Breaking Up is Hard To Do – Chapter 2

In disputes involving musical groups and other entertainment “partnerships,” there is a high probability that intellectual property will be involved. Consider the example of a musical group that has written and recorded songs together, or a financier and a filmmaker who have collaborated on a documentary. In such cases, copyright law generally will determine the party or parties in whom initial copyright ownership has vested and whether there has been a valid transfer of such rights. The preeminence of copyright law in this context is a function of the federal Copyright Act’s preemption provision, which states that copyright law preempts any claim that seeks to vindicate “legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright”. Because “authorship” is the “well” from which these rights spring, a disputed claim of ownership related to authorship will generally be determined by copyright law.

Likewise, the Copyright Act has special provisions governing the valid transfer of ownership, so that these issues are typically governed by copyright law. Notwithstanding the foregoing, many disputes involving copyrighted material are guided by state law, including royalty disputes, contractual disputes, claims for accounting, conversion, partners’ rights in copyrights owned by the partnership, and the like. 

This is because the claimants in such cases generally are not seeking to enforce rights arising directly under the Copyright Act, nor would resolution of the central issues in their cases typically depend upon application of the Act. Indeed, where there is no dispute over authorship, transfer of copyright, or infringement of one of the exclusive rights set forth in 17 U.S.C. § 106, it has been suggested that there simply is no federal jurisdiction arising under the copyright law—even though copyrighted material may be at the center of the dispute. 

Why is this so important? And why must an entertainment law practitioner be familiar with both state law (including partnership law) and copyright law?

Consider a fairly straightforward example: A self- produced recording artist and a financier enter into an oral partnership agreement to produce and sell records. The finaricier assumes that the copyrights in the sound recordings belong to the partnership because production was financed with partnership funds. To his dismay, he learns that the copyrights could not have become the property of the partnership without a written instrument of transfer or “work-for-hire” situation; and that his partner—as the sole “author” of the sound recordings—is therefore the sole owner of the copyrights. 

There are two ways in which a partnership may acquire ownership in copyrighted material: (1) under the so-called “work-for-hire” doctrine 40 or (2) by means of written transfer of ownership.

 There are three ways in which ownership of copyrights might vest in the individual partners—the first two of which are identical to the manner in which a partnership may acquire rights: (1) if the partner acquires the rights in his own name under the so- called “work-for-hire” doctrine, (2) if he acquires the rights in his own name” by means of written transfer of ownership, or (3) if he is an “author” or “co- author” of the work. These three issues are discussed in further detail below.

There are two categories of “work-for-hire”: (1) a work created by an employee within the scope of his employment and (2) a “specially commissioned work,” evidenced by written contract, in one of nine statutorily enumerated categories. Thus, if an employee creates a “work” during the course and scope of his employment, the copyright is presumptively owned by the employer. It is important to note that, because a partner ordinarily is not an “employee” of the partnership, works created by a partner in the scope of his duties for the partnership do not become partnership property under this doctrine. Without a written agreement conferring rights to the partnership, at most it will have acquired an implied license to use the work. 

With respect to “specially commissioned works” for hire, the important issues to consider are: (1) whether there is a written contract evidencing the relationship and (2) whether the work falls under one of the nine statutorily enumerated categories of works subject to such protection. Absent both conditions, by definition there is no specially commissioned work- for-hire.”

Rules applicable to transfer of copyright ownership are fairly straightforward. If there is a written instrument evidencing transfer of ownership, the transfer is valid. Otherwise, there is no transfer of ownership

The most direct manner in which copyrights may be acquired—and perhaps the most common in situations involving musical groups and other informal entertainment partnerships—is by virtue of “authorship.” The Copyright Act provides that initial ownership of copyrights vests in the “author or authors” of the same. The authors of a joint work are co-owners of copyright in the work.

In accordance with the foregoing principles, where a dispute has arisen among collaborators— unless a putative co-owner can prove that he gained rights by written contract (e.g., by written transfer or “work-for-hire”)—the endgame will be the successful assertion of a claim of co-authorship. “In common with many issues arising in the domain of copyrights, the determination of whether to recognize joint authorship in a particular case requires a sensitive accommodation of competing demands advanced by at least two persons, both of whom have normally contributed in some way to the creation of a work of value. In other words, in most cases involving a dispute of co-authorship, both parties will have actually “collaborated” on the work. 

The question is whether each collaborator is legally entitled to a copyright interest. A warning in advance: This area of copyright law is fraught with competing policy arguments, conflicting decisions, and differing tests in various federal circuits, or no developed position at all. Of course, this is what makes it all so interesting.

