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:
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,
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.