FNa1.
Associate Professor, Syracuse University College of Law. Copyright 1997,
Laura G. Lape. I wish to thank my research assistants, David Ardia and Laura
Speanburg, for their invaluable assistance.
FN1. Listserv
lists are electronic discussion lists that currently operate on the Internet
and cover a wide variety of topics of special interest to the subscribers
of each list. The software which supports these discussion lists is called
"listserv," an abbreviation of list server. Allen C. Benson, The
Complete Internet Companion For Librarians 195 (1995).
FN2. Many
early cases concerning joint work doctrine dealt with the music industry.
See infra Part II (discussing joint work doctrine as it existed prior to
the 1976 Copyright Act). For the joint work doctrine, see 17 U.S.C. s 201(a)
(1994). See also infra Parts II and III.
FN3. See,
e.g., Statement of the Association of American Publishers on the NII Copyright
Protection Act of 1995 Before the House Subcomm. on Courts and Intellectual
Property, 104th Cong. (Feb. 8, 1996), available in 1996 WL 50046 (stating
that "segments of scientific and professional publishing will use the
NII [National Information Infrastructure] increasingly to engage in collaborative
research and writing"); Benjamin Kaplan, An Unhurried View of Copyright
117 (1967) (stating that "[m]uch intellectual work including the distinctively
imaginative is now being done by teams, a practice apt to continue and grow");
Charles D. Ossola, 'Joint Work' Theory Raises New Questions on Authors'
Rights, Nat'l L.J., Jan. 18, 1993, at S10 (reporting that "[c]omputer
programs, motion pictures, multimedia audiovisual works, architectural plans,
video games, graphic designs, advertisements and a seemingly endless array
of other copyrightable subject matter often end up as joint works");
see also 17 U.S.C. ss 101-1101 (1994) (Copyright Act).
FN4. See,
e.g., Jonathan Grudin, Computer-Supported Cooperative Work, 34 Comm. ACM
30 (1991) (reporting that "[o]ver the past five years, attention to
collaborative computing has increased dramatically"); Michael Schrage,
Computer Tools For Thinking in Tandem, 253 Sci. 505 (1991) (reporting a
"wave of computer-mediated collaboration now sweeping across science").
FN5. See
infra note 60 and accompanying text (noting that the significance of joint
work doctrine has increased due to restriction of the work-made-for-hire
doctrine).
FN6. See
17 U.S.C. s 101 (1994) (defining a joint work); Subcomm. on Patents, Trademarks,
and Copyrights of Senate Comm. on the Judiciary, 86th Cong., 2d Sess., Copyright
Law Revision, Study No. 12, at 89 (Comm. Print 1960) [hereinafter Subcomm.
on Patents, Trademarks, and Copyrights] (stating that the 1909 Act did not
mention joint authorship and that the legislative history to the 1909 Act
was also silent); 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright
s 6.01, at 6-3 n.1 (1997) (stating that "[t]he 1909 Act did not expressly
refer to the doctrine of joint ownership").
FN7. See
Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., 221 F.2d 569 (2d
Cir. 1955); see also Gilliam v. American Broad. Cos., 538 F.2d 14, 22 (2d
Cir. 1976) (stating that the 12th Street Rag doctrine has been criticized);
Register of Copyrights, 87th Cong., 1st Sess., Report on the General Revision
of the U.S. Copyright Law 90 (Comm. Print 1961) (stating that the 12th Street
Rag case is a "sharp departure from the view previously taken by the
courts" and recommending the adoption of "the test laid down by
the earlier line of cases"). The 12th Street Rag case held that the
required intent to contribute to a larger work can be conceived long after
that contribution has been written, and can be conceived by one other than
the author of that contribution. See Shapiro, Bernstein & Co., 221 F.2d
at 570 (stating that the test is the consent of whoever holds the copyright
on the first author's product at the time of the collaboration).
FN8. See
Childress v. Taylor, 945 F.2d 500, 505 (2d Cir. 1991) (explaining that "[t]hough
the early case law is illuminating, our task is to apply the standards of
the Copyright Act of 1976 and endeavor to achieve the results that Congress
likely intended").
FN9. See
Register of Copyrights, 89th Cong., 1st Sess., Supplementary Report on the
General Revision of the U.S. Copyright Law 65 (Comm. Print 1965) (stating
that the definition of a joint work in the bill "carries out the recommendation
of the 1961 Report"); Register of Copyrights, supra note 7, at 90 (recommending
adoption of "the test laid down by the earlier [i.e., prior to the
12th Street Rag case] line of cases--that a joint work is one created by
two or more authors who intend to have their contributions joined together
as a single work").
FN10.
For a discussion of the requirements of an independently copyrightable contribution
and the intent to be joint authors, see infra notes 69-147 and accompanying
text.
FN11.
220 F. 195 (S.D.N.Y. 1915), aff'd, 271 F. 211 (2d Cir. 1921).
FN12.
See Picture Music, Inc. v. Bourne, Inc., 314 F. Supp. 640, 645 (S.D.N.Y.
1970), aff'd on other grounds, 457 F.2d 1213 (2d Cir.), cert. denied, 409
U.S. 997 (1972); cf. Childress, 945 F.2d at 504 (noting that "[c]o-authorship
was well known to the common law" and that an early formulation of
a definition was endorsed in Maurel).
FN13.
Maurel, 220 F. at 199 (relying on Levy v. Rutley, 6 L.R.-C.P. 523 (C.P.
1871)).
FN14.
See, e.g., Reed v. Holliday, 19 F. 325, 326 (C.C.W.D. Pa. 1884) (stating
that "plaintiffs are the proprietors...of two text-books...of which
they are the joint authors and compilers"); Shook v. Rankin, 21 F.
Cas. 1337, 1339 (C.C.D. Minn. 1875) (finding that the prima facie case of
joint authorship was not overcome by defendant's evidence); Bunkley v. De
Witt, 4 F. Cas. 665, 666 (C.C.S.D.N.Y. 1855) (finding that plaintiff's evidence
of authorship overcame the claim of joint authorship by one of the defendants
and a third person).
FN15.
See cases cited supra note 14; see also Samuel H. Wandell, The Law of the
Theatre 476 (1891) (describing the rights of joint authors of plays).
FN16.
See, e.g., Edward B. Marks Music Corp. v. Jerry Vogel Music Co., 140 2 F.d
266, 267 (2d Cir.), modified, 140 F.2d 268 (2d Cir. 1944) (defining a joint
work as "'a joint laboring in furtherance of a common design"'
(quoting Levy v. Rutley, 6 L.R.-C.P. 523, 529 (C.P. 1871)) and stating that
the parties must "mean their contributions...to be embodied in a single
work"); Maurel, 271 F. at 215 (stating that "'[t]he pith of joint
authorship consists in co- operation, in a common design"'); Shapiro,
Bernstein & Co. v. Jerry Vogel Music Co., 115 F. Supp. 754, 758-59 (S.D.N.Y.
1953) (stating that joint authorship has been defined as "'joint labouring
in furtherance of a common design,"' and that the first author must
have intended that his work be complemented by the contribution of some
one else), rev'd on other grounds, 221 F.2d 569 (2d Cir.), rev'd on other
grounds, 223 F.2d 252 (2d Cir. 1955); G. Ricordi & Co. v. Columbia Graphophone
Co., 258 F. 72, 75 (S.D.N.Y. 1919) (defining joint authorship as "[a]
joint labor in carrying out a common design"); Maurel, 220 F. at 199-200
(stating that "'to constitute joint authorship there must be a common
design"' and that "[w]hen several collaborators knowingly engage
in the production of a piece which is to be presented originally as a whole
only, they adopt that common design") (relying on Levy v. Rutley, 6
L.R.-C.P. 523 (C.P. 1871)).
FN17.
See, e.g., Edward B. Marks Music Corp., 140 F.2d at 267 (stating that the
interests of joint authors "will be as inextricably involved, as are
the threads out of which they have woven the seamless fabric of the work");
Herbert v. Fields, 152 N.Y.S. 487, 489 (Sup. Ct. 1915) (comparing Maurel,
in which "the indissoluble identification of the scenario with the
final play was manifest" to the musical comedy at issue, of which the
vocal score "is a separable production, copyrighted and sold as such"
and therefore not part of a joint work); see also Grosset & Dunlap,
Inc. v. Gulf & W. Corp., 534 F. Supp. 606, 609 (S.D.N.Y. 1982) (finding
stories and illustrations not a joint work, in part, because the "stories
could be enjoyed in full without the illustrations," in an opinion
ambiguous as to which act was applied regarding ownership, given events
occurring before 1978). This concern with inseparability is not surprising
given that the British Copyright Act has required by statute, since 1911,
that the contribution of a joint author not be "distinct" or "separate"
from the contribution of the other author. Copyright, Designs and Patents
Act, 1988, ch. 48, s 10(1) (Eng.) (defining a "'work of joint authorship"'
as one in which "the contribution of each author is not distinct from
that of the other author or authors"); Copyright Act, 1956, 4 &
5 Eliz. 2, ch. 74, s 11(3) (Eng.) (defining a "'work of joint authorship"'
as one in which "the contribution of each author is not separate from
the contribution of the other author or authors"); Copyright Act, 1911,
1 & 2 Geo. 5, ch. 46, s 16(3) (Eng.) (defining a "'work of joint
authorship"' as one in which "the contribution of one author is
not distinct from the contributions of the other author or authors").
FN18.
Maurel, 220 F. at 199.
FN19.
See, e.g., Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., 161 F.2d
406, 409 (2d Cir. 1946) (stating that "[t]he words and music of a song...are
as little separable for purposes of the copyright as are the individual
musical notes which constitute the melody"); Shapiro, Bernstein &
Co., 115 F. Supp. at 758 (stating that whether the resulting work is to
be found an "'indivisible product,' turns on the intent each had in
mind in respect to his share of the unitary whole").
