Published on February 27, 2008
Copyright Law:Authorship: Copyright Law: Authorship Thursday, September 14, 2006 Preliminary Consideration: Preliminary Consideration Whether you are filing a new trademark registration or are filing suit for a trademark infringement, you are going to need to determine a basic fact. Who is the author of the work in question? What does that mean? Looking Back…: Looking Back… This will tie into the theoretical matters such as moral rights, theories of copyright protection, and more touchy-feely scenarios. Copyright Act: Copyright Act The Copyright Act recognizes three kinds of authorship: Sole authorship Joint or co-authorship Employer authorship (works made for hire) The determination of authorship has considerable and practical importance because initial ownership of copyright goes to the author. Explorer of the Titanic: Explorer of the Titanic Lindsay v. Derelict and Abandoned Vessel the RMST Titanic Facts: Lindsay filmed and directed a documentary film Explorer of the Titanic Lindsay sailed with RMST Went on a salvage expedition And Lindsay created storyboards for the film, series of drawings, specified camera angles, specified shooting sequences, specified lighting. Defendants Claim…: Defendants Claim… Then, after following all of his instructions, RMST made a film and licensed footage to the Discovery Channel. The Defendants argued, You didn’t dive on the ship You didn’t photograph the wreckage This is our footage Plaintiff argues…: Plaintiff argues… The Plaintiff argued I directed it. I told you what to do. Thus, I am the creator. Supreme Court says…: Supreme Court says… The Supreme Court held that Lindsay’s storyboards and specific directions On how to use lights Angles from which to shoot Made this all Lindsay’s “original, intellectual conception.” Joint Authorship: Joint Authorship When two or more authors together prepare a work with the intention that their contributions be merged into an inseparable or interdependent part of a unitary whole, the work is a joint work. See 17 U.S.C.A. §101 Joint Authorship cont’d: Joint Authorship cont’d Whether or not two or more parties are joint authors is not an issue of contract. This is an issue of copyright law. Determination of joint authorship is significant in the enforcement of rights between the authors, and in the computation of the term of copyright protection. See 17 U.S.C. §302(b) (in the case of a joint work prepared by two or more authors who did not work for hire, copyright is endorsed for the term of the life of the last surviving author, and 70 years thereafter). Joint Works: Joint Works Joint works can result from the efforts of authors who are strangers to one another, Working at different times In different places Contributions may not be equal. Only necessary that each contribution be more than merely trivial or de minimis. Slide12: But, collaboration alone is not sufficient to establish joint authorship. See Erikson v. Trinity Theater, Inc. Erikson v. Trinity Theater, Inc.: Erikson v. Trinity Theater, Inc. Erikson prepared three plays for Trinity Theater. They got into a fight, and Trinity stopped paying royalties to Erikson. Trinity argued it was a co-author and co-owner because various Trinity actors made suggestions that Erikson incorporated during the development of the plays. Slide14: Each joint author must contribute something more than trivial help in order to claim authorship. It has to be something that would be recognized in copyright law as being “in the nature of authorship.” If you gave it away for mere ideas, think of the restrictions you would have on the exchange of thought. Everyone would walk around with ear muffs on while working, so that someone couldn’t claim joint authorships in their works. A Unitary Whole: A Unitary Whole There must be an intent that the contribution be merged into a unitary whole. Aalmuhammed v. Lee: Aalmuhammed v. Lee Facts of the case: Aalmuhammed helped out Spike Lee making the autobiography of Malcolm X. Aalmuhammed gave him significant assistance because he knew a lot about the life of Malcolm X. He knew a lot about Islam. He previously wrote, directed, and produced a documentary about Malcolm X. Aalmuhammed v. Lee: Aalmuhammed v. Lee Aalmuhammed reviewed the script for Spike Lee and Denzel Washington. He suggested extensive script revisions. Most of the revisions were made to ensure the religious and historical accuracy and authenticity in the film. Aalmuhammed v. Lee: Aalmuhammed v. Lee Aalmuhammed directed Denzel Washington and other actors on the set. He created two entire scenes. He supplied his own voice for voice overs. He selected the prayers. He selected the religious practices for the characters. He edited parts of the movie during post production. Aalmuhammed v. Lee: Aalmuhammed v. Lee Denzel Washington testified that Aalmuhammed’s contribution to the movie was great. Aalmuhammed asked for writing credit as a co-writer of the film. He was turned down. All he got was credit for being an “Islamic technical consultant.” Aalmuhammed v. Lee: Aalmuhammed v. Lee He sued for joint authorship and a counting of the profits. Why did he lose? Intent for Joint Authorship: Intent for Joint Authorship There was no intent for joint authorship. You need: An intent for joint authorship when the work is created. See Gillespie v. AST Sports Wear 58 U.S.P.Q. 2d (S.D.N.Y. 2001) Each party’s contribution must be independently copyright able. Slide22: Therefore, in a movie: Who is the author? It’s the Director. Creative contributions held that this case was a 9th Circuit case. The 2d Circuit held that if one party provides significant creative input, the two authors can usually be deemed co-authors of a joint work. While the 9th seems to rely on this “super intendance of the work” test along with the intent of the parties test. Motion Pictures: Motion Pictures The House reports on the 1976 revision to the Copyright Act discussed motion picture collaborations in