[Guest post] When creative collaboration goes wrong

The 1709 Blog is happy to host the following contribution by Hugo Cox (Hamlins), concerning the recent joint authorship decision of the Court of Appeal of England and Wales in Kogan v Martin [see also IPKat here].

Here's what Hugo writes:

When creative collaboration goes wrong

One of the most distinctively European contributions of European law to UK copyright law has been its test for originality (being one of the requirements for copyright protection). Previously UK courts had looked for the prosaic inputs of labour, skill or judgment. Now they ask whether the work is the author’s ‘intellectual creation’, looking to see if it reflects the author’s personality, expressing free and creative choices – there must be a certain … je ne sais quoi, you might say.

There is some doubt as to whether this new test has made much difference in deciding which works do or do not acquire copyright protection. However, in the law of joint authorship, a change seems unmistakable. In the past, English courts have required a contributor to input significant skill and labour to earn the title and rights of a joint author. So, for example, an attractive 16-bar saxophone solo did not meet the threshold. Now the Court of Appeal has affirmed the ‘relatively undemanding’ requirement is, once again, to contribute elements which express the contributor’s own intellectual creation. We know from the CJEU’s Infopaq judgment that this can be achieved in just eleven words.

Kogan v Martin

This conclusion of the Court of Appeal was arrived at in its judgment of 9 October in Kogan v Martin, a case concerning the screenplay for Florence Foster Jenkins, a film which starred Meryl Streep and Hugh Grant. The question was whether it had been written solely by Nicholas Martin, as had been decided in the Intellectual Property Enterprise Court in 2017, or whether Julia Kogan was joint author. The Court of Appeal was not content with the reasoning of the lower court and ordered a retrial.

It seemed Martin had held the pen and Kogan had contributed only to the first drafts. However, the Court emphasized a joint author can be someone who only offers suggestions to the writer  – she does not necessarily have to put pen to paper or have the last word on what goes into the script. Contributions to plot ideas or inventing characters are on an equal footing with contributions to the execution of a work. And if a work has been created through a series of drafts, inputs into the earlier drafts count.

Complex relationships, complex law

The Court set exacting standards for the assessment of the complex evidence of creative collaboration. The fact witnesses’ recollections may be imperfect does not absolve the judge of his duty to take those recollections into account alongside any documentary evidence and to come to a conclusion about the nature of the interaction between the parties and their contributions. Were Julia Kogan’s contributions akin to those of a researcher, or was there a joint creative process? The assessment is highly fact-specific and difficult, but must be undertaken.

Though it seems the quantitative threshold for joint authorship has been lowered, the overall assessment of the evidence has become ever more complex, subtle and exacting. And the legal concepts are slippery. Joint authors must be engaging in a ‘common design’ – according to the Court of Appeal this is not something Ezra Pound was doing when he made extensive revisions to Eliot’s The Waste Land. The Court explained, perhaps less than helpfully: ‘he was acting as a friend and critic and not a collaborator in a common design’. And appealing though the European ‘intellectual creation’ test is, can you necessarily spot someone’s personality in their output and when exactly are choices free and creative?

We live in a time when creative collaboration is widespread – from pop bands to sitcom writers’ rooms to the interactive world of the internet. It’s a complex picture, and one which the law should try to avoid complicating further.

Big Freedia, Bouncing, and Copyright

Freddie Ross, Jr., aka Big Freedia, aka the Queen of Bounce, filed a copyright infringement suit last week against Wilberto Dejarnetti in the Eastern District court of Louisiana. The case is Ross v. Dejarnetti, 2:18-cv-11277. 

According to the complaint, Plaintiff met Defendant in 2014 and hired him to help with staging and choreographing Plaintiff’s performances. Plaintiff and his dancers worked with Defendant to create new stage choreography for several songs, including “Shake Session Medley” “Explode,” and “Best Beeleevah” (the Choreographic Works).

Plaintiff stopped working with Defendant in late 2017. Defendant then asked Plaintiff to credit him as a co-author and producer of several songs (the Musical Works), and also to pay him a monthly fee of $500 to use the Choreographic Works.

Failure to find an amicable solution led to the filing of this copyright infringement suit.