Under the plain language of the Copyright Act, “[t]he authors of a joint work are co-owners of the copyright in the work. A “joint work” is defined as “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. That definition is easily stated, but its application has vexed many a court. Obvious questions arise. For instance, who qualifies as an “author?” Will any creative contribution suffice, or is something more required? The inquiry has not stopped there. When faced with a fact pattern that appears deserving of a more nuanced test of co-authorship, courts have asked additional questions. 

For instance, regarding “intent,” is it necessary that the parties fully comprehend the legal consequences of their relationship, or is it sufficient that the parties simply intend to create a unified work? When must this intent arise? Must it be contemporaneous with initial creation, or is subsequent intent to merge efforts sufficient? Some of these issues are fairly well settled. For better or worse, many are not.

Given that a person’s status as an “author” is a principal benchmark in determining both “ownership” of a work and whether a “joint work” has been created, one would expect to find a definition of the term in the Copyright Act. Incredibly, Congress failed to include one. As a result, definition of that pivotal term has become the unenviable job of the courts.

The Current Scenario Under the bulk of the relevant jurisprudence, each putative co-author must have made a contribution “that could stand on its own as the subject matter of copyright In other words, it is not enough that the end product may be copyrightable: for any contributor to claim a copyright interest, his contribution must have been “independently copyrightable.” 

This so-called rule of “independent copyrightability” may be appropriate in a number of settings: e.g., preventing those who have made no more than de minimus contributions from participating in the ownership of a work. However, there are other situations—particularly in the entertainment industry —in which a strict application might lead to the evisceration of copyright protection for persons making significant artistic and expressive contributions. 

Consider, for example, a sound engineer who captures the live performance of a musical group, or a producer who collaborates with an artist in the studio. May the contributions of either of these parties be said to “stand on their own as the subject matter of copyright? Consider further the example of the drummer and bass player who, as part of a musical group, regularly contribute their creative efforts to songs brought in by the group’s songwriters. 

Should those persons occupy the status of “coauthors,” or be relegated to some lesser status where only a written contract would insure remuneration? Under an ordinary definition of “authorship,” all of these collaborators should be accorded co-authorship status. However, a number of courts have used the test of “independent copyrightability” to deny authorship in such cases.

Fully acknowledging the uphill battle, the Nimmer treatise has argued for some time against a strict requirement of independent copyrightability of each author’s contribution.° Nimmer observes that neither the plain language of the Act nor its legislative history requires the conclusion that each putative author’s contributions must be independently copyrightable. 

Rather, as Nimmer notes, the intention to merge each putative author’s contributions into a “unitary whole” appears to be the “touchstone. Nimmer notes that “the copyright’s goal of fostering creativity is best served by rewarding all parties who labor together to unite idea with form.”” As such, the test Nimmer would employ is whether the putative author’s contributions were more than de minimus.

As indicated above, the bulk of the relevant jurisprudence adheres to Professor Goldstein’s test, requiring’ each putative author’s contributions to be independently copyrightable. However, the landscape changed a bit in 2004 with the Seventh Circuit’s decision in Gaiman v. McFarlane:  which appears to have adopted Nimmer’s interpretation of “co-authorship.” 

In Gaiman, the creator and illustrator of a comic book series invited the plaintiff to write a script for one issue: Subsequently, the plaintiff wrote a script in which he introduced three new characters to the series. Based on the plaintiff’s oral description of the characters and his written dialogue, the creator/illustrator “drew” those characters into the series. Thereafter, plaintiff brought suit, contending that he was entitled to an ownership interest in the copyright to the three characters. by virtue of the Copyright Act’s joint-work provision. 

Although Judge Posner recognized that a contribution of “some original expression” is required for authorship status, he rejected the notion that such contributions must always be independently copyrightable.

He reasoned as follows: [W]here two or more people set out to create a character jointly in such mixed media as comic books and motion pictures and succeed in creating a copyrightable character, it would be paradoxical if though the result of their joint labors had more than enough originality and creativity to be copyrightable, no one could claim a copyright. That would be peeling the onion until it disappeared. The decisions that say, rightly in the generality of cases, that each contributor to a work must make a contribution that if it stood alone would be copyrightable weren’t thinking of the case in which it couldn’t stand alone because of the nature of the particular creative process that had produced it.

Applying this logic, Judge Posner concluded that the plaintiff’s creative contributions, although not independently copyrightable, were sufficient to accord him authorship status. Regarding one of the comic book characters, Judge Possner noted that “Gaiman’s contribution may not have been copyrightable by itself, but his contribution had expressive content without which [the character] wouldn’t have been a character at all, but merely a drawing.”” 

