title for the work — “Third World America” — and a legend for the pedestal: “and still there is no room at the inn.”

Snyder, on behalf of CCNV, began to negotiate with a Baltimore-based sculptor, James Earl Reid.

In the course of two telephone calls, Reid agreed to sculpt the three human figures. CCNV agreed to make the steam grate and pedestal for the statue. Reid proposed that the work be cast in bronze, at a total cost of approximately $100,000 and taking six to eight months to complete. Snyder rejected that proposal because CCNV did not have sufficient funds, and because the statue had to be completed by December 12 to be included in the pageant. Reid then suggested, and Snyder agreed, that the sculpture would be made of a material known as “Design Cast 62,” a synthetic substance that could meet CCNV’s monetary and time constraints, could be tinted to resemble bronze, and could withstand the elements. The parties agreed that the project would cost no more than $15,000, not including Reid’s services, which he offered to donate. The parties did not sign a written agreement. Neither party mentioned copyright.

After Reid received an advance of $3,000, he made several sketches of figures in various poses. At Snyder’s request, Reid sent CCNV a sketch of a proposed sculpture showing the family in a creche-like setting: the mother seated, cradling a baby in her lap; the father standing behind her, bending over her shoulder to touch the baby’s foot. Reid testified that Snyder asked for the sketch to use in raising funds for the sculpture. Snyder testified that it was also for his approval. Reid sought a black family to serve as a model for the sculpture. Upon Snyder’s suggestion, Reid visited a family living at CCNV’s Washington shelter, but decided that only their newly born child was a suitable model. While Reid was in Washington, Snyder took him to see homeless people living on the streets. Snyder pointed out that they tended to recline on steam grates, rather than sit or stand, in order to warm their bodies. From that time on, Reid’s sketches contained only reclining figures.

ccnv v reid sculptureThroughout November and the first two weeks of December, 1985, Reid worked exclusively on the statue, assisted at various times by a dozen different people who were paid with funds provided in installments by CCNV. On a number of occasions, CCNV members visited Reid to check on his progress and to coordinate CCNV’s construction of the base. CCNV rejected Reid’s proposal to use suitcases or shopping bags to hold the family’s personal belongings, insisting instead on a shopping cart. Reid and CCNV members did not discuss copyright ownership on any of these visits.

On December 24, 1985, 12 days after the agreed-upon date, Reid delivered the completed statue to Washington. There it was joined to the steam grate and pedestal prepared by CCNV, and placed on display near the site of the pageant. Snyder paid Reid the final installment of the $15,000. The statue remained on display for a month.

The statue was then returned to the sculptor for minor repairs. At that point, the relationship between the two parties began to sour. CCNV asked for the sculpture to be returned to them so that they could take it on a multi-city tour. Reid refused, claiming that the sculpture had not been made to withstand such a tour. The eventual result was the litigation between the parties that made its way all the way to the Supreme Court.

Reid argued that he owned the copyright in the statue. He sculpted it after all. CCNV argued that they owned the copyright because the sculpture was a work for hire. CCNV could not argue that it was a work for hire under the second definition in 101 because there was no contract and because a sculpture was not one of the specific types of works listed in the second definition that could be converted into a work for hire by a contract. So instead, they argued that Reid had created the sculpture as an employee acting within the scope of his employment.

The Supreme Court rejected CCNV’s claim and in the course of doing so also established the legal rule for making a determination under the first work for hire definition. Previously, lower courts had developed special tests (right to control, actual control) for figuring out when a work was created by “an employee within the scope of his or her employment.” The Supreme Court rejected those tests, holding instead that the determination was made by “using principles of the general common law of agency, [to ascertain] whether the work was prepared by an employee or an independent contractor.”

The Court identified a number of factors a court should consider in making that determination:

In determining whether a hired party is an employee under the general common law of agency, we consider the hiring party’s right to control the manner and means by which the product is accomplished. Among the other factors relevant to this inquiry are the skill required; the source of the instrumentalities and tools; the location of the work; the duration of the relationship between the parties; whether the hiring party has the right to assign additional projects to the hired party; the extent of the hired party’s discretion over when and how long to work; the method of payment; the hired party’s role in hiring and paying assistants; whether the work is part of the regular business of the hiring party; whether the hiring party is in business; the provision of employee benefits; and the tax treatment of the hired party.