FN20.
The Southern District of New York stated in 1970 that "[t]raditionally,
joint authorship contemplated collaboration by the authors," but that
"in later cases the ingredient of collaboration was eliminated on a
finding of a fusion of effort." Picture Music, Inc. v. Bourne, Inc.,
314 F. Supp. 640, 645 (S.D.N.Y. 1970), aff'd, 457 F.2d 1213 (2d Cir. 1972).
This characterization of the development of the definition of joint works
is misleading. The later cases simply addressed a question not addressed
by the earlier cases, whether the authors need have worked together and
at the same time.
FN21.
140 F.2d 266 (2d. Cir. 1944).
FN22.
Id. at 267. In Marks, the principal of the plaintiff corporation, Marks,
wrote lyrics which he intended someone else to set to music and assigned
the lyrics to a publisher, who then hired a composer to write the music.
See id. at 266. Marks and the composer did not meet until years later. See
id.; see also Donna v. Dodd, Mead & Co., 374 F. Supp. 429, 430 (S.D.N.Y.
1974) (relying in part on Marks where "photographs were not taken with
[the writer's] text specifically in mind" but "may have been intended
from the start to become part of a joint work with text from another source").
But cf. Oxford Univ. Press, N.Y., Inc. v. United States, 33 C.C.P.A. 11,
21 (C.C.P.A. 1945) (finding that joint authorship "necessarily implies
that co- authors are contemporaries"). The Marks holding was slightly
extended in Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., 161 F.2d
406 (2d Cir. 1946), known as the Melancholy Baby case. In the Melancholy
Baby case, the Second Circuit extended the Marks rule to cover a case where
a composer intended to collaborate with one lyricist at the time he composed
the music, and later intended to collaborate with another lyricist, whose
lyrics were in fact used. See id. at 410.
FN23.
221 F.2d 569 (2d Cir.), rev'd on other grounds, 223 F.2d 252 (2d Cir. 1955).
FN24.
See id. at 570 (holding that "the test [should be] the consent, by
the one who holds the copyright on the product of the first author, at the
time of the collaboration, to the collaboration by the second author");
see also Donna, 374 F. Supp. at 430 (relying, in part, on the 12th Street
Rag case where a photographer may not have intended, when taking photographs,
for the photographs to be joined with text, but did so later intend). But
see Szekely v. Eagle Lion Films, Inc., 242 F.2d 266, 268 (2d Cir. 1957)
(implying that intent for a contribution to become part of one work must
be present "at the inception of the [original] work").
FN25.
See supra note 9 for legislative history clarifying that the definition
of a joint work in the revision bill was intended to adopt the test laid
down by the line of cases prior to the 12th Street Rag case. The language
of the s 101 definition of a joint work requires that the authors possess
the required intent and that the intent be present at the time the contributions
are prepared, but not that the authors work together or simultaneously.
See 17 U.S.C. s 101 (1994) (defining a joint work as "a work prepared
by two or more authors with the intention that their contributions be merged
into...parts of a unitary whole"). The House Report to the 1976 Act
also explained that "a work is 'joint' if the authors collaborated
with each other [i.e., worked together and at the same time], 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," and
that the intention must be present "at the time the writing is done."
H.R. Rep. No. 94-1476, at 120 (1976), reprinted in 1976 U.S.C.C.A.N. 5659,
5736 (emphasis added).
FN26.
For a discussion of the requirement of an independently copyrightable contribution,
see infra notes 110-45 and accompanying text.
FN27.
See Gilliam v. American Broad. Cos., 538 F.2d 14, 22 (2d Cir. 1976); Picture
Music, Inc. v. Bourne, Inc., 314 F. Supp. 640, 647 (S.D.N.Y. 1970), aff'd
on other grounds, 457 F.2d 1213, 1215 (2d Cir. 1972) (affirming on the grounds
that the second contributor's contribution "was work done for hire");
cf. Muller v. Walt Disney Prods., 871 F. Supp. 678 (S.D.N.Y. 1994) (finding
that a 1939 contract between the conductor and the studio was unambiguous
evidence that the parties contemplated work for hire and not joint authorship).
Muller, although nominally decided under the 1909 Act, used exclusively
1976 Act case law to support its statement that in joint authorship determinations,
"courts focus on whether the persons regarded themselves as joint authors."
See id. at 684 & n.2.
FN28.
See supra note 9 (citing legislative history to the 1976 Act).
FN29.
314 F. Supp 640 (S.D.N.Y. 1970).
FN30.
See id. at 642-43.
FN31.
See id. at 646.
FN32.
See id. at 647; see also Picture Music, Inc. v. Bourne, Inc., 457 F.2d 1213,
1215 (2d Cir. 1972) (stating that "the trial court appears to have
relied principally" on the theory that the second contributor's "contribution
was not substantial enough").
FN33.
Picture Music, Inc., 314 F. Supp. at 647.
FN34.
Id.
FN35.
If the court had taken seriously a requirement of intention to become joint
owners, it would have had to address here the fact that Berlin, the assignee,
credited the song on sheet music to both contributors, which supports the
view that both parties did intend to be joint owners. See id. at 643.
FN36.
538 F.2d 14 (2d Cir. 1976).
FN37.
See id. at 22.
FN38.
Id.
FN39.
See id. (noting criticism of the 12th Street Rag doctrine).
FN40.
See supra notes 20-22 and accompanying text (discussing the Marks rule).
FN41.
Gilliam, 538 F.2d at 22.
FN42.
17 U.S.C. s 101 (1994).
FN43.
Congress had considered the possibility of requiring inseparable contributions
early in the revision process. See Subcomm. on Patents, Trademarks, and
Copyrights, supra note 6, at 109-10 (suggesting the possibility of requiring
inseparable contributions).
FN44.
For the intent of Congress to reject the 12th Street Rag doctrine and to
adopt a definition generally consistent with prior case law, see supra notes
9, 25 and accompanying text.
FN45.
See Peter Jaszi, On the Author Effect: Contemporary Copyright and Collective
Creativity, 10 Cardozo Arts & Ent. L.J. 293, 315 (1992) (arguing that
"in many particular instances copyright refuses to acknowledge the
existence of 'joint authorship,' or does so only grudgingly"); cf.
Community for Creative Non-Violence v. Reid, 846 F.2d 1485, 1496 n.14 (D.C.
Cir. 1988) (entertaining Community for Creative Non-Violence's [hereinafter
CCNV] joint authorship claim, although not raised before the district court,
and remanding for consideration whether sculpture was a joint work), aff'd
on other grounds, 490 U.S. 730, 753 n.32 (1989) (refraining from passing
judgment on the applicability of the joint authorship provisions because
neither party sought review of the remand order).
FN46.
For the courts' wariness concerning the joint work doctrine, see for example,
Erickson v. Trinity Theatre, Inc., 13 F.3d 1061, 1068 (7th Cir. 1994) (expressing
concern that "even a person whose contribution is relatively minor,
if accorded joint authorship status, enjoys a significant benefit"),
and Respect Inc. v. Committee on the Status of Women, 815 F. Supp. 1112,
1119 (N.D. Ill. 1993) (expressing concern that "crediting a minor contributor
with joint-authorship status confers substantially greater benefits than
the relative amount of his or her effort" because joint authors hold
equal interests).
FN47.
945 F.2d 500 (2d Cir. 1991).
FN48.
See id. at 502.
FN49.
For a discussion of judicial requirements as to the contribution necessary
from each co-author, see infra notes 110-44 and accompanying text.
FN50.
Childress, 945 F.2d at 507.
FN51.
Id. at 509.
FN52.
See, e.g., Forward v. Thorogood, 985 F.2d 604, 606-07 (1st Cir. 1993) (considering
joint authorship only after finding no work made for hire); M.G.B. Homes,
Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1492-93 (11th Cir. 1990) (establishing
that house plans were not a work made for hire before considering the possibility
that M.G.B. was a joint author); Community for Creative Non-Violence v.
Reid, 846 F.2d 1485, 1495 (D.C. Cir. 1988) (considering existence of a joint
work only after having rejected the possibility of a work made for hire),
aff'd on other grounds, 490 U.S. 730 (1989); Respect, Inc. v. Committee
on the Status of Women, 815 F. Supp. 1112, 1116-19 (N.D. Ill. 1993) (same);
Aitken, Hazen, Hoffman, Miller, P.C. v. Empire Constr. Co., 542 F. Supp.
252, 256-59 (D. Neb. 1982) (same); Meltzer v. Zoller, 520 F. Supp. 847,
854-57 (D.N.J. 1981) (same); see also Philadelphia Orchestra Ass'n v. Walt
Disney Co., 821 F. Supp. 341, 347-49 (E.D. Pa. 1993) (finding under the
1909 Act that the work was not joint because it was work made for hire).
FN53.
896 F.2d 1485 (D.C. Cir. 1988), aff'd on other grounds, 990 U.S. 730 (1989).
FN54.
See id. at 1496-97 (discussing the possibility that the sculpture at issue
was a joint work). The District of Columbia Circuit entertained CCNV's claim
of joint authorship although the issue was not raised before the district
court. See id. at 1496 n.14.
FN55.
See id. at 1497 n.18.
FN56.
Id. at 1497. The court remanded the case for further consideration of the
joint authorship claim. See id.
FN57.
See Childress v. Taylor, 945 F.2d 500, 507 n.6 (2d Cir. 1991).
FN58.
See id.
FN59.
Id.
FN60.
See 17 U.S.C. s 101 (1994) (defining a "joint work" and a "work
made for hire"); cf. H.R. Rep. No. 94-1476, at 120 (1976), reprinted
in 1976 U.S.C.C.A.N. 5659, 5736.
FN61.