Joint authorship

Plaintiff is seeking a declaration from the court of his rights in the musical Works, arguing that Defendant’s “mere presence in the recording studio during the creation of the Musical Works is not sufficient to confer authorship rights,” that he had not made “any copyrightable contributions to the Musical Works and [that] the true creators of the Musical Works never intended [Defendant] to be a joint author. “

As we do not know yet what Defendant’s arguments are, it is difficult to comment beyond an explanation of what is joint authorship under U.S. copyright law.

Section 201(a) of the Copyright Act explains that the authors of a joint work co-own the copyright in the work and Section 101 of the Copyright Act defines a joint work 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.”

So the crux of the issue is whether Plaintiff and Defendant’s contributions intended their participation in creating the songs to be merged into a whole.

If the two parties are indeed joint authors, then either of them needs the permission of the other to exploit the work, unless they would have agreed differently in writing. However, the written consent of all the joint authors is needed when granting an exclusive license.

In our case, Big Freedia is arguing that Defendant did not make any copyrightable contributions to the songs. He could well have made some contributions, but the argument is that theywere not original enough to be protected by copyright. Indeed, mere ideas and concepts are not copyrightable, and this argument is often used when denying joint authorship.

Authorship is generally a question of fact for the jury, but the parties will probably settle before that phase of the trial and so we may never know.

Copyright and choreographic works

Plaintiff states however that Plaintiff and Defendant are joint authors of the Choreographic Works, as their respective contributions “were merged into inseparable or interdependent parts of a unitary whole.”

Choreographic works can be protected by copyright if they are fixed, for instance, by a video recording, or by a written and precise notation. But the choreography must be original enough to be protected. It is surprising that Plaintiff states in the complaint that the Choreographic Works “were largely based on and derivative of traditional “bounce” dance movements and other routines [Plaintiff] and his dancers had been employing for years.” Plaintiff seems thus to deny the moves were original enough to be protected by copyright…

The complaint alleges that Defendant is asking Plaintiff to stop using the Choreographic Works claiming that he is their sole author. Plaintiff is asking the court to find that they are jointly authors, or, alternatively, to rule that Plaintiff can use these choreographies without compensation through an implied license.

An implied license can be granted without knowledge. For instance, the Ninth Circuit explained in Effects Associates, Inc. v. Cohen that a plaintiff which had “created a work at defendant's request and handed it over, intending that defendant copy and distribute it had thus impliedly granted nonexclusive licenses to [the defendant].” In Hunn v. Dan Wilson Homes, Inc, the Fifth Circuit Court of Appeals found that Plaintiff in a copyright infringement suit had created an implied nonexclusive license when he had delivered, through his agent, the plans for the four custom homes without any "written or orally communicated restrictions about limits on [Defendant’s] ability to use the delivered drawings."

This case is yet another example of why it is good practice for an artist to sign agreements with every single person who is collaborating with him or her.

Judge Hacon’s 10 (+ 1) commandments on joint authorship under UK copyright law

From Mathilde Pavis writing  on the IPKat

Richard Hacon 

In the Florence Foster Jenkins decision, as discussed here, Hacon J gave a useful summary of UK copyright law on the issue of joint authorship. The summary, as set out in para. 54 of the judgment, almost reads as Hacon’s ‘10 commandments’ on joint authorship under UK copyright law:

“(1) A party will be joint owner of the copyright in a work only if he or she (or in the case of a company, its employees) collaborated in the creation of the work. The collaboration must be by way of a common design, i.e. co-operative acts by the authors, at the time the copyright work in issue was created, which led to its creation.

(2) The contribution of each author must not be distinct from that of the other author or authors.

(3) Contributions by a putative joint author (including those done by way of collaboration) which formed no part of the creation of the work are to be disregarded in the assessment of joint authorship.

(4) No distinction is to be drawn between types of contribution that did form part of the creation of the work. In particular, there is no distinction which depends on the kind of skill involved in making the contribution.

(5) The contribution, assuming it is relevant to the assessment of joint authorship, must be sufficient. This depends on whether the contribution constitutes a substantial part of the whole of the work in issue.

(6) That will be the case if the contribution would be protected by copyright in the work. Thus, if the contribution alone were copied by an unlicensed third party and such copying would result in an infringement of the copyright, the contribution constitutes a substantial part of the whole.

(7) The test of substantiality in the context of joint authorship of copyright, as in the context of infringement, involves a qualitative as well as quantitative assessment. 