In supplements to the Nimmer series after Judge Posner’s opinion, one can sense a bit of triumphant vindication. Will this be the beginning of a trend? If a recent decision on the subject is any indication, the tide has not yet turned; however, curiosity and thoughtful judicial inquiry into the issue has certainly been piqued.

The Fifth Circuit has yet to announce whether “independent copyrightability” is a requisite element of joint authorship.85 As discussed above, one judge from the Eastern District of Louisiana has announced the requirement. 

However, that decision predated Gaiman, and because it was a district court opinion, it has no binding precedential value on other trial judges. As such, practitioners are free to urge either side of the argument, and depending on who they represent, should certainly consider both approaches.

Must the Co-Authors Understand the Legal Consequences of Co-Authorship? 

The Copyright Act requires putative authors to intend “that their contributions be merged into inseparable or interdependent parts of a unitary whole.” There is nothing in that definition that requires a putative author to understand the legal consequences of joint authorship or to manifest that understanding by his conduct. Nonetheless, a number of courts—including several district courts within the Fifth Circuit—appear to have adopted these requirements. The trouble started with the Second Circuit’s opinion in Childress v. Taylor.

That case involved a claim of co-authorship of a play about comedienne Jackie “Moms” Mabley. The putative co-author contracted the playwright to create the script, and allegedly contributed the results of her research into the comedienne’s life.” The district court denied plaintiff’s claim of co-authorship, finding that the parties did not share the requisite intent to be co- authors.

On appeal, the Second Circuit observed that the Copyright Act limits its analysis of “intent” to the co- authors’ “state of mind regarding the unique nature of the finished work.”  It nevertheless decided that this limited inquiry may not be sufficient in all cases, particularly those involving a “dominant author.” In such cases, the court believed that it was necessary to plumb the co-authors’ awareness and understanding of “the concept of joint authorship” and to adduce whether the putative authors had evidenced such an understanding through their conduct. 

Although the court insisted that it was not requiring an understanding of “legal consequences,”  it would be difficult to imagine a situation in which the authors could evidence an understanding of the “concept” of co-authorship without some notion of the legal consequences. The most recent opinion emanating from a district court within the Fifth Circuit acknowledging the reasoning of Childress is BTE v. Bonnecaze.  

In Bonnecaze, a former drummer for the musical group “Better than Ezra” claimed co-authorship in the group’s sound recordings and musical compositions. The drummer’s alleged authorship contributions were significant, consisting of “harmony, lyrics, percussion and song rhythms, melody and song and musical structure? 

Despite the weighty nature of the alleged contributions, and the undeniable fact that collaborators merged their contributions into a “unitary whole” when they recorded the works, the court insisted that “a specific finding of [subjective] mutual intent remain[ed] necessary.”  The court did not clarify whether proof of the parties’ understanding of the legal consequences of co-authorship was required; however its identification of the “factual indicia of ownership and authorship” suggests that it was. For instance, the court insisted that it was necessary to examine how the “parties bill[ed] or credit[ed] themselves with regard to the work,” and whether the drummer had entered into “any written agreements with third parties involving the work.” 

The problem with this formulation of the “mutual intent” requirement is that it is impractical, particularly in situations involving informal partnerships such as musical groups. To put it mildly, musicians (and other artists) seldom comprehend all of the legal ramifications of their actions. It is therefore absurd to require them to acquire such an understanding (and to manifest that understanding in their affirmative actions) in order to enjoy co- authorship status. 

A recent opinion from the Western District of Texas shows just how dangerously restrictive this approach can be. In Clogs/on v. American Academy of Orthopedic Surgeons,”” a photographer brought a claim of co-authorship, based upon his contribution of 90% of the photographs appearing in an instructional textbook comprising some 450 photographs.'” The court cited deposition testimony of the putative author in which he opined that the issue of “joint authorship” was a “legal question” (a perfectly reasonable response). 

Based on that testimony, the court concluded that the photographer did not have the requisite intent to become a co-author.'” Obviously, that sort of logic is circular and is not in the least bit compelled by the Act itself which requires only that co-authors intend to merge their efforts into a “unitary whole.” The plain language of the Copyright Act in fact mirrors the test first announced by an English court 100 years prior: “to constitute joint authorship, there must be a common design. Obviously, a “common design” is a far cry from a pre-manifested intent to enjoy the legal status of a “co-author.”

Happily, a universal application of the “mutual intent” requirement set forth in Childress does not appear to have been suggested—even by that court. Thus, those courts that have slavishly applied it as 1114) strict requirement may have overreacted. Indeed, the Childress court’s announcement of the “conceptual understanding” test was in response to concerns over special cases involving a dominant author, such as a “writer-editor” or “writer-researcher” relationship (the latter of which was precisely the case before the court).  