Note that although this choice may be justifiable, the courts making the
choice have offered no justification. A corollary to the priority of work
made for hire over joint works is that once the scope of work made for hire
was restricted by the Supreme Court in Community for Creative Non-Violence,
the arena left for joint works expanded. See Community for Creative Non-
Violence, 490 U.S. 730, 750-51 (1989) (limiting works made for hire under
s 101(1) to works produced by employees as defined by agency principles);
see also Community for Creative Non-Violence, 846 F.2d 1485, 1497 n.17 (D.C.
Cir. 1988) (stating that because of the narrower scope of the work-made-for-
hire doctrine under the 1976 Act than under the 1909 Act, "more cases
of this genre can be expected to appear under the joint authorship rubric").
FN62.
See, e.g., Aerospace Servs. Int'l v. LPA Group, Inc., 57 F.3d 1002, 1004
(11th Cir. 1995) (stating that "[t]he evidence in the instant case
supports the district court's finding that '... the respective contributions
of ASI and LPA were neither "inseparable" nor "interdependent""
where portions of ASI's document were incorporated verbatim into two other
documents, thus becoming interdependent parts); Eckert v. Hurley Chicago
Co., 638 F. Supp. 699, 704 (N.D. Ill. 1986) (stating that a picture of a
water filter which had been placed in a brochure was "not an inseparable
or interdependent part of the whole of the brochure").
FN63.
See, e.g., M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1493
(11th Cir. 1990); Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 609
F. Supp. 1307, 1319 (E.D. Pa. 1985) (stating that although Rand Jaslow had
given instructions for the creation of a computer program, "[t]here
is not a scintilla of evidence that the parties ever intended that Rand
Jaslow's contributions, whatever they may have been, should merge into the
final computer design and system"), aff'd on other grounds, 797 F.2d
1222 (3d Cir. 1986), cert. denied, 479 U.S. 1031 (1987).
FN64.
903 F.2d 1486 (11th Cir. 1990).
FN65.
See id. at 1493.
FN66.
17 U.S.C. s 101 (1994).
FN67.
See Childress v. Taylor, 945 F.2d 500, 507 (2d Cir. 1991) (stating that
"[t]he wording of the statutory definition appears to make relevant
only the state of mind regarding the unitary nature of the finished work");
Respect Inc. v. Committee on the Status of Women, 815 F. Supp. 1112, 1120
(N.D. Ill. 1993) (noting that "the statutory language might be read
as asking only whether the putative co-authors intended a unitary finished
work" but that "the cases have taken a different view").
FN68.
See 1 Nimmer & Nimmer, supra note 6, s 6.07, at 6-24 to 6-25 (stating
that the Act "contains no requirement that each contribute an independently
copyrightable component" and that the legislative history "elevates
intention as the touchstone, without placing any further parsing as to the
copyrightable status of each individual component that the parties intend
to contribute").
FN69.
See H.R. Rep. No. 94-1476, at 120 (1976), reprinted in 1976 U.S.C.C.A.N.
5659, 5736. [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.
Id. The concern expressed by the Second Circuit in Childress and by the
Seventh Circuit in Erickson v. Trinity Theatre, Inc., that the above- quoted
passage from the legislative history introduces ambiguity into the reading
of the statute, results from an excessively literal-minded reading of this
passage. See Erickson v. Trinity Theatre, Inc., 13 F.3d 1061, 1068- 69 (7th
Cir. 1994); Childress, 945 F.2d at 505; see also Respect, Inc., 815 F. Supp.
at 1119 (raising the same concern). The Second and Seventh Circuits raised
the possibility that this passage was intended to create two alternative
criteria, either an act of collaboration or the appropriate intent. However,
the above-quoted passage was merely intended to make it clear that joint
authors need not work simultaneously and together, i.e. collaborate, but
may work sequentially and apart, so long as each has the intent that his
or her contribution will be merged into the whole. See Copyright Law Revision,
pt. 3, Preliminary Draft for Revised U.S. Copyright Law and Discussions
and Comments on the Draft 15 n.10 (1964) (clarifying through comments of
Abe Goldman of the Copyright Office that "in collaboration or with
the intention that their contributions be merged into indistinguishable
or interdependent parts of a unitary whole" means that a work can be
joint even if the authors worked "separately and without knowledge
of the other").
FN70.
See 17 U.S.C. s 101 (1994) (requiring for creation of a joint work that
authors have "the intention that their contributions be merged into
inseparable or interdependent parts of a unitary whole"); Aerospace
Servs. Int'l v. LPA Group, Inc., 57 F.3d 1002, 1004 (11th Cir. 1995) (stating
that the evidence supports the finding that the "'parties did not intend
for the [document] to be a joint work"'); Erickson, 13 F.3d at 1068,
1070 (stating that "the statute itself requires that there be an intent
to create a joint work" and that "the parties must have intended
to be joint authors"); Childress, 945 F.2d at 507-08 (requiring that
putative joint authors have the "intent...to regard themselves as joint
authors" and that they have the "intent to be co-authors");
Ashton-Tate Corp. v. Ross, 916 F.2d 516, 522 (9th Cir. 1990) (implying that
parties must have "intended to create a joint work"); Weissmann
v. Freeman, 868 F.2d 1313, 1320 (2d Cir. 1989) (requiring that the work
have been "intended to be joint"); Design Options, Inc. v. BellePointe,
Inc., 940 F. Supp. 86, 90 (S.D.N.Y. 1996) (requiring "intention to
author or own the designs jointly"); Clogston v. American Academy of
Orthopaedic Surgeons, 930 F. Supp. 1156, 1159 (W.D. Tex. 1996) (requiring
that "each of the collaborators [have] intended the other to be a joint
author of the work"); Papa's-June Music, Inc. v. McLean, 921 F. Supp.
1154, 1157 (S.D.N.Y. 1996) (requiring that parties "intend to regard
themselves as joint authors" and stating that "[i]t is not enough
that they intend to merge their contributions"); Cabrera v. Teatro
del Sesenta, Inc., 914 F. Supp. 743, 767 (D.P.R. 1995) (requiring that "all
contributors must fully intend to be joint authors"); Beloit Corp.
v. C3 Datatec, Inc., No. 93-C-447, 1995 U.S. Dist. LEXIS 16685, at *16 (E.D.
Wisc. Aug. 23, 1995) (requiring that the "parties intend[ ] to be joint
authors"), aff'd, 78 F.3d 586 (7th Cir. 1996); Vondran v. McLinn, No.
C 95-20296 RPA, 1995 WL 415153, at *5 (N.D. Cal. July 5, 1995) (requiring
intent "to be joint authors"); Villa Crespo Software, Inc. v.
Chicago Computer Broker, Inc., No. 94-C-737, 1994 WL 682697, at *3 (N.D.
Ill. Dec. 5, 1994) (stating that "contributors must intend to create
a joint work" and finding no evidence that the parties intended a joint
work); Napoli v. Sears, Roebuck & Co., 858 F. Supp. 101, 103 (N.D. Ill.
1994) (stating that the Seventh Circuit requires that "the parties...have
intended to be joint authors"); Rubloff, Inc. v. Donahue, 31 U.S.P.Q.2d
(BNA) 1046, 1049 (N.D. Ill. 1994) (stating that the Seventh Circuit requires
that "the parties...intend to be joint authors"); Merchant v.
Lymon, 828 F. Supp. 1048, 1058 (S.D.N.Y. 1993) (requiring that "the
parties [have] intended to regard themselves as joint authors" and
finding no joint authorship because defendants have not shown that the studio
musician who contributed a saxophone solo "intended to be accorded
the status of a co-author"); Respect, Inc., 815 F. Supp. at 1120-21
(stating that "'[i]t is only where that dominant author intends to
be sharing authorship that joint authorship will result"' and finding
that the plaintiff "never intended to make anyone else a joint author");
Softel, Inc. v. Dragon Med. & Scientific Communications, Inc., No. 87
Civ. 0167 (JMC), 1992 WL 168190, at *16 (S.D.N.Y. June 30, 1992) (reciting
that a putative joint author must show that "he or she intended to
contribute to a joint work" but finding plaintiff did not intend merger
into the whole); Morita v. Omni Publications Int'l, Ltd., 741 F. Supp. 1107,
1113 (S.D.N.Y. 1990) (supporting finding of genuine issues of material fact
with plaintiff's contention that "he never intended to...create a joint
work"); Steve Altman Photography v. United States, 18 Cl. Ct. 267,
282 (Cl. Ct. 1989) (finding no joint work because the defendant did not
"testify that he intended...to contribute to the joint creation of
an artistic work" and because "[p]laintiff testified specifically...that
he did not intend to create a joint work"). The legislative history
reiterates that "[t]he touchstone here is the intention, at the time
the writing is done, that the parts be absorbed or combined into an integrated
unit" and fails to mention intent to be joint authors. H.R. Rep. No.
94-1476, at 120 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5736. Note
that throughout the lengthy process of formulating the 1976 Act, the aspect
of the definition of joint works which was focused upon was the intention
of the creators of a work. See H.R. Rep. No. 90-83, at 84-85 (1967) (presenting
a discussion of the definition of joint works identical to that in House
Report 1476); Copyright Law Revision, pt. 3, Preliminary Draft for Revised
U.S. Copyright Law and Discussions and Comments on the Draft 265 (1964)
(comments of Harry R. Olsson of ABC arguing that the existence of a joint
work should not be dependent on the intentions of the authors); Copyright
Law Revision, pt. 2, Discussion and Comments on Report of the Register of
Copyrights on the General Revision of the U.S. Copyright Law, 88th Cong.,
Discussion of 1961 Report (1963) 144-51, 359 (Comm. Print 1963) (focusing
on the intent requirement in the definition of joint works); Register of
Copyrights, 87th Cong., 1st Sess., Report of the Register of Copyrights
on the General Revision of the U.S. Copyright Law 156 (Comm. Print 1961)
(recommending that a joint work be defined as a work created "with
the object of integrating [the creators'] contributions into a single work");
Subcomm. on Patents, Trademarks, and Copyrights, supra note 6, at 107-08
(criticizing the 12th Street Rag doctrine).
