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Joint Copyright Problems and Progress

By Michael D. Remer

Knowledgeable photographers have long understood the principle that they are the owner of the copyright in their images from the moment of creation-that is, when the shutter clicks and the image is fixed on film.

They also know that there are certain exceptions to this principle. Two widely publicized exceptions are work for hire (by which the copyright is vested in the other party from the moment of creation), and assignment of copyright (by which the photographer sells his or her copyright to the other party). Another exception, which is gaining increasing importance and attention, is joint copyright. Here, the photographer does not lose the copyright altogether, but shares it with one or more other parties.

The Copyright Act of 1976 defines a "joint work" as "a work prepared by two or more authors with the intention that their contributions be merged into inseparable or inter-dependent parts of a unitary whole." Each joint author owns a pro rata share of the copyright in the work (for example, two joint authors each own one-half of the copyright, three joint authors each own one-third, and so on)-unless they agree upon some other proportions of ownership.

Clearly, photographers are better off with joint copyright ownership than with no ownership at all in work for hire or copyright assignment situations. But joint copyright ownership presents ample problems of its own for photographers.

Joint copyright problems

The consent of all joint copyright owners is required in order to grant an exclusive license. However, each joint copyright owner can use the work or grant non-exclusive licenses to third parties to use the work, without the consent of the other co-owners. It is true that such owner must account to his or her co-owners for any profits resulting from such uses or licenses. But the problems of policing such uses and licenses, and of proving profits even when the uses and licenses are identified, can be formidable. Furthermore, non-exclusive licenses granted by other co-owners are likely to diminish the value of the copyright for the photographer. And by the same token, if the photographer cannot get the consent of all of the other co-owners in order to grant an exclusive license, he or she will be limited to granting less valuable non-exclusive licenses.

These difficulties are not academic. In today's difficult economic climate, and at a time when users of photography are increasingly aggressive about obtaining copyrights, photographers can expect to encounter the issue of joint authorship more frequently -such as purchase orders with provisions asserting joint copyright (often along with provisions for work for hire or copyright assignment, or both), and joint copyright claims asserted by art directors, editors, assistants, and others involved in the photographer's creative work. ASMP has struggled for a number of years to remove-or at least minimize-the difficulties of joint copyright by corrective legislation. The legislation sought to require a prior written agreement for joint copyright, and to require the contribution of a joint author to be copyrightable. However, it has so far not been possible to get either such requirement enacted. This gives even greater importance to court holdings on joint copyright.

Childress v. Taylor

A recent joint copyright decision in the U.S. Circuit Court of Appeals for the Second Circuit (which includes New York City and is sometimes referred to as the "copyright circuit") ruled on the critical question of when a contributor to a copyrighted work is entitled to joint authorship status. Childress v. Taylor, 20 USPQ 2d 1191 (1991).

Actress Clarice Taylor undertook to develop a play based on the life of black comedienne "Moms" Mabley. Taylor assembled material about Mabley, and delivered it to playwright Alice Childress. Childress wrote the play, Taylor having discussed and made suggestions about certain facts and details. However, Childress was responsible for the actual structure and dialogue of the play.

Childress registered the play in her own name in the U.S. Copyright Office. Taylor produced and performed in the play. A second production was staged, and Childress also registered in her own name her new material contained in the second production.

Meanwhile, there was sketchy correspondence between Childress' and Taylor's agents about the terms of an agreement, but no formal contract was concluded. The relationship deteriorated, and Taylor gave the Childress script to another playwright, Ben Caldwell, with instructions as to elements to be changed. The Caldwell version was produced, without reference to Childress as author of the original version. However, advertising included reviews of Childress' play and referred to the earlier production.

Childress sued for copyright infringement. Taylor responded that she was a joint author with Childress, and that there was therefore no infringement. The court found that Taylor was not a joint author of Childress' play, and that Caldwell's play was substantially similar to and infringed Childress' play. The court granted summary judgment for Childress, and Taylor appealed.

The court of Appeals addressed the two elements of joint authorship: the sufficiency of the contribution made by an author, and the mutual intention to create a joint work.