Criticism and suggestions do not amount to joint authorship

(8) Suggestions from a putative joint author as to how the main author should exercise his or her skill – for instance by way of criticism or editing of a literary work – will not lead to joint authorship where the main author has the final decision as to the form and content of the work.

(9) It is thus relevant, but not decisive, whether an author is the ultimate arbiter as to the content of the work.

(10) If joint authorship is established, the court may apportion ownership of the copyright.”

An 11th commandment can be found a little later in the decision, in relation to contradictory evidence about ‘who did what’ during the creative process. In para. 61, Hacon J advises the following:  

[11] “place little if any reliance at all on witnesses' recollections of what was said in meetings and conversations and instead … base factual findings on inferences drawn from the documentary evidence and known or probable facts seems to me appropriate to the present case.”

The relevant case law for commandments 1 to 10 seems to be:

•         Fylde Microsystems Ltd v Key Radio Systems Ltd [1998] FSR 449
•          Levy v Rutley (1871) (1871) LR 6 CP
•          Tate v Thomas [1921] 1 Ch 503
•        Wiseman v George Weidenfeld & Nicolson Ltd [1985] FSR 525
•         Fylde Microsystems Ltd v Key Radio Systems Ltd [1998] FSR 449
•          Robin Ray v Classic FM plc [1998] FSR 622
•         Brighton v Jones [2004] EWHC 1157
•        Cala Homes (South) Ltd v Alfred McAlpine Homes East Ltd [1995] FSR 818

And for the eleventh:

•  Gestmin SGPS S.A. v Credit Suisse (UK) Ltd [2013] EWHC 3560 (Comm)
• Blue v Ashley [2017] EWHC 1928 (Comm)

Isn’t  it nice when copyright feels easy? 

Casting legal roles in amateur film

Last year Gawker Media’s blog network uploaded a homemade video of actor couple Eric Dane and Rebecca Gayheart in a threesome with a friend. Dane and Gayheart sued for copyright infringement and a settlement has now been reached. According to Reuters: ‘Dane, a “Grey’s Anatomy” co-star, held the camera for a portion of the shoot, giving him a partial copyright in the footage. (The couple’s friend, Kari Ann Peniche, also shot footage, but her rights were said to have been purchased by Dane and Gayheart.)’

Under UK copyright law the owner of copyright in a film is the producer and principal director – a film is treated as a work of joint authorship unless the producer and the principal director are the same person. In this case would Dane and Peniche both be the producer and principal director? Or perhaps Gayheart might be one of the legal dramatis personae whether she held the camera or not?

‘A Whiter Shade of Pale’ – copyright doesn’t fade over time

The House of Lords has today reversed the Court of Appeal’s decision over Procol Harum’s ‘A Whiter Shade of Pale’ (Fisher v. Brooker, here). ‘A Whiter Shade of Pale’ was recorded in 1967. Gary Brooker’s music was adorned by Matthew Fisher’s now world-famous organ solo (above), but Fisher proceeded to wait 38 years to claim his share of the copyright. The case involves a number of issues but the key question was whether Fisher should be entitled to future royalties on the song when he had left it so long to claim them.

The trial judge had granted three declarations: (1) Fisher is a co-author of the song; (2) Fisher is a joint copyright owner, with a share of 40%; (3) Brooker and Onward Music’s licence to exploit the work was revoked on 31 May 2005.

The Court of Appeal set aside (2) and (3) on the basis of delay (acquiescence and laches) – producing the bizarre result that Fisher would be a co-author with no copyright ownership. Although there’s no statutory limitation period to a copyright claim, delay is a potential bar to an injunction – which is granted at the discretion of the court. Mummery LJ argued that because Fisher’s ultimate goal was an injunction he should not be allowed the copyright interest that would provide the basis for it.

The House of Lords, however, distinguished between the property right and the potential injunction. Property rights are not discretionary. To refuse a property right because it might lead to an inequitable injunction would be ‘the tail wagging the dog’. If Fisher were to use his newly asserted property right to seek an injunction, the court would be free to determine whether to grant it. The Lords were unanimous in their decision – even tickled pink. Baroness Hale exclaimed as she danced the light fandango: ‘As one of those people who do remember the sixties, I am glad that the author of that memorable organ part has at last achieved the recognition he deserves.’