FN71.
See, e.g., Aerospace Servs. Int'l, 57 F.3d at 1004; Erickson, 13 F.3d at
1068; Childress, 945 F.2d at 507-09; Ashton-Tate Corp., 916 F.2d at 522;
Vondran, No. C 95-20296 RPA, 1995 WL 415153, at *5; Rubloff, Inc., 31 U.S.P.Q.2d
(BNA) at 1049; Respect, Inc., 815 F. Supp. at 1119; Morita, 741 F. Supp.
at 1113.
FN72.
See, e.g., Erickson, 13 F.3d at 1068-70 (stating that "the statute
itself requires that there be an intent to create a joint work" and
that "the statutory language clearly requires that each author intend
that their [sic] respective contributions be merged into a unitary whole"
and that "the parties must have intended to be joint authors");
Weissmann, 868 F.2d at 1319-20 (stating that "the parties must evince
'the intention that their contributions be merged"' and that there
was proof that the "work was not intended to be joint"); Cabrera,
914 F. Supp. at 764, 767-68 (reciting the requirement of intent that the
contributors' "contributions be merged into a unitary whole" but
requiring intent "to be joint author"); Softel, Inc., 1992 WL
168190, at *16 (stating that a putative joint author must show "that
at the time the work was created he or she intended to contribute to a joint
work" and finding no joint work because the principal of the plaintiff
corporation did not intend merger into the whole); Erickson v. Trinity Theatre,
Inc., No. 91-C-1964, 1992 U.S. Dist. LEXIS 2690, at *25, 28 (N.D. Ill. Mar.
6, 1992) (stating that each author must intend his contribution to constitute
part of a total work, that the putative authors must have "regarded
themselves as joint authors," and that "the court in Childress
ruled that the statutory intent inquiry meant that both participants must
have regarded themselves as joint authors"), aff'd, 13 F.3d 1061 (7th
Cir. 1994); Steve Altman Photography, 18 Cl. Ct. at 282 (stating that "[j]oint
authors must intend...that their contributions be merged into an inseparable
work" and that there was no joint work because "[p]laintiff testified
specifically...that he did not intend to create a joint work"). But
see Fisher v. Klein, 16 U.S.P.Q.2d (BNA) 1795, 1798 (S.D.N.Y. 1990) (stating
that the parties must have "the shared intention that the contributions
be merged into a unitary whole" and that "[i]t is only where [the]
dominant author intends to be sharing authorship that joint authorship will
result" but recognizing that the latter is an "additional requirement").
FN73.
See Childress, 945 F.2d at 507-08 (stating that although "[t]he wording
of the statutory definition appears to make relevant only the state of mind
regarding the unitary nature of the finished work," the court will
"[f] ocus[ ] on whether the putative joint authors regarded themselves
as joint authors"); Respect, Inc., 815 F. Supp. at 1120 (stating that
"[e]ven though the statutory language might be read as asking only
whether the putative co- authors intended a unitary finished work, the cases
have taken a different view").
FN74.
See Childress, 945 F.2d at 507 (stating that a narrower definition is needed
to avoid making joint authors those "who are not likely to have been
within the contemplation of Congress" such as editors or research assistants);
Respect, Inc., 815 F. Supp. at 1120 (stating that a narrower definition
is needed to avoid "extend[ing] joint author status to many who are
plainly beyond its intended scope").
FN75.
See, e.g., Design Options, Inc., 940 F. Supp. at 90 (requiring intent "that
the work be jointly owned" and finding "no evidence of a shared
intention to author or own the designs jointly").
FN76.
See, e.g, Erickson, 13 F.3d at 1072 (finding that "there is evidence
that [the playwright], too, intended at the time to create a joint work
because she initially attributed the script to both [the actress] and herself");
Childress, 945 F.2d at 508 (stating that a "useful test" for intent
to be joint authors is whether "each participant intended that all
would be identified as co-authors...[t]hough 'billing' or 'credit' is not
decisive in all cases;" Weissmann, 868 F.2d at 1320 (finding that scientist's
"use of her own by-line on [the article] constitutes prima facie proof
that this work was not intended to be joint"); Herbert v. United States,
36 Fed. Cl. 299, 309 (1996) (requiring intent for contributions to merge
and intent that parties "be listed equally as co-authors"); Clogston
v. American Academy of Orthopaedic Surgeons, 930 F. Supp. 1156, 1159-60
(W.D. Tex. 1996) (finding that book credits did not show parties' intent
that photographer be a co-author); Respect, Inc., 815 F. Supp. at 1120-21
(finding that the plaintiff writer "could not have made her intention
[not to make anyone else a joint author] more plain than by the way she
billed herself in each of the books,...by stating that they were 'by Coleen
Kelly Mast"').
FN77.
See Beloit Corp. v. C3 Datatec, Inc., No. 93-C-447, 1995 U.S. Dist. LEXIS
16685, at *17 (E.D. Wis. Aug. 23, 1995) (accepting, as evidence of intent
to be joint authors, that a party "credited [the contributor] as the
copyright holder in all but one manual"); Respect, Inc., 815 F. Supp.
at 1120-21 (using copyright notice in her own name alone as evidence of
the writer's intent that no one else be a joint author); Fisher, 16 U.S.P.Q.2d
(BNA) at 1797-99 (finding, based in part on copyright registration forms
completed in both names as authors, that both jewelers had intent for joint
authorship).
FN78.
This appears to be what in fact occurred in Erickson, Childress, Weissmann,
and Cabrera. See Erickson, 13 F.3d 1061; Childress, 945 F.2d 500; Weissmann,
868 F.2d 1313; Cabrera, 914 F. Supp. 743. For a discussion of the soundness
of the outcomes in these cases, see infra notes 97- 104 and 132-43 and accompanying
text.
FN79.
16 U.S.P.Q.2d (BNA) 1795 (S.D.N.Y. 1990).
FN80.
Fisher, 16 U.S.P.Q.2d (BNA) at 1798, quoted in Childress, 945 F.2d at 508
and Respect Inc., 815 F. Supp. at 1120.
FN81.
In Childress, the actress, Taylor, argued that the district court's emphasis
on Childress's lack of intent for Taylor to be a joint author "misapplie[d]
the statutory standard by focusing on whether Childress 'intended the legal
consequences which flowed from her prior acts."' Childress, 945 F.2d
at 508 (quoting Brief for Appellant at 22). The Second Circuit dismissed
this objection by exaggerating Taylor's objection and then refuting that
exaggerated version; the district court, the Second Circuit argued, had
never inquired whether Childress intended every specific characteristic
of joint ownership. See id.
FN82.
945 F.2d 500 (2d Cir. 1991).
FN83.
See id. at 507-09. The Childress court expressly did not determine whether
the actress' contributions were sufficient. See id. at 509. The Second Circuit
used, apparently interchangeably, the phrases "intent...to regard themselves
as joint authors," "regarded themselves as joint authors,"
and "intend[ed] to be joint authors." Id. at 507-09.
FN84.
The Childress court discussed policy reasons for deviating from the statutory
definition, addressed the charge that the court below and the Second Circuit
were requiring the intent for the legal consequences which flow from acts
of collaboration, discussed precedent for the court's position, returned
to policy reasons supporting the court's requirement, and then applied the
standard to the case at hand. See id. at 508-09.
FN85.
Id. at 508.
FN86.
See Childress v. Taylor, 20 U.S.P.Q.2d (BNA) 1181, 1183-85 (S.D.N.Y.), aff'd,
945 F.2d 500 (2d Cir. 1991). Cf. Childress, 945 F.2d at 509 (stating that
the district court's "primary basis for summary judgment was the absence
of any evidence supporting an inference that [the playwright] shared '[the
actress'] notion that they were co-authors"').
FN87.
868 F.2d 1313 (2d Cir.), cert. denied, 493 U.S. 883 (1989).
FN88.
See id. at 1319-20 (stating that "the parties must evince 'the intention
that their contributions be merged,"' that the scientist's crediting
the work to her own name alone shows "she intended this particular
piece to represent her own individual authorship" and was "proof
that this work was not intended to be joint"). The Second Circuit cited
no precedent for the proposition that intent to be joint authors is required.
To support its finding for the scientist, the court also relied on its finding,
as to the contribution requirement, that the mentor had "played no
role in [the work's] creation." Id. at 1320. This finding was dependent
on the court's conclusion that, at the time the scientist made her last
contributions, the joint work was over, a conclusion which resulted from
the court's view of the intent requirement.
FN89.
See Childress, 945 F.2d at 508 (citing the Weissman and Fisher opinions).
FN90.
See Fisher v. Klein, 16 U.S.P.Q.2d (BNA) 1795, 1798 (S.D.N.Y. 1990). The
Fisher court cited no precedent for this proposition. See id. The court
found that in that instance of two jewelers working together, the required
"shared intention that their contributions would be merged in the sense
of co- authorship" was present. Id. at 1799.
FN91.
See M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1493 (11th
Cir. 1990); Aitken, Hazen, Hoffman, Miller, P.C. v. Empire Constr. Co.,
542 F. Supp. 252, 259 (D. Neb. 1982). These opinions did not cite any earlier
precedent concerning the intent to be joint authors; however, they have
been cited by later cases discussing this point. See, e.g., Whelan Assocs.,
Inc. v. Jaslow Dental Lab., Inc., 609 F. Supp. 1307, 1319 (E.D. Pa. 1985),
aff'd on other grounds, 797 F.2d 1222 (3d Cir. 1986), cert. denied, 479
U.S. 1031 (1987); Geshwind v. Garrick, 734 F. Supp. 644, 650 (S.D.N.Y. 1990),
aff'd, 927 F.2d 594 (2d Cir.), cert. denied, 502 U.S. 811 (1991); see also
Softel, Inc. v. Dragon Med. & Scientific Communications Inc., No. 87
Civ. 0167, 1992 WL 168190, at *17 (S.D.N.Y. June 30, 1992) (citing Whelan
Assocs., Inc., 609 F. Supp. at 1307).