Copyright ability of contribution

It is fundamental copyright law that only the expression of an idea, not the idea itself, is copyrightable. The Childress court noted that Federal appellate circuits and copyright scholars differed among themselves as to whether the contribution of each joint author need be independently copyrightable (an unresolved issue in the Second Circuit). The court acknowledged the view that if production of creative works is to be encouraged, there should be no requirement that each joint author's contribution be copyrightable- "the resulting work is no less a valuable result of the creative process simply because the idea and the expression came from two different individuals."

However, the court finally concluded that it would adopt the requirement of copyright ability -a position supported by the weight of case law and endorsed by the Copyright Office. The court noted that this requirement "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." The court also noted that in the absence of a contract to the contrary, copyright is in the person created copyrightable material- and anyone who proposes to contribute non-copyrightable material "is free to make a contract to disclose his or her material in return for assignment of part ownership of the resulting copyright." This would have the further benefit, said the court, of minimizing subsequent disputes by formalizing the agreement in a written contract.

Intent of parties

Turning to the element of intent, the court noted that it would be unsound to limit the inquiry in each case merely to whether the authors intended to merge their work into a unitary whole. The court pointed to the common situation where an editor or research assistant may make copyrightable additions to a writer's manuscript. The parties undoubtedly intend to create a unitary whole-but such contributors rarely intend to be recognized as a joint author sharing in copyright ownership. Thus, said the court, the trial judge was correct in requiring as a condition to joint authorship that the authors must at the time of creation "entertain in their minds the concept of joint authorship, whether or not they understood precisely the legal consequences of that relationship." The court found it significant that Childress had rejected Taylor's effort to reach a co-ownership agreement, that Taylor had accepted such rejection, and that no credits for Taylor as co-author were agreed upon or given. The court endorsed the trial judge's observation that "whatever thought of co-authorship might have existed in Taylor's mind 'was emphatically not shared by the purported co-author.'" Taylor's contribution lacking copyright ability, and the parties not having had a mutual intent to be joint authors, the court affirmed the summary judgment in favor of Childress' infringement claim.

Favorable decision

Photographers have good reason to be encouraged by the Childress court's two-part test for joint authorship. First, another party's contribution to creation of an image will not qualify unless it is copyrightable -and as indicated, copyright is only available for the expression of the image, not the ideas embodied in that expression. Inevitably, there are some cases with a gray area between the two poles of idea and expression -in those instances, the outcome depends on the facts of each case. For that matter, there are some cases where the contribution does indeed constitute copyrightable expression. But in many other situations commonly encountered by photographers-such as the art director contributing ideas about the nature and effect of the planned image, and the photographer giving expression to such ideas -the claimant will be left with the shorter end of the legal stick.

Second, it is not sufficient for the claimant to establish a mutual intent to create a unified work. The claimant must establish that the parties intend at the time of creation to be joint authors. Absent a written agreement, the claimant in situations commonly encountered by photographers is likely to have a difficult time establishing such intent.

Paperwork still crucial

Even with the benefits of Childress, photographers should by no means assume that joint copyright claims are a thing of the past. First of all, there will of course continue to be some cases in which a claimant may be able to meet both parts of the Childress test. But more important -and as the court itself emphasized-joint authorship can always be established by contract, even where the contribution is not copyrightable.

What this means for the photographer is that in matters of joint copyright, as elsewhere, good paperwork is vital for protection of rights. If a purchase order, book contract, or any other document submitted to the photographer includes provisions giving the other party joint authorship, it is up to the photographer to object to such provisions and make sure they are deleted. And of course the photographer's own paperwork should spell out that the photographer is the sole copyright owner of the images. ASMP model forms (which, like all model forms, should be modified to suit the particular circumstances) provide that except for the specific rights licensed, all rights including copyright remain the sole and exclusive property of the photographer-and that a proper copyright notice in the photographer's name must accompany each use as a credit line.

With developing case law such as Childress, along with proper paperwork, photographers have reason to feel better armed in the ongoing joint copyright battle.

© Michael D Remer/ASMP

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