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Literary collaboration is a marriage of convenience. The parties have to preliminarily agree to their separate and joint responsibilities for the completion and submission of their work. What they think they know and can trust about each other is likely to be more than their ignorance of the other person’s work habits and literary abilities. Past performance does not necessarily assure future results and ability to work together is only tested after execution of the agreement. Think of a collaboration agreement as a pre-nuptial agreement. The unknowns include whether the parties can work together and the chemistry of their separate contributions. Publishers draft termination rights into their agreements for manuscript unacceptability. Collaborators should do that too. If they cannot work together; if one thinks the other’s contributions are inadequate, there should be a way out. Therefore, basic to any agreement is divorce. How do the parties separate if their collaboration doesn’t work?
The answer must come from the well crafted terms of parties’ agreement. Ill-crafted only leads to dispute. Disputes that mature into lawsuits are adjudicated under local (contract) law of the state having jurisdiction of the parties. Ambiguity in the agreement precludes any quick resolution, thereby raising (to a significant degree) the expenses of litigation. (The fact of their being few cases on this subject indicates that prosecuting a claim would likely be prohibitively expensive).
In a dispute in New York, Locke v. Aston, 1 A.D.3d 160 (1st Dept 2003), an appellate court held the phrase “if the collaboration is unsuccessful” ambiguous. “The motion court [explained the appellate court in rejecting the motion court's analysis] declared that ‘Dr. Aston no longer collaborates with Ms. Locke; the collaboration is unsuccessful.’ However, the term ‘unsuccessful’ is susceptible of other meanings.” One of the other meanings is that one of the parties found the other’s work unacceptable. This does not excuse breach of contract, it does not support a claim for defamation.
In addition to ambiguities, the parties’ agreement in Lock was “not complete.” “[D]efendant acknowledges that the April 30 agreement does not preclude remedies for which it does not expressly provide, thereby conceding that the agreement is not complete.” In considering other intentions,
Paragraph 6 of the agreement provides that, “if the collaboration is unsuccessful,” text written by defendant shall revert to him and text written by plaintiff shall return to her, but there is no language indicating that reversion of their respective intellectual property rights is intended to be the sole remedy in the event of a breach by one of the parties or that plaintiff waived all her rights in the event of a breach. Indeed, defendant asserts that remedies for breach “would absolutely exist” if, for instance, future profits were not split as required by the agreement.
At the center of the Locke lawsuit was a claim for defamation. Aston stated that plaintiff did “substandard” work and that the manuscript was “not up to standard.” An opinion clearly disturbing, but not actionable as a defamation any more than it would be if the publisher cancelled the publishing contract for the same reason. The parties had a publishing contract with HarperCollins. The court noted that
The court rejected plaintiff’s argument that the term refers to the parties’ inability to find a publisher, on the ground that when they entered into the agreement the parties had already signed a publishing contract with HarperCollins. However, the publishing contract, which is expressly referred to in the April 30 agreement, provides numerous grounds for the publisher to refuse to publish, and indeed HarperCollins did not agree to go forward until May. The publishing contract required the manuscript to be “acceptable” to the publisher and allowed the publisher to terminate if it did not deem the manuscript acceptable. It also provided for the publisher’s control of all details of publication, including pricing, advertising and promotion of the book. These provisions, and others, made it possible for the parties’ collaboration to be “unsuccessful” even after the publishing contract was signed and even if the parties did not breach their obligations to each other.
In drafting a collaboration agreement more is required than stating what the project is and each party’s contribution to the whole. It has to provide for the kinds of contingencies pointed out in the Locke lawsuit.
The Copyright Act §101 defines a “joint work” as “work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of the unitary whole.” Embedded here are several difficult concepts. “Intention” from whose perspective? And, what contributions qualify for joint authorship? The questions are important because “authors of a joint work are co-owners of copyright in the work” and “[a] joint owner of a copyright … cannot be liable to a co-owner for copyright infringement because a copyright owner cannot infringe his own copyright.” Strauss v. Hearst Corp., No. 85 Civ. 10017, 1988 WL 18932, at 5 (S.D.N.Y. Feb. 19, 1988). “Intention” is not presumed by a party declaring a right, but an inference drawn from the factual circumstances in each individual case.
For another person to enjoy the benefits of copyright ownership in a work, it is not sufficient that he merely assist the author in creating the work. If it is not intended for the “contributions to be merged into inseparable or independent parts of the unitary whole” it is not a “joint work.” The Second Circuit offered as an example the work of an editor: “a writer frequently works with an editor who makes numerous useful revisions to the first draft, some of which will consist of additions of copyrightable expression… yet very few editors and even fewer writers would expect the editor to be accorded the status of joint author, enjoying an undivided half interest in the copyright in the published work.” Childress v. Taylor, 945 F.2d 500, 507 (2nd Cir. 2001).