Perhaps confined to those situations, the “conceptual understanding” requirement is helpful, but the problem with the test is that it quickly falls downhill into situations in which it has no business, including co- songwriter cases like Bonnecaze. As the Childress court properly noted, the test “requires less exacting consideration in the context of traditional forms of collaboration, such as between the creators of words and music of a song. Evidently, the court in Bonnecaze overlooked that portion of the opinion. Fortunately, other courts have been more observant of the limited application of the Childress test. 

A good example is Systems, XIX, Inc. v. Parker. In that case, a recording studio brought a claim of co- authorship against the performer KRS-ONE and his record company, claiming rights in a live recorded performance that had been specifically requested and authorized by the performer’s road manager. Citing Childress, the defendants raised the defense of “mutual intent,” asserting that the parties did not share the “subjective intent” to be co-authors. 

Noting that the Childress court itself suggested that its test should be applied only in circumstances “not likely to have been within the contemplation of Congress” and noting further that the producer/performer relationship had been under the “specific contemplation of Congress” when it enacted the Copyright Act, the court declined to apply the Childress test.

The intent to merge contributions into a “unitary whole” must exist at the moment in time when the work is created, not at some later date. However, the rule is somewhat broader than it appears. First of all, the actual identity of a co-author does not need to be known, nor must the respective contributions be made at the same time. Thus, a lyricist who intends for his lyrics to be set to music may be considered a joint author of a composer who even years later, with the permission of the lyricist (or his agent), eventually sets the lyrics to music. 

Here, it is instructive to go back to the example of the bass player and the drummer who, as part of a musical group, regularly contribute their creative efforts to songs brought in by the principal “songwriter.” In this instance, the question of “intent” would appear to be relevant, perhaps determinative. If there is evidence that the songwriter “intended” for his song to be complete upon the addition of drums and bass, then one could argue that he had the requisite level of intent for joint authorship. On the other hand, if the evidence suggests that he intended for the song to stand on its own (e.g., as lyrics with guitar accompaniment only), the better argument might be that the songwriter lacked the intent to create a “unitary whole” with the bass player and drummer (although he may have intended to create a “derivative work”).

Regardless, if the musicians subsequently collaborated on a recording of the song, a logical conclusion could be drawn that all parties intended to collaborate in a “unitary whole” (the “sound recording”). Thus, a claim of co-authorship in the sound recording would appear to be the easier argument.

In addition to the hard line it took on “intent,” the Court in Bonnecaze announced that it is necessary for each putative coauthor to “fix” his contributions into a tangible form of expression in order to be entitled to co-authorship status. That conclusion would appear to be in error. Even Professor Goldstein — a strong proponent of the “independent copyrightability” requirement — opines that “it is not necessary to the creation of a joint work that each collaborator actually “fix” the work in a tangible medium of expression. 

One could imagine the difficulties of applying such a strict test in the field of music, where musicians commonly write parts “by ear.” In fact, that appears to have been the exact context in which the Bonnecaze court applied the rule. The court’s denial of co- authorship was all the more curious given that the claimant did in fact “fix” his contributions in the group’s sound recordings.

Absent a written agreement to the contrary, co- owners of a copyrighted work (including co-authors) share equally in the ownership of the work.'” In the case of co-authors, this is true regardless of whether their respective contributions to the joint work are equal. Indeed, one court has held that the varying of this general rule amounts to a “transfer” of copyright ownership that will be valid only if it is confirmed by a signed instrument. 

A joint author (or joint owner) of a copyrighted work—regardless of his ownership percentage—may, without obtaining the consent of the other joint owners, either exploit the work himself, or grant nonexclusive licenses to third parties. However, he must “account to other co-owners for any profits he earns from the licensing or use of the copyright. This “duty to account does not derive from the copyright law’s proscription of infringement. Rather, it comes from general principles of law governing the rights of co-owners.” Inasmuch as these “joint tenancy” principles are rooted in state law, courts will look to state law for resolution of these issues.

An interesting aspect of joint authorship is the so- called “duality of rights.” Under this concept, “each author obtains an undivided ownership in the whole of the joint work, including any portion thereof. Consequently, one joint author thereby obtains the right to use or license that portion of the joint work that was the sole creation of the other joint author.” A co-owner of a copyright cannot be liable to another co-owner for infringement of the copyright. Rather, as set forth above, a co-author’s remedy for non-payment of his share of royalties is an action for an accounting under state law.

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