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Useful, accessible judicial guidance: ten point summary on joint ownership

The Intellectual Property and Enterprise Court has provided a useful ten point summary on the law on joint ownership of copyright in the recent case of Martin and another v Kogan and others [2017] EWHC 292.

The claimant, Mr Martin, had applied to the court to confirm his rights as the sole author of the script used to produce the film, Florence Foster Jenkins. Hacon J ruled that the contribution to the screenplay by the defendant, Ms Kogan, was insufficient to amount to joint authorship.

Background

Mr Martin and Ms Kogan lived together at the time Mr Martin began writing the script, based on the life of Florence Foster Jenkins, a New York socialite who became famous for her striking soprano voice.  Ms Kogan, an opera singer, contributed 'edits' to the first three drafts of the screenplay but the couple had separated by the time the final version of the screenplay was produced by Mr Martin.

Ms Kogan had sought a proportion of Mr Martin's income from the film, following which Mr Martin decided to seek a declaration of sole authorship. Ms Kogan counterclaimed for a declaration of joint-authorship and joined the film's production and financing companies as joint defendants.

The court had to consider firstly, the nature and extent of Ms Kogan's contribution to the writing of the screenplay and secondly, whether that contribution made the screenplay a 'work of joint ownership' within the meaning of section 10(1) Copyright, Designs and Patents Act 1988 (CDPA).

The Court's approach

Section 10(1) of the CDPA states:

"(1) In this part a 'work of joint authorship' means a work produced by the collaboration of two or more authors in which the contribution of each author is not distinct from that of the other author or authors."

Hacon J confirmed that the wording of the subsection provides two express requirements for joint ownership and a third can be implied, namely:

  • There must be collaboration between two or more authors;
  • The contribution of each author must not be distinct from that of the other author (this was not in dispute in this case); and
  • Where a person has contributed to the creation of a work in collaboration with another, he/she must have made a sufficient contribution to qualify as a joint author.

On the issue of collaboration, Hacon J concluded fairly quickly that there was no collaboration in creating the final screenplay since the couple were no longer living together and had not discussed the final version. He therefore went on to consider the question of whether Ms Kogan's contributions were sufficient to make her a joint author, and in doing so analysed the case law on sufficient contribution.

Both Ms Kogan's contributions to the text and also non-textual contributions were considered, the judge concluding that neither category ever 'rose above the level of providing useful jargon, along with helpful criticism and some minor plot suggestions'.   The contributions, taken together, were therefore not sufficient to quality Ms Kogan as a joint author.

The law on joint ownership

The case is to be welcomed for Judge Hacon's succinct ten point summary of his understanding of the law on joint authorship, as follows:

  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.

     

  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.

Comment

The case provides a useful reminder to authors that both collaboration and common design in respect of the creation of the work is needed to establish joint authorship.  Hacon J points out that consent to use someone's work is necessary to establish collaboration, but this is not sufficient on its own.  There must have been a 'common design', that is, co-operative acts by the authors at the time the copyright was created.  Individuals who consider themselves to be co-authors should seek to clarify that this is the agreed position at an early stage, and require their name to be published on all copies of the work.

As to the type of contributions made, Hacon J analyses the distinction between what he describes as the 'primary' skill required to create a copyright work (e.g. the arrangement of words in the context of literary works) and other 'secondary' skills (e.g. inventing the plot and character).  Although there is not a distinction in law as such, it may be harder in practice to establish joint ownership solely by reference to secondary skills.

It is interesting that Hacon J rejected the ultimate arbiter test put forward by Mr Martin's counsel, namely that since Mr Martin had had the final word as to what would go in each draft, it followed that he was the sole author of all the drafts.  Instead, Hacon J considered that the presence of an ultimate arbiter is a relevant factor when assessing joint ownership (sometimes highly relevant), but it is not decisive.

For organisations commissioning works, this should be borne in mind when making due diligence enquiries as to authorship and the extent of contributions made by key contributors.  All contributions should be carefully documented and contractual warranties sought; although in practice, there remains a danger that an action could be brought by uncredited authors.

This publication is intended for general guidance and represents our understanding of the relevant law and practice as at December 2017. Specific advice should be sought for specific cases. For more information see our terms & conditions.

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