FN92.
See M.G.B. Homes, Inc., 903 F.2d at 1493 (stating that client's making a
thumbnail sketch "'is normally expected"' but that such involvement
does not make the client an author); Aitken, Hazen, Hoffman, Miller P.C.,
542 F. Supp. at 259 (stating that "it is quite normal for the client
to supply the engineer or architect with general design features which the
client expects to be incorporated into the architectural plans and for the
professional then to create the design drawings incorporating those features").
FN93.
13 F.3d 1061 (7th Cir. 1994).
FN94.
Id. at 1068, 1070-73 (stating "that the statute itself requires that
there be an intent to create a joint work" and that "the parties
must have intended to be joint authors at the time the work was created").
The Seventh Circuit cited Paul Goldstein rather than Childress for this
proposition, but cited Childress frequently for other points. See id. at
1068, 1070-72. It is unclear from Professor Goldstein's treatise whether
he was requiring the same intent as the Seventh Circuit, that is, an intent
for joint credit and co- ownership. See 1 Paul Goldstein, Copyright s 4.2.1.1,
at 4:7 (2d ed. 1994). Professor Goldstein did state that each author must
have "intended to create a joint work," but in the following sentence,
he stated that a joint work would result where each author intended that
his contribution form part of a unitary whole. Id. The Erickson court found
that the required intent was missing for two of the three plays. See Erickson,
13 F.3d at 1072.
FN95.
See Aerospace Servs. Int'l v. LPA Group, Inc., 57 F.3d 1002, 1004 (11th
Cir. 1995) (stating that the evidence supports the district court's finding
that the parties did not intend for the work to be a joint work); Ashton-Tate
Corp. v. Ross, 916 F.2d 516, 522 (9th Cir. 1990) (stating that if the parties
"intended to create a joint work" and if both made appropriate
contributions, they may both have an interest in the work).
FN96.
846 F.2d 1485, 1496-97 (D.C. Cir. 1988), aff'd on other grounds, 490 U.S.
730 (1989).
FN97.
Id. at 1496-97 (stating that the sculpture "appears to have been treated
by those who labored to create it as a unitary whole" and that "various
indicia [were present] of the parties' intent...to merge their contributions
into a unitary whole"). The District of Columbia Circuit, discussing
joint works in order to provide guidance to the district court on remand,
concluded that the sculpture at issue "might qualify as a textbook
example of a jointly- authored work." Id. at 1497.
FN98.
See Weissmann v. Freeman, 868 F.2d 1313 (2d Cir.), cert. denied, 493 U.S.
883 (1989).
FN99.
See id. at 1319-20 (requiring the intent for joint authorship, of which
the scientist's use of her own name alone on the syllabus was prima facie
proof; finding that the parties' collaboration had terminated when the scientist
made changes to the prior joint work and affixed her name alone).
FN100.
Note that the Weissmann district court defined the required intent as "'a
joint laboring in furtherance of a preconcerted common design,"' explained
that it is sufficient "if each contributor contemplates that his work
will form part of a whole to which someone else will also contribute,"
and did not require intent to be joint authors. Weissmann v. Freeman, 684
F. Supp. 1248, 1259-60 (S.D.N.Y. 1988) (citation omitted), aff'd in part,
rev'd in part, 868 F.2d 1313 (2d Cir.), cert. denied, 493 U.S. 883 (1989).
The district court concluded that the syllabus at issue was a joint work.
See id. at 1260. Of the four judges that considered Weissmann, two found
a joint work. See id.; Weissmann, 868 F.2d at 1328 (Lumbard, J., dissenting)
(stating Judge Lumbard's vote to affirm the district court for the reasons
stated in the district court opinion). Note that under the view of the case
presented in the text and adopted by the district court, the Second Circuit's
objection that the defendant had not contributed to the plaintiff's last
contribution loses all force. See id. at 1320 (finding that the defendant
had not contributed to the syllabus because he had not contributed to the
changes made by the plaintiff in 1985). As the concurring Second Circuit
judge pointed out, in order to be a joint author, one need not "have
contributed to each incremental addition to the work." Id. at 1327
(Pierce, J., concurring).
FN101.
See Weissmann, 684 F. Supp. at 1254-55.
FN102.
See Weissmann, 868 F.2d at 1320-23. The Second Circuit found that the 1985
syllabus was a derivative work based on an underlying joint work. See id.
FN103.
See id. at 1320. Certainly by the time the plaintiff scientist brought suit
in 1987, she did not intend that her mentor share ownership in the 1985
version of the syllabus. The court's reliance on her use of her own name
alone on the syllabus in 1985 to find she lacked that intention in 1985
may have been misguided. The district court had noted that an earlier instance
of the plaintiff's use of her own name alone on a syllabus was "some
indication of a practice that, rather than designating the authorship, the
by-line name appearing on such review course material was utilized as an
identification of the reviewer or lecturer who was to appear before the
audience." Weissmann, 684 F. Supp. at 1255.
FN104.
See Childress v. Taylor, 945 F.2d 500, 502 (2d Cir. 1991). The Second Circuit
required copyrightable contributions. See id. at 507. For discussion of
the contribution standard, see infra notes 106-144 and accompanying text.
FN105.
See Childress, 945 F.2d at 502, 507, 509 (listing the actress's contributions
to the play, requiring copyrightable contributions, expressly not determining
whether the actress's contributions satisfied the copyrightability standard
because the playwright did not intend joint authorship as shown by her unwillingness
to share credit and to sign a co-ownership agreement). This position of
the Childress court has been followed. See Armento v. Laser Image, Inc.,
950 F. Supp. 719, 728 n.3 (W.D.N.C. 1996) (stating that if the court were
to address the question of joint authorship, it would find no joint authorship
because the illustrator's "intent to remain sole author of the map
artwork would alone be enough to stop [alleged joint author's] joint authorship
claim" (citing Childress, 945 F.2d at 509)).
FN106.
The Second Circuit in Childress expressed concern that editors and research
assistants may satisfy the contribution standard, but should not be accorded
joint authorship status. See Childress, 945 F.2d at 507. The court concluded
that if either contributor lacked the intent for joint authorship, a joint
work would not result. See id. at 509 (stating that "equal sharing
of rights should be reserved for relationships in which all participants
fully intend to be joint authors").
FN107.
See M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1493 (11th
Cir. 1990); Geshwind v. Garrick, 734 F. Supp. 644, 650-51 (S.D.N.Y. 1990)
(stating that the "fact that the agent, Geshwind, wanted changes in
details and aspects of the portrait and even made suggestions, the compliance
with which may or may not have improved the effect, does not make him the
creator. The artist, Leich, is the creator."), aff'd, 927 F.2d 594
(2d Cir.), cert. denied, 502 U.S. 811 (1991); Whelan Assocs., Inc. v. Jaslow
Dental Lab, Inc., 609 F. Supp. 1307, 1318-19 (E.D. Pa. 1985), aff'd on other
grounds, 797 F.2d 1222 (3d Cir. 1986), cert. denied, 479 U.S. 1031 (1987);
Aitken, Hazen, Hoffman, Miller, P.C. v. Empire Constr. Co., 542 F. Supp.
252, 259 (D. Neb. 1982).
FN108.
See M.G.B. Homes, Inc., 903 F.2d at 1493 (stating that where the client
had contributed a "thumbnail sketch of the floor plan..."[s]uch
involvement by a client in the preparation of architectural plans is normally
expected"' but that such involvement does not make the client an author);
Aitken, Hazen, Hoffman, Miller, P.C., 542 F. Supp. at 259 (stating that
in the client-architect relationship, "it is quite normal for the client
to supply the...architect with general design features which the client
expects to be incorporated into the architectural plans and for the professional"
to create the drawings).
FN109.
609 F. Supp. 1307 (E.D. Pa. 1985).
FN110.
Id. at 1319; see also Softel, Inc. v. Dragon Med. & Scientific Communications,
Inc., No. 87 Civ. 0167, 1992 WL 168190, at *17 (S.D.N.Y. June 30, 1992)
(stating that in the case of a client and an architect, "the owner
is not a co-author of the drawings regardless of the extent of the owner's
participation in offering ideas and setting limitations").
FN111.
See 17 U.S.C. s 101 (1994) (defining joint works).
FN112.
See id. (defining joint works without reference to the nature of the contribution
required); H.R. Rep. No. 94-1476, at 120 (1976), reprinted in 1976 U.S.C.C.A.N.
5659, 5736 (failing to discuss the nature of the required contribution).
Debate on the definition of joint works during the lengthy legislative process
leading to adoption of the 1976 Act focused on the intent requirement and
did not mention the nature of required contributions. See supra note 25
(reviewing the legislative history as to the required intent); S. Rep. No.
94-473, at 103, 104 (1975) (explaining proposed bill in the same language
as House Report 1476); S. Rep. No. 93-983, at 155 (1974) (same); H.R. Rep.
No. 90-83, at 84-85 (1967) (same); Copyright Law Revision, pt. 5, 1964 Revision
Bill with Discussions and Comments, 89th Cong., 1st Sess. 144, 151-52 (Comm.
Print 1965) (failing to mention nature of required contribution for creation
of a joint work); Register of Copyright, 87th Cong., 1st Sess., Report on
the General Revision of the U.S. Copyright Law 89-90 (Comm. Print 1961)
(failing to discuss the nature of required contribution); Subcomm. on Patents,
Trademarks, and Copyrights, supra note 6, at 109-10 (suggesting the possibility
of requiring inseparable contributions but not discussing the nature of
each contribution required); 1 Nimmer & Nimmer, supra note 6, s 6.07
at 6-24 to 6- 25 (stating that the legislative history "elevates intention
as the touchstone, without placing any further parsing as to the copyrightable
status of each individual component").