The list is non-exhaustive and no single factor is determinative. A court evaluates each factor under the given facts of a particular case and then makes an overall determination of whether the creator is an employee or an independent contractor. (The Restatement cited by the Court actually uses the terminology of “Master” and “Servant” rather than “Employer” and “Employee.” Those are just very old terms, not a reference to a Depeche Mode song.)

After examine each of these factors, the Court determined that Reid was an independent contractor, and that therefore, the sculpture was not a work for hire.*

Because they did not find him to be an employee, the Court did not have to go on to discuss the second half of the definition. If the creator of the work is an employee, the work still has to have been created within the scope of the creator’s employment in order to be considered a work for hire. Consider this, if you work a full-time job unrelated to writing, you are an employee, right? Would you consider everything you write at night and on weekends while employed as a work for hire just because you are an employee? No, you wouldn’t. While you are an employee, you are not writing those works of authorship within the scope of your employment.

The determination under the second half of the first definition (“within the scope of his or her employment”) is also based on general principles of agency law. A work is created within the scope of the employees work if “(a) [the act of creation] is of the kind he is employed to perform; (b) it occurs substantially within the authorized time and space limits; [and] (c) it is actuated, at least in part, by a purpose to serve the [employer].” (Restatement (Second) of Agency, Section 228)

Specially Commissioned Works

Here’s the second way in which a work can be a work for hire (just so you don’t have to scroll ALL the way back up there to re-read it):

(2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a “supplementary work” is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an “instructional text” is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.

The definition also requires a signed contract, but that signed written instrument can actually come later as long as the initial agreement was for a work for hire arrangement. It also can only be used to create work for hire status for certain specified types of works.

We should immediately notice that merely saying a work will be a work for hire in a contract only works for very limited types of works enumerated in (2). That is contrary to my impression of the common belief among writers and other creatives that a contract can always make something a work for hire. I believe, though it is difficult for me to verify, that this may also be contrary to common practices in the publishing industry. I suspect that there are a lot of contracts out there that specify that a book is a work for hire and that most everyone involved believes those books are works for hire.

But they are probably are not.

Can you imagine a novel written under conditions that would meet the first definition (“employee within scope of his or her employment”)? Almost everyone of the factors would go in favor of the writer being an independent contractor. And novels do not appear to fall under any of enumerated categories of works that fall under the second definition that allows work for hire status to be created by contract.

Now even if that is the case, it does not make a huge difference. I’m also pretty sure a court looking at those contracts would interpret them as a complete transfer of the copyright even though it was an unsuccessful attempt to make the book a work for hire. There is so much built up understanding in the publishing industry about what comes with work for hire status, that a court might be willing to interpret the contract in light of that common understanding.

Additionally, many contracts contain a savings clause that says just that – that in the event a court finds the work not to be a work made for hire, then the contract will act as a complete transfer. The notable difference between a work for hire and a complete transfer is termination rights (see below).

The Result of a Work Being a Work For Hire

Section 201 of the Copyright Act details who owns a copyright. Generally, as provided in 201(a), copyright vests in the author of the work. However, 201(b) specifies that if the work is a work for hire, then the hiring party is considered the author, and thus the copyright vests in the hiring party initially. In other words, a work for hire is not a transfer of copyright rights. Instead, it defines who the author is for copyright purposes.

To understand what that means, let’s compare a book written as a work for hire with a non-work for hire book in which the entire copyright has been transferred away.  Any transfer of copyright, including a transfer on the entire copyright for its entire duration, can be terminated unilaterally by the author after a specified period of time (35 years for works created today). You can get it back. If, however, the work is a work for hire, you as the writer are not considered the author; you have no termination rights.

 

*As an aside, note that this conclusion reached by the Supreme Court did not appear to resolve the dispute. It looks like the parties were arguing about the wrong set of rights the entire time – all the way to the Supreme Court! Recall that what CCNV wanted was to take the physical embodiment of the work of authorship, i.e. the sculpture itself, on tour. That’s not a copyright issue. Who owns the sculpture itself is matter of personal property law.  Maybe there was more to the situation not made apparent in the litigation, but if not, it’s a potentially a bit embarrassing for the lawyers involved.

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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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