part. This is kind of a difficult subject area. The Bern Convention provides that ownership of copyright in a movie is a matter of legislation in the country where the protection is claimed. Of course under the Work for Hire Doctrine, a movie studio gets the full copyright in a motion picture by contractual agreement with the actual creative contributors. Slide24: It seems that under the normal test, the authorship would be vested in the Director. The House Report of the 1976 Copyright Act regarding co-authorship. There is no need for specific statutory provisions concerning rights and duties of co-owners of a work. Common law at this point is left undisturbed. The Second Circuit Test: The Second Circuit Test In Childress v. Taylor, Clarice Taylor researched comedian Mom’s Mayble wanted to develop a play based on her life. After gathering information, she called playwright Alice Childress about writing the play. Taylor turned over all of her research material and sifted-through facts selecting pivotal and key elements. Taylor discussed with Childress the inclusion of general scenes and characters. Childress wrote the play and designed the structure of the play and its dialogue. Slide26: Taylor planned a second production. Childress rejected the deal proposed by Taylor. Taylor went ahead and created the second production without Childress. Taylor hired Ben Caldwell, another playwright to create the play. Slide27: Childress sued Taylor for copyright infringement. Taylor claimed she was a joint author. Taylor claimed she shared the rights to make a derivative work. The Second Circuit rejected this. The Second Circuit Rejection: The Second Circuit Rejection “Many people can be said to jointly labor toward a common design who could not plausibly be considered to be co-authors.” The Court said the nature of the intent must be entertained by each punitive joint author At the time the contribution is created. Slide29: The Court said that: The nature of the intent must be entertained by each author, at the time the contribution was created. Slide30: However, they were so limited to what the statute said “an intention that the contributions be merged into an inseparable or interdependent parts of a unitary whole,” this would be too narrow. For example, an editor and a writer. However, no one thinks the editor is a co-author, do they? The 11th Circuit: The 11th Circuit There is agreement with the 1st, 5th, 7th, 8th and DC Courts of Appeals. In MGB Homes v. Amaron Homes Inc. the Court said, That Author B’s contribution when combined with Author A’s contribution Results in recasting, transforming or adapting this contribution Then the two contributions may be said to be inseparable. Slide32: If the process is simply one of assembling into a collective whole, A’s and B’s respective contributions Without thereby recasting A’s contribution, then they are interdependent. Yes, it’s weird. CCNV v. Reid: CCNV v. Reid Reid was a sculptor and the community for creative non-violence commissioned him through a verbal agreement to create a sculpture. Slide34: CCNV paid Reid for the commission, but Reid argued that he should continue to retain the copyright to the work. Slide35: The Supreme Court held that Reid was the copyright owner of the statue, because CCNV was not Reid’s employer, and CCNV failed to overcome Reid’s status as an independent contractor. Reid did not have a written contract establishing the sculpture was a work for hire. This is really a matter of employment law, isn't’ it? Clogston v. American Academy of Orthopedic Surgeons: Clogston v. American Academy of Orthopedic Surgeons Without one, one person writes the text of the book and another provides the photos and illustrations? In Clogston v. American Academy of Orthopedic Surgeons, (WD Texas 1996) the AAOS decided to prepare an edition of a popular text. Contracted with Clogston to supply photographs for use in the new edition. Slide37: After he got paid, as agreed, Clogston tried to get half of the profits as a joint author. The Court said no, there was no requisite intent. Joint Work Classification: Joint Work Classification Generally speaking, joint work classification requires that each author: Contemplate his or her work or form A part of a whole To which another will contribute Slide39: However, it seems that the courts are stricter when it comes to movies. Works Made for Hire: Works Made for Hire If your work is created by one person who is the employee of another, it is usually a work made for hire. We are not talking about an assignment. You can assign any works’ rights to anyone else. In a work for hire analysis, he who hires is the author, even if they couldn’t write their own name. Work Made for Hire cont’d: Work Made for Hire cont’d To determine if a work is a work made for hire, apply the general common law of agency. The hiring parties right to control the manner or means by which the work is accomplished. The skill required to create the work. The source of the instrumentalities and tools. Slide42: The location of the work. The duration and the relationship between the parties. Whether the hiring party has a right to assign additional projects to the hired party. The extent of the hired party’s discretion over when and how long to work. Slide43: 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. The tax treatment of the hired party. Copyright Office says…: Copyright Office says… The Copyright Office has simplified this a little. Focuses on: Control by the employer over the work. Control by the employer over the employee. The formalities of employment. Slide45: If the work is a made for hire, there are significant implications. In CCNV, if the work was not a work for hire or a joint work, then the copyright would be owned by Reid. All the committee owned was the statue itself. They cannot authorize preparation of copies, derivative works, or license others to deal with the work in ways contrary to the rights possessed by the owner of