Copyright of Joint Works (in the 2nd Circuit)

As a general rule, the creator of a work is the party who first put a creative expression into a fixed or tangible medium. All copyright in the work is then held by this author.

Joint works are those owned by multiple authors. By its definition, multiple authors combine in the creation of the work or each author creates his/her work independently with the intention that it merge with the contributions of others as an inseparable or interdependent part of the whole. Under the 1976 Copyright Act, this definition of a joint work can be found at 17 U.S.C. Section 101.

The regulation of copyright is one of Congress' enumerated powers provided by Article 1 Section 8 Paragraph 8 of the Constitution. Any copyright action must be brought in federal court. Standards for what creates a joint work based on the definition given in the Copyright Act vary by federal circuit. In the Second Circuit, which covers the states of New York, Vermont and Connecticut, the most recent seminal case on the issue of the creation of a joint work is Childress v. Taylor.

Childress v. Taylor: Facts
Taylor, an actress, researched the life and times of the comedian Jackie "Moms" Mabley. With the opportunity of a limited production in a reputable summer stock theater and an extraordinarily tight timeframe (6 weeks), Taylor asked Childress to write a play using the information from her research and some of Taylor's own input. The play had a successful run but Taylor and Childress could not come to an agreement about the ownership of the work. After the run, Taylor presented Childress with a contract granting her co-ownership in the play. The relationship deteriorated and no contract was signed. Taylor then commissioned another playwright to write a new "Moms" Mabley play based upon Childress' original play and used review quotes and references to that summer stock play in the billing of the new version. Childress brought suit.

INTENT TO CREATE A JOINT WORK
Citing Committee reports surrounding the creation of the Copyright Act, Childress states:

"[A] work is "joint" if the authors collaborated with each other, or if each of the authors prepared his or her contribution with the knowledge and intention that it would be merged with the contributions of other authors as "inseparable or interdependent parts of a unitary whole." The touchstone here is the intention, at the time the writing is done, that the parts be absorbed or combined into an integrated unit.... House Report at 120; Senate Report at 103"

Drawing from this, the court found a stringent requirement for joint works, namely that the joint authors must have mutually intended to be co-authors at the time that the work was created.

WHAT TO LOOK TO FOR INTENT
The amount of the contribution is not enough. Even a significant contribution without a specific finding of mutual intent may not be enough. Some of the key indicia of ownership are:
Decision Making Authority: The ability to make creative decisions over what is included or excluded from the work. If final cut/approval over a work is retained by one party, the other will have a harder time proving join work statuts.
Billing or Credit: Though not decisive, billing or credit is very important in determining how the parties viewed themselves in relation to the work.
Written Agreements With Third Parties: If there are agreements with production companies or other third parties that list one party as the author of a work, this will be a strong indicia of authorship. This is especially true if the party signing the agreement did so without the consent of the other.
Additional Evidence: Any additional writings or facts that can contribute to a finding for or against the creation of a joint work.

INDEPENDENTLY COPYRIGHTABLE
Under Childress, in the Second Circuit, the contributions of all authors must be independently copyrightable. Meaning that, each author's individual contribution must possesses a modicum of originality and is in a fixed medium. The same tests that are applied in general for copyrightability would be applied to each individual contribution made. Thus, a contribution such as a piece of improv in a sketch comedy routine would likely not be enough to create a joint work as it would fail the copyrightability element.

If a joint work is established, the co-authors are co-owners of the copyright and have an equal and undivided ownership in the entire work. Each can do as they would like with the work, including license it to others on a non-exclusive basis, provided that the one party account to the other for the economic rights that they are due.

Life Rights

I have a somewhat libertarian disposition when it comes to life rights. And if I weren't an attorney, and was instead a documentarian, I'd probably be in a lot of trouble. The issue arises of when life rights are needed.

Is your subject dead? If so, in most states and cases, the old chestnut "the dead can't sue" applies. A client was surprised ("shocked, shocked I say") to see my eyes light up when he told me that the subject of a film he was writing, based on a real person, was dead. And better yet, lived and died in New York where I know that the dead can't sue for life rights. Where life rights are concerned, the deader, the better.

If you have a live one, are you fictionalizing or making a documentary? If you're fictionalizing, you will need to get the subject's life rights. If not, well, this is where the libertarian in me conflicts with the advice that I give my clients.

Let me be very clear about this: The First Amendment protects educational and newsworthy speech. A documentarian should not be required to get life rights for the subject of a film where the work is being done from documents in the public domain on First Amendment grounds.

Nonetheless, there are issues of privacy and publicity, particularly as they pertain to non-public or personal pieces of information. If you are interviewing a subject, and she's talking about something that can be found in the Encyclopedia Britannica, you probably don't need a life rights release. As she would have no expectation of privacy in her discussion of that subject. (However, she may have an expectation of compensation and that should be negotiated and memorialized.) Alternatively, if you ask her questions of a personal nature, it's likely that she had an expectation of privacy and you will need to get her life rights.


There are also some commercial considerations that you should take into account:

1. Exclusivity: Do you want to lock your subject up and have sole access to him/her for tv/film/book, etc. You can't prevent someone else from doing research, but probably from conducting new interviews.

2. Prophylactic Measure: To prevent a suit, even if upon frivolous grounds.

3. Saleability: Closely related to 1 & 2 if you're looking to sell this to a production company or a major distributor, they're going to want to know that they won't have immediate competition and that they're not buying a lawsuit.

So in addition to the legal, there are good commercial, if not legal, to secure the life rights of his/her subject.

Life rights agreements tend to have the following main deal terms:

Initial Option Fee & Period
Subsequent Option Fees & Periods
Execution Fee
Grant of Rights (does it include fictionalization?)
Types of Media
Contingent Compensations
% of gross/net
Production bonus
Set up bonus
Personal appearances/consulting
Artistic control (rarely granted to the subject)

Copyright Agents

What's your liability if you allow third parties to post files and they post an infringing work to your site?

What should you do if you see that someone's ripping you off on YouTube or MySpace?

The Digital Millenium Copyright Act (DMCA) allows for a "safe harbor" for hosts where they are not liable for copyright infringement if it's been posted by third party, so long as they've registered a Copyright Agent with the Copyright Office. To designate an agent, go here at the Copyright Office's site. The fee is $80.

Once you have a designated Copyright Agent, put that information in your Terms of Service. For a good example of what such notice needs to look like, here's MySpace's Terms of Service, and the copyright notice is paragraph 9.

If you have been infringed by someone posting your material to a website you will need to contact their Copyright Agent to have it removed. The Agent is usually listed in the site's terms. You will need to give them 6 pieces of information which are:

1. Indication of the authority that you have. If you're not the copyright holder, a limited power of attorney works.
2. A description of the work.
3. Where the work is on the site.
4. Contact address, telephone & email.
5. Statement of good faith that the work's use is not authorized.
6. Statement that all the information above is accurate.

The site will have a reasonable amount of time to remove the infringing work and there is an appeals process if the accused infringer protests that the work is up in fair use.

Though established for providers such as YouTube and others who don't post their own material, sites like ITunes and others who clearly do post have Agents as well. It's now become common to start with the Agent even if the work was posted by the site in question or if the issue is outside of copyright such as trademark. The DMCA was not written to cover these instances, but people are using it to enforce actions that are much broader than the written word.

This is a good thing. We don't want to sue Apple because ITunes posted a track that the distributor didn't have the rights to. We just want a mechanism to notify them that they have to take it down. And we want a mechanism to systematize and regulate the policing of infringing works.