FN113.
See S. 1253, 101st Cong. (1989). The bill would have amended the s 101 definition
of a joint work to read in part: "A 'joint work' is a work prepared
by two or more authors with the intention that their original contributions
be merged into inseparable or interdependent parts of a unitary whole."
See id. The proposed amendment also would have required a prior signed writing
in order to create a joint work in the case of commissioned work. See id.
FN114.
See 135 Cong. Rec. S7251-02, 57,343 (1989) (explaining in a statement by
Sen. Cochran introducing Senate Bill 1253 that, by the term "original,"
the bill means meeting the "standard of originality established under
the 1909 copyright statute").
FN115.
See S. 1253. The last action taken on Senate Bill 1253 was the conclusion
of hearings of the Senate Subcommittee on Patents, Trademarks, and Copyrights
on September 20, 1989.
FN116.
See 1 Nimmer & Nimmer, supra note 6, s 6.07, at 6-23 (stating that "[i]t
would seem...that each such contribution must, in any event, be more than
de minimis"); Erickson v. Trinity Theatre, Inc., 13 F.3d 1061, 1069-70
(7th Cir. 1994) (stating that Nimmer "took the position that all that
should be required to achieve joint author status is more than a de minimis
contribution by each author," and rejecting this standard); BancTraining
Video Sys. v. First Am. Corp., 21 U.S.P.Q.2d (BNA) 2014, 2017 n.7 (6th Cir.
1992) (stating that Nimmer "contends that...anything beyond a de minimus
[sic] contribution is sufficient for joint authorship," and rejecting
this standard) (unpublished opinion); Balkin v. Wilson, 863 F. Supp. 523,
526 (W.D. Mich. 1994) (stating that "[t]he 'de minimis' test merely
'requires that "more than a word or line must be added by one who claims
to be a joint author,"" and rejecting this standard (quoting Erickson,
13 F.3d at 1070 (quoting 1 Nimmer & Nimmer, supra note 6, s 6.07, at
6-21))). This standard is referred to herein as the "more than de minimis"
standard.
FN117.
See 1 Nimmer & Nimmer, supra note 6, s 6.07 at 6-23. ("It is not
necessary that the respective contributions of several authors to a single
work be equal, either quantitatively or qualitatively, in order to constitute
such contributors as joint authors. It would seem, however, that each such
contribution must, in any event, be more than de minimis.") (citations
omitted).
FN118.
Id. (stating that a contribution limited to ideas could qualify the contributor
as a joint author); see 17 U.S.C. s 102(b) (1994) (providing that copyright
protection does not extend to any idea).
FN119.
See Community for Creative Non-Violence, 846 F.2d 1485, 1496 & n.15
(D.C. Cir. 1988), aff'd on other grounds, 490 U.S. 730 (1989). The District
of Columbia did not expressly endorse the proposition that a copyrightable
contribution is not required, but merely suggested that this proposition
might be correct. The court pointed out that CCNV had, in fact, contributed
more than an "abstract idea." Id. at 1496-97.
FN120.
See, e.g., Erickson, 13 F.3d at 1070-71 (requiring that each contribution
be "independently copyrightable" and stating that the "copyrightable
subject matter test" has been adopted by a majority of courts that
have considered the issue); BancTraining, 21 U.S.P.Q.2d (BNA) at 2017 (stating
that an author must "'translate[ ] an idea into a fixed, tangible expression
entitled to copyright protection"' (quoting Community for Creative
Non-Violence, 490 U.S. at 742)); Childress v. Taylor, 945 F.2d 500, 506-07
(2d Cir. 1991) (stating that the Second Circuit requires a copyrightable
contribution of all joint authors and that "[t]he case law supports
a requirement of copyrightability [for] each contribution"); Ashton-Tate
Corp. v. Ross, 916 F.2d 516, 521 (9th Cir. 1990) (stating that the Ninth
Circuit "holds that joint authorship requires each author to make an
independently copyrightable contribution"); M.G.B. Homes, Inc. v. Ameron
Homes, Inc., 903 F.2d 1486, 1493 (11th Cir. 1990) (implying that the client's
contribution of uncopyrightable ideas was at least part of the basis for
the conclusion that the client was not a creator of the architectural plans);
S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1087 (9th Cir. 1989) (stating
that authorship requires translation of "'an idea into a fixed, tangible
expression entitled to copyright protection"' (quoting Community for
Creative Non-Violence, 490 U.S. at 737)); Design Options, Inc. v. Bellepointe,
Inc., 940 F. Supp. 86, 90 (S.D.N.Y. 1996) (requiring that each contribution
be "independently copyrightable"); Cabrera v. Teatro Del Sesenta,
Inc., 914 F. Supp. 743, 765 (D.P.R. 1995) (requiring that "each collaborator's
contribution must be a copyrightable work of authorship"); Beloit Corp.
v. C3 Datatec, Inc., No. 93-C-447, 1995 U.S. Dist. LEXIS 16685, at *19 (E.D.
Wis. Aug. 23, 1995) (requiring that the parties' contributions be "individually
copyrightable"); Balkin, 863 F. Supp. at 527-28 (requiring that each
joint author make a copyrightable contribution and stating that most courts
have adopted the "'copyrightable subject matter"' test); Napoli
v. Sears, Roebuck & Co., 858 F. Supp. 101, 103 (N.D. Ill. 1994) (stating
that the Seventh Circuit requires that each joint author make a contribution
that "'represents original expression that could stand on its own as
the subject matter of copyright"' (quoting Erickson, 13 F.3d at 1070-71));
Respect, Inc. v. Committee on the Status of Women, 815 F. Supp. 1112, 1120
& n.14 (N.D. Ill. 1993) (stating that the court "need not address
the much-mooted question of whether the contribution of each joint author
must be copyrightable" but that each "contributor must have contributed
something original to be deemed an author"); Konigsberg Int'l, Inc.
v. Rice, 22 U.S.P.Q.2d (BNA) 1876, 1877 (C.D. Cal. 1992) (stating that a
co-author must make a contribution "that by itself is protectible under
the Federal Copyright Act"); see also 1 Goldstein, supra note 93, s
4.2.1.2, at 4:13 (stating that each joint author must contribute "original
expression that could stand on its own as the subject matter of copyright");
cf. Andrien v. Southern Ocean County Chamber of Commerce, 927 F.2d 132,
136 (3d Cir. 1991) (explicitly not deciding "whether each author of
a joint work must make an independently copyrightable contribution");
Words & Data, Inc. v. GTE Communications Servs., Inc., 765 F. Supp.
570, 577 n.1 (W.D. Mo. 1991) (giving some credence to the view that a joint
author's contribution need not be independently copyrightable).
FN121.
See Erickson, 13 F.3d at 1070-71 (arguing that use of the term "authors"
in ss 101 and 302(b) of the Copyright Act to refer to a joint author "suggests
that each collaborator's contribution must be a copyrightable 'work of authorship"');
Balkin, 863 F. Supp. at 527 (arguing that use of the term "author"
in ss 101 and 302 "'suggests that each collaborator's contribution
must be a copyrightable work of authorship"' (quoting Erickson, 13
F.3d at 1070-71)); Respect, 815 F. Supp. at 1120 (stating that "[i]t
necessarily follows (from both constitutional as well as statutory sources)
that a contributor must have contributed something original to be deemed
an author"); see also U.S. Const. art. 1, s 8, cl. 8 (granting Congress
the power "[t]o promote the Progress of Science...by securing for limited
Times to Authors...the exclusive Right to their...Writings"); 17 U.S.C.
ss 101, 302(b) (1994) (providing that a "'joint work' is a work prepared
by two or more authors" and that "[i]n the case of a joint work
prepared by two or more authors" the term of copyright is the life
of the last surviving author plus fifty years) (emphasis added).
FN122.
See Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 346
(1991) (stating that "this Court defined the crucial terms 'authors'
and 'writings.' In so doing, the Court made it unmistakably clear that these
terms presuppose a degree of originality.").
FN123.
See Childress, 945 F.2d at 506 (arguing that "[i]t has not been supposed
that the statutory grant of 'authorship' status to the employer of a work
made for hire exceeds the Constitution, though the employer has shown skill
only in selecting employees, not in creating protectable expression");
see also 17 U.S.C. s 201(b) (1994) (providing 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").
FN124.
For instance, it has been argued that a requirement of copyrightability
is desirable because it is a predictable standard. See Erickson, 13 F.3d
at 1071 (arguing that the copyrightability standard "enables parties
to predict whether their contributions to a work will entitle them to copyright
protection as a joint author"); Cabrera, 914 F. Supp. at 765 (arguing
that the copyrightability test "'yields relatively certain answers"');
Balkin, 863 F. Supp. at 528 (same). This assertion is not beyond question.
In the infringement context, for example, courts struggle regularly in determining
whether a particular portion of a work, that portion copied by the defendant,
is or is not protectible by copyright. See, e.g., Feist Publications, Inc.,
499 U.S. at 364 (finding white pages of phone book not copyrightable and
reversing 10th Circuit); Lotus Dev. Corp. v. Borland Int'l, Inc., 49 F.3d
807, 813-19 (1st Cir. 1995) (finding a computer menu command hierarchy not
copyrightable subject matter), aff'd mem., 116 S. Ct. 804 (1996); CCC Info.
Servs., Inc. v. Maclean Hunter Mkt. Reports, Inc., 44 F.3d 61, 64-65, 68-
73 (2d Cir. 1994) (reversing district court's finding that compilation of
used car valuations is unprotectable and finding used car valuations copyrightable
subject matter), cert. denied, 116 S. Ct. 721 (1995); Computer Assocs. Int'l,
Inc. v. Altai, Inc., 982 F.2d 693, 706-15 (2d Cir. 1992) (adopting and applying
a test for determining whether the structure of a computer program is an
idea or expression); Nichols v. Universal Pictures Corp., 45 F.2d 119, 120
(2d Cir. 1930) (setting forth Learned Hand's abstractions test for determining
the line between idea and expression), cert. denied, 282 U.S. 902 (1931);
Runstadler Studios, Inc. v. MCM Ltd. Partnership, 768 F. Supp. 1292, 1297
(N.D. Ill. 1991) (discussing the difficulties of determining what constitutes
protectible expression in the infringement context).