the copyright. Slide46: If Reid had assigned the copyright to CCNV, Reid and certain of Reid’s heirs would possess the right to terminate the grant 35 years or more in the future. See 17 U.S.C.A. §203. Slide47: Weighing the factors, Reid was not an employee but an independent contractor. Aymes v. Banelli: Aymes v. Banelli Banelli hired Aymes to create computer programs for his swimming pool business. Aymes did most of the work at the office. Banelli directed and instructed, but he couldn’t have written it himself. Aymes was to be paid for the project, given bonuses for finishing on time. Aymes never got any health or any other insurance benefits from the pool company. Slide49: Nevertheless, since Banelli had a right to control the manner of creation, The right to assign additional projects, Just because the pool company screwed Aymes out of two attributes of employment, that made him an independent contractor. Ooooh, Trick Question! Slide50: That seems weird, doesn’t it? The goals of predictability and certainty In CCNV, if Reid had signed a contract, indicating the work was a made for hire, It would have had no effect, since sculptures are not included among categories of works listed in the second part of the statutory definition on page 119. Slide51: In Reid, the Supreme Court remanded District Court helped the parties negotiate a settlement. Reid was credited with sole authorship CCNV got sole ownership of the original sculpture. High Tech Video v. Capital Cities: High Tech Video v. Capital Cities High Tech Video v. Capital Cities In High Tech, Video production company released a travel video of Macanese island. To produce the video, High Tech enlisted the help of freelance aerovideographer. Project completed, High Tech registered copyright to the video as a work for hire. Slide53: Producers of Good Morning, America lifted some of the footage. They did not have High Tech’s permission. High Tech sued ABC for Copyright infringement. Even though ABC did, in fact, steal the video, Slide54: The Court found that High Tech improperly registered the video as a work for hire. Aerial photographer was an independent contractor, Absent written agreement stating footage was work for hire, Copyrighted portions of the video belonged to the videographer. Slide55: Since High Tech didn’t properly own the copyright to the footage, even though the aerial videographer did not dispute High Tech’s ownership, High Tech had no valid copyright upon which to base an infringement claim. Foreign Law: Foreign Law A lot of other countries do this differently, don’t they? For example, in Jordan and Morocco the author of the work is the person who created it. Initial ownership is vested in that person. Around the World: Around the World Japan, India, Ghana, and the UK go with the works for hire model. Some other countries follow different rules. In the US, the work for hire model is rationalized by saying that since the employer assumes the economic risk, the employer should reap the benefits. Czech Republic: Czech Republic The Czech Republic says the employee has the copyright to a work made for hire, but the employer has a statutory “shop right.” Employer can use the employee created material Employee must obtain employer’s consent before selling it to someone else, unless the entire business is being sold. China: China China gives copyright to the employee, but gives the employer a two year exclusive right to exploit the work, within the scope of the employer’s business. Russia and Ecuador: Russia and Ecuador Russia and Ecuador: Employers have to pay a bonus to use employee created works. Employment?: Employment? What does the scope of employment mean? Use the Grandma’s Boy rationale. In the movie Grandma’s Boy, the software designer writes a videogame at night on his own computer, on his own tv, on his own time. He handles the same business as the company he works for, does he own it or not? Trade Secrets: Trade Secrets Trade Secrets – You do not need to know much about them, but understand that trade secrets are wider than copyright rights. Therefore, if you make something that might not be copyrightable as a work for hire, you might be restrained from using it yourself by trade secret law. Teacher Exception: Teacher Exception Sweeeeet. College and University teachers are considered the owners of copyright in their scholarly writings and course materials. Even though they are full time employees. Why? Slide64: Probably because most judges are, at some point, teaching at the law school level. Listen to this: “That considering the havoc the conclusion contrary to the teacher exception would wreak in the settled practice of academic institutions, the lack of fit between the policy of the work for hire doctrine and the conditions of academic production, in the absence of any indication that Congress meant to abolish the teacher exception, we might, if forced to decide the issue conclude that the exception had survived the 1976 Act.” Commissioned Works: Commissioned Works There are a million categories of commission works that are eligible to be works made for hire. The drafting process for that consisted largely of negotiation among affected interest groups. Parties must agree in writing as to the transfer of ownership of the copyright in a commissioned work. Slide66: However, courts disagree on whether it must be prepared before or after the work is created. The Second Circuit lets you memorialize it after the fact. Does this make any sense? Shouldn’t it be an assignment after the fact? Food Lion, Inc. v. Capital Cities ABC: Food Lion, Inc. v. Capital Cities ABC Discuss facts Video tapes of Plaintiff’s facilities were made Suspiciously By Plaintiff’s employees, Who were in fact undercover TV producers of the Defendant Food Lion: Food Lion The Court held the tapes were not works for hire, since the producers were not employed to video tape, nor did they record the tapes to serve, assist, or further the Plaintiff’s business.