In Childress the plaintiff playwright sued for copyright infringement to which the defendant defended on the theory that she was a joint author. This was based on her contributions, which consisted of ideas and research. “Many people” (explained the Court) “can be said to ‘jointly labor’ toward ‘a common design’ who could not plausibly be considered co-authors.” This brings up a question of what exactly is meant by the statutory phrase that “their contributions be merged into inseparable or interdependent part of the unitary whole.” The Court explained that
Parts of a unitary whole are “inseparable” when they have little or no independent meaning standing alone. That would often be true of a work of written text, such as the play, that is the subject of the pending litigation. By contrast, parts of a unitary whole are “interdependent” when they have some meaning standing alone but achieve their primary significance because of their combined effect, as in the case of the words and music of a song.
Contributions are scaled. In the Childress case, plaintiff was asked to write a play. The defendant, an actress who portrayed the subject of the play on stage provided research material, “[b]ut there was no evidence that these aspects of [defendant's] role ever evolved into more than the helpful advice that might come from the case, the directors, or the producers of any play. A playwright does not so easily acquire a co-author.”
However, the “fully intend” prong does not mean that a collaborator is denied protection under the copyright laws simply because the other authors refuse to recognize her as a co-author. The “intent test requires a ‘nuanced inquiry into the factual indicia of ownership and authorship’ such as ‘how a collaborator regarded herself in relation to the work in terms of billing and credit, decision making, and the right to enter into contracts’.” BSN Medical, Inc. v. Parker Medical Associates LLC., 3:09cv15 (W.D.N.Carolina Nov. 17, 2011), citing Thomson v. Larson, 417 F.3d 195, 201 (2d Cir. 1998). If the contribution is less than co-authorship, but more in the nature of offering suggestions and ideas then the parties are “free to bargain for an arrangement that will be recognized as a matter of both copyright and contract law … [while] equal sharing of rights should be reserved for relationships in which all participants fully intend to be joint authors.” Id., 945 F.2d at 508.
Authors own their copyrights. It is their intellectual property to do with as they will. But, in some instances either by statutory fiat when the work is a “work made for hire” or by written contract whereby author transfers his rights to another party it isn’t their property.
A “work made for hire” is either “a work prepared by an employee within the scope of his or her employment”; or if it is “specially ordered or commissioned” it can be a “work made for hire” if it falls within one of the narrow categories enumerated in the Copyright Act, namely, “for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas.” In addition for the “specially ordered or commissioned work, the parties must “expressly agree in a written instrument signed by them that the work shall be considered a work made for hire” [Copyright Act, §101 (Definitions)].
Section 201(b) of the Copyright Act provides that “[i]n the case of a work made for hire the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.”
It should not be considered unusual for an employer to reinforce its statutory rights by requiring “employee” to acknowledge that “all the results and proceeds [of her service for the Company] during [her] assignment … including but not limited to, all written, graphic, dramatic, literary or pictorial works or materials … shall be works-made-for-hire, as that term is defined in the Copyright Act of 1976. Independent contractors whose product is not a “work-made-for-hire” typically acknowledge that nothing in their agreement “will create the relationship of agency or partnership or employer and employee” between them and the commissioning party. In uncertain situations, the agreement will contain a provision that the commissioning party “shall be the proprietor of the work and of all rights therein throughout the world including, without limitation, the copyright and all rights under the copyright as provided in the Copyright Act of 1976.” The statutory rules for transferring “rights comprised in the copyright” are set forth in §204 of the Copyright Act. The requirement for an effective assignment is not “unduly burdensome.” In the words of the court in Effects Associates, Inc. V. Cohen, 908 F.2d 555, 557 (9th Cir. 1990):
it necessitates neither protracted negotiations nor substantial expense. The rule is really quite simple: If the copyright holder agrees to transfer ownership to another party, that party must get the copyright holder to sign a piece of paper saying so. It doesn’t have to be the Magna Charta; a one-line pro forma statement will do.
These general principles of work-made-for-hire and work that falls outside of it come to life in litigated disputes. It is illustrated in a recent federal district court case in the Southern District of Florida, Hermosilla v. The Coca-Cola Company, 717 F.Supp.2d 1297 (2010), aff’d 11-11317 (11th Cir. 11-3-2011).
The defendant’s assignor in Hermosillahired plaintiff (a Mexican national) to adapt a song to include a verse of Spanish language lyrics for a marketing campaign. Providing lyrics is not a work made for hire, but in email messages to Universal – that it could “consider [the adaptation] a Work for Hire with no economic compensation” other than “one dollar” – plaintiff agreed to a proposal that in exchange for an assignment he would receive credit for the work. The district court temporarily enjoined Coca-Cola from advertising, selling, distributing, or disseminating the Spanish Celebration Mix unless it attributed credit to Vergara as the adapter of the song, but subsequently upon a fuller record the district court granted a summary judgment in favor of Coca-Cola. It ruled that since Hermosilla agreed to transfer his copyright interest in his adaptation to Universal, which assigned its rights to Coca-Cola, he no longer had any copyright in it.
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