FN125.
See Fogerty v. Fantasy, Inc., 510 U.S. 517, 526 (1994) (stating that "'[t]he
primary objective of copyright is..."[t]o promote the Progress of Science
and useful Arts"" and that copyright "'encourages others
to build freely upon the ideas and information conveyed by a work"');
Feist Publications, Inc., 499 U.S. at 349-50 (explaining that "copyright...encourages
others to build freely upon the ideas and information conveyed by a work"
and that "[t]his result is neither unfair nor unfortunate," but
is "the means by which copyright advances the progress of science");
see also U.S. Const. art. I, s 8, cl. 8 (granting to Congress the power
"[t]o promote the Progress of Science" by adopting copyright legislation).
FN126.
See Erickson, 13 F.3d at 1070 (arguing that "[r]estrictions on an author's
use of existing ideas in a work, such as the threat that accepting suggestions
from another party might jeopardize the author's sole entitlement to a copyright,
would hinder creativity"); Balkin, 863 F. Supp. at 527 (agreeing with
Erickson that the possibility that borrowing ideas "'might jeopardize
the author's sole entitlement to a copyright' could hinder creativity and
the free exchange of ideas contrary to the purpose of the Copyright Act"
(quoting Erickson, 13 F.3d at 1070)).
FN127.
Indeed, our desire that ideas (including facts, which are merely ideas we
have accepted as true) be reused is the reason for our failure to protect
ideas. See generally 17 U.S.C. s 102(b) (1994) (providing that "[i]n
no case does copyright protection...extend to any idea, procedure, process,
system, method of operation, concept, principle, or discovery"); Baker
v. Selden, 101 U.S. 99, 102 (1879) (finding that "[t]o give to the
author of the book an exclusive property in the art described therein...is
the province of letters-patent, not of copyright"). With respect to
true ideas, that is, facts, it has been argued that the reason they are
not protected is that the discoverer of a true idea has not originated,
but merely discovered it, since it was true even before discovery. See,
e.g., Feist Publications, Inc., 499 U.S. at 340 (explaining that facts are
unprotected because "facts do not owe their origin to an act of authorship");
Miller v. Universal City Studios, Inc., 650 F.2d 1365, 1369 (5th Cir. 1981)
(explaining that "since facts do not owe their origin to any individual,
they may not be copyrighted"). However, we also refuse to protect ideas
other than facts, such as fictional ideas, which do originate with the author.
See Nichols, 45 F.2d at 122 (noting that a playwright's fictional ideas
are not protected by copyright). The reason for our refusal to protect all
ideas is that we want them freely available for reuse. Further, note that
copyright requires originality not because we as a society value expression
more than ideas, or for some metaphysical reason, but simply because we
need something to protect, and all that is left after ideas are excluded,
is expression. See Jaszi, supra note 45, at 302 (pointing out that "the
distinction between uncreated 'facts' and created 'works' is purely fictitious...[because]
no so-called 'fact' is interpretation-free").
FN128.
See supra notes 115-18 and accompanying text (discussing the more than de
minimis standard).
FN129.
499 U.S. 340 (1991).
FN130.
See id. at 345, 358, 362 (describing the standard of originality as "some
minimal degree of creativity" and "the modicum of creativity necessary";
and describing the standard as "not particularly stringent" and
"low"); see also CCC Info. Servs., Inc. v. Maclean Hunter Mkt.
Reports, Inc., 44 F.3d 61, 65 (2d Cir. 1994) (stating that the Supreme Court
in Feist "repeatedly stressed that the required level of originality
is minimal"), cert. denied, 116 S. Ct. 721 (1995); Kregos v. Associated
Press, 937 F.2d 700, 703-05 (2d Cir. 1991) (stating that Feist requires
"some minimal degree of creativity" and finding that Kregos' pitching
form could not be held as a matter of law to lack the required originality).
FN131.
Feist, 499 U.S. at 363.
FN132.
See, e.g., Rubloff, Inc. v. Donahue, 31 U.S.P.Q.2d (BNA) 1046, 1049- 50
(N.D. Ill. 1994) (stating that "the contributions of each author must
be independently copyrightable" but finding that "[w]e are simply
unwilling to find that tacking a one-and-one-half page statement on the
front of a 546-page professional manual is sufficient"); Merchant v.
Lymon, 828 F. Supp. 1048, 1058 (S.D.N.Y. 1993) (requiring a "copyrightable
contribution" for joint authorship, but finding that a musician's contribution
was not sufficient because it was "not a substantial contribution to
the song"); Childress v. Taylor, 20 U.S.P.Q.2d (BNA) 1181, 1185 (S.D.N.Y.)
(implying a requirement of a copyrightable contribution, but finding the
actress's contribution to the play insufficient because "her efforts
fall far short of [a] 'substantial and significant contribution"' (quoting
Picture Music, Inc. v. Bourne, Inc., 314 F. Supp. 640, 647 (S.D.N.Y. 1970))),
aff'd, 945 F.2d 500 (2d Cir. 1991). In addition, some courts which have
not explicitly required a copyrightable contribution, have imposed a higher
standard than copyrightability. See Segal v. Paramount Pictures, 841 F.
Supp. 146, 151 (E.D. Pa. 1993) (requiring a "material contribution"),
aff'd, 37 F.3d 1488 (3d Cir. 1994); Forward v. Thorogood, 758 F. Supp. 782,
784 (D. Mass. 1991) (requiring a "significant creative contribution"),
aff'd, 985 F.2d 604 (1st Cir. 1993); Eckert v. Hurley Chicago Co., 638 F.
Supp. 699, 704 (N.D. Ill. 1986) (requiring a "significant" contribution).
FN133.
See 13 F.3d 1061, 1064 (7th Cir. 1994). The defendant theatre was found
to have failed the copyrightable contribution requirement with regard to
all three plays at issue in Erickson. See id. at 1072.
FN134.
Id. at 1064, 1072. "Trinity cannot establish [the copyrightable contribution]
requirement for any of the above works. The actors, on the whole, could
not identify specific contributions that they had made to Ms. Erickson's
works." Id. at 1072. Note that the Seventh Circuit found that the defendant
theatre "has produced some evidence that there was the requisite intent
for joint authorship with regard to Time Machine" because both parties
initially attributed the script to both the playwright and the actress.
Id.
FN135.
The improvisational process was described by the court as "a form of
theatre in which there is no script," but in which "actors work
with an idea and a loose structure to create a play." Id. at 1064.
FN136.
See 17 U.S.C. s 101 (1994) (defining 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"). The
House Report to the 1976 Act clarified that the parts contributed by joint
authors "may be either 'inseparable' (as in the case of a novel or
painting) or 'interdependent' (as in the case of a motion picture, opera,
or the words and music of a song)." See H.R. Rep. No. 94-1476, at 120
(1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5736. The 1960 study of copyright
law performed in preparation for drafting the 1976 Act discussed as possible
alternative approaches either requiring inseparable contributions or requiring
collaboration of effort (though not necessarily simultaneous effort) toward
a common design. See Subcomm. on Patents, Trademarks, and Copyrights, supra
note 6, at 109-10. The latter approach was recommended by the Register and
followed in the subsequent revision bill and in the Act as finally adopted.
See 17 U.S.C. s 101 (defining a joint work); Copyright Law Revision, pt.
5, 1964 Revision Bill with Discussions and Comments, 89th Cong., 1st Sess.
30 (Comm. Print 1965); Copyright Law Revision, 87th Cong., 1st Sess., Report
of the Register of Copyrights on the General Revision of the U.S. Copyright
Law 156 (Comm. Print 1961). Note that the 1964 preliminary draft for the
1976 Act used the term "indistinguishable" in lieu of "inseparable."
Copyright Law Revision, pt. 3, Preliminary Draft for Revised U.S. Copyright
Law and Discussions and Comments on the Draft 15 n.20 (Comm. Print 1964).
FN137.
863 F. Supp. 523 (W.D. Mich. 1994).
FN138.
See id. at 528.
FN139.
Id. at 524, 528.
FN140.
Id. at 524.
FN141.
914 F. Supp. 743 (D.P.R. 1995).
FN142.
See id. at 766 (stating that "none of the defendants, except Molina,
made a tangible contribution to the play").
FN143.
Id. at 755.
FN144.
Id. at 768. "Although the strict application of statutory requirements,
[sic] may have produced what might be considered an unfair result, given
the defendants [sic] valuable collaboration in the creation [of] the play,
this Court is bound to follow and apply the law." Id. at 768-69.
FN145.
The court stated that "non tangible contributions, [sic] are not copyrightable,"
and accepted as "tangible" the contribution of another collaborator
which was made on paper. Id. at 753, 766. The court had earlier stated that
the four collaborators "provided phrases, lines for the dialogues of
the characters and perhaps for the lyrics" but objected that they were
not "capable of identifying specific portions of the script that could
have been written by them." Id. at 759-60. Thus, there is some possibility
that what the court meant by "tangible" was fixed and identifiable.
FN146.
See, e.g., Aerospace Servs. Int'l v. LPA Group, Inc., 57 F.3d 1002, 1004
(11th Cir. 1995) (affirming finding of no joint authorship and of infringement);
Erickson v. Trinity Theatre, Inc., 13 F.3d 1061, 1073 (7th Cir. 1994) (affirming
grant of preliminary injunction against infringement based on likelihood
that works are not joint); Childress v. Taylor, 945 F.2d 500, 509 (2d Cir.
1991) (affirming summary judgment for plaintiff based on finding of no joint
authorship and of infringement); S.O.S., Inc. v. Payday, Inc., 886 F.2d
1081, 1087 (9th Cir. 1989) (finding no joint authorship and declining to
affirm district court's grant of summary judgment on that basis); Weissmann
v. Freeman, 868 F.2d 1313, 1320 (2d Cir.) (reversing the district court
and finding no joint authorship and infringement), cert. denied, 493 U.S.
883 (1989); Steve Altman Photography v. United States, 18 Cl. Ct. 267, 281-82
(1989) (finding no joint authorship and infringement); Cabrera, 914 F. Supp.
at 745, 768-69 (finding no joint authorship by defendants where plaintiff
claimed infringement); Balkin v. Wilson, 863 F. Supp. 523, 528 (W.D. Mich.
1994) (finding no joint authorship and infringement); Napoli v. Sears, Roebuck
& Co., 858 F. Supp. 101, 103-04 (N.D. Ill. 1994) (granting leave for
plaintiff to file renewed motion for summary judgment on infringement claim
where defendant raised defense of joint authorship); Respect, Inc. v. Committee
on the Status of Women, 815 F. Supp. 1112, 1119-21 (N.D. Ill. 1993) (finding
no joint authorship and infringement); Words & Data, Inc. v. GTE Communications
Servs., Inc., 765 F. Supp. 570, 572-73, 579 (W.D. Mo. 1991) (finding joint
authorship and consequent absence of liability for infringement); Fisher
v. Klein, 16 U.S.P.Q.2d (BNA) 1795, 1799 (S.D.N.Y. 1990) (finding defendant
joint author and therefore not liable for infringement); Morita v. Omni
Publications Int'l, Ltd., 741 F. Supp. 1107, 1113 (S.D.N.Y. 1990) (denying
defendant's motion for summary judgment made on the ground that work at
issue was a joint work); Geshwind v. Garrick, 734 F. Supp. 644, 650-51 (S.D.N.Y.
1990) (finding defendant to be either the sole author or a joint author
and therefore not liable for infringement), aff'd, 927 F.2d 594 (2d Cir.),
cert. denied, 502 U.S. 811 (1991); Strauss v. Hearst Corp., No. 85 Civ.
10017 (CSH), 1988 WL 18932, at *6 (S.D.N.Y. Feb. 19, 1988) (finding defendant
to be a joint author and therefore not liable for infringement); Eckert
v. Hurley Chicago Co., 638 F. Supp. 699, 704 (N.D. Ill. 1986) (denying defendant's
motion for summary judgment made on grounds that defendant was joint author
and therefore not liable for infringement); Whelan Assocs., Inc. v. Jaslow
Dental Lab., Inc., 609 F. Supp. 1307, 1318- 19, 1322 (E.D. Pa. 1985) (finding
defendant was not a joint author and finding infringement); Aitken, Hazen,
Hoffman, Miller, P.C. v. Empire Constr. Co., 542 F. Supp. 252, 259 (D. Neb.
1982) (finding defendant was not a joint author and liable for infringement).
FN147.
See 1 Goldstein, supra note 93, s 4.2.2, at 4:20 (explaining that "each
copyright co-owner is entitled to exploit the copyright himself or to license
others to do so"); 1 Nimmer & Nimmer, supra note 6, s 6.10, at
6-30 (stating that "a joint owner, may, without obtaining the consent
of the other joint owners, either exploit the work himself, or grant a nonexclusive
license to third parties").
FN148.
For the view that current copyright protection is too strong, see, for example,
James Boyle, Shamans, Software, and Spleen x, 19, 132, 168, 172 (1996) (arguing
that copyrights are overprotected and that the importance of the public
domain is ignored; suggesting 20 year copyright protection with "a
broadly defined fair use protection"); Jessica Litman, The Public Domain,
39 Emory L.J. 965, 969 (1990) (recommending a broad definition of the public
domain).
FN149.
The term "serial collaborations" was coined by Peter Jaszi, who
defined serial collaborations as "works resulting from successive elaborations
of an idea or text by a series of creative workers, occurring perhaps over
years or decades." Jaszi, supra note 45, at 304.
FN150.
See supra notes 69-109 and accompanying text (discussing the courts' requirement
of intent to be joint authors).
FN151.
The Internet is a system whereby a user with his or her computer connects
either directly, or through intermediary computers to a remote computer
that acts as a "server," providing access to a wide variety of
information in textual, audio or image form. See Information Infrastructure
Task Force, Intellectual Property and the National Information Infrastructure:
The Report of the Working Group on Intellectual Property Rights 179-82 (1995)
(describing the Internet and noting that "[i]n the past few years,
there has been an explosion in the popularity and volume of use of the Internet").
FN152.
See supra notes 45-51 and 61-64 and accompanying text (discussing the courts'
hostility to joint works and the courts' use of conclusory findings of lack
of merger).
FN153.
See supra notes 52-60 and accompanying text (discussing the courts' subordination
of joint work doctrine to work-made-for-hire doctrine).
FN154.
See supra notes 65-68 and 110-44 and accompanying text (discussing the courts'
requirement of independently copyrightable contributions).
FN155.
I exclude from this discussion cases in which a work made for hire is found,
since in such cases, courts do not reach the issue of joint authorship.
See supra notes 52-60 and accompanying text (discussing the courts' subordination
of joint work doctrine to work-made-for-hire doctrine).
FN156.
Consider, for example, the two Childress v. Taylor decisions, neither of
which contains any suggestion that if the play at issue was not a joint
work, there was a possibility that the playwright's play might be an infringing
derivative work due to use of the actress' material. See Childress v. Taylor,
945 F.2d 500 (2d Cir. 1991); Childress v. Taylor, 20 U.S.P.Q.2d (BNA) 1181
(S.D.N.Y. 1990), aff'd, 945 F.2d 500 (2d Cir. 1991). The Second Circuit
expressly did not decide whether the actress's contributions were copyrightable.
See Childress, 945 F.2d at 509; see also Eckert v. Hurley Chicago Co., 638
F. Supp. 699, 704 (N.D. Ill. 1986) (denying defendant's motion for summary
judgment where motion was based on claim of joint authorship and not indicating
the potential for a counterclaim by defendant for use of its photograph).
FN157.
See supra notes 65-66 and 69-80 and accompanying text (explaining that the
statute requires only intent for contributions to merge).
FN158.
See supra notes 74-76 and accompanying text (discussing evidence of intent
to be joint authors).
FN159.
See 17 U.S.C. s 106(2) (1994) (granting the copyright owner the exclusive
right to prepare derivative works); see also id. s 101 (defining a derivative
work as "a work based upon one or more preexisting works, such as [examples
omitted]...or any other form in which a work may be recast, transformed,
or adapted"); see, e.g., id. s 107 (permitting fair use of protected
material); id. s 117(1) (permitting copies and adaptations of computer programs
in certain circumstances).
FN160.
Note that the Copyright Act permits a non-exclusive license to be created
without a writing signed by the copyright owner. See 17 U.S.C. s 204(a)
(1994) (requiring a writing signed by the copyright owner for a "transfer
of copyright ownership"); id. s 101 (excluding a nonexclusive license
from the definition of the term "transfer of copyright ownership").
FN161.
See Louise Kehoe, The Internet, A Business Ethic Takes Over, Fin. Times,
Oct. 3, 1995, at XXII (reporting that "[f]rom 1990 to mid-1995, the
number of computers connected to the Internet rose from 130,000 to 4.8 m[illion]"
and that "more than 50 m[illion] people across the world" now
use the Internet); Kimberly Peterson, Internet a Puzzler to Some, But It
Keeps Growing, San Diego Union-Trib., Aug. 20, 1995, at 5 (reporting that
an estimated 30 million people use the Internet worldwide and that one million
people begin use each month).
FN162.
See Statement of the Association of American Publishers on the NII Copyright
Protection Act of 1995 Before the House Subcomm. on Courts and Intellectual
Property, 104th Cong. (Feb. 8, 1996) (statement of Richard Robinson, Pres.,
CEO of the Association of American Publishers (AAP)), available in 1996
WL 50046 (expressing concern at manufacturers' "inviting... the indiscriminate
digitization, modification and transmission of materials" and at the
"ease and speed of perfect reproduction, broad dissemination and undisclosed
manipulation of works on the NII"). With respect to ease of adaptation,
compare the transmission of digitized material over the Internet to distribution
of hard copies by the print media or by the recording industry. See Message
from Jessica Litman, <cni-copyright@cni.org> (Dec. 7, 1994) (stating
that "the ease with which electronic texts may be altered has many
people concerned with finding ways to detect and prevent it") (copy
on file with Albany Law Review).
FN163.
See Jaszi, supra note 45, at 319 (describing "the conditions of the
Internet environment today [as] resembl[ing] those which prevailed at other
moments of polymorphous collaboration, unrestrained plagiarism, and extraordinary
cultural productivity--such as the Elizabethan stage or Hollywood before
1915"); Jean Erhard, Digital Rights, Internet World, Nov./Dec. 1994,
at 79, 80 (reporting that "a large part of Internet culture is based
on the free flow of information"); Ruth Pagell, Reaching For the Bottle,
Not the Glass; The End-User Factor of Electronic Full Text, Database, Oct.
1, 1993, at 8 (reporting that publishers "worry about the Internet
and the free movement of documents around the world with no regard for copyright").
FN164.
See, e.g., Sega Enters., Ltd. v. Maphia, 948 F. Supp. 923, 933, 941 (N.D.
Cal. 1996) (granting a permanent injunction against a bulletin board operator
where users uploaded to and downloaded from bulletin board video games,
based in part on a finding of contributory copyright infringement); Religious
Tech. Ctr. v. Netcom On-Line Communication Servs., Inc., 907 F. Supp. 1361,
1383 (N.D. Cal. 1995) (denying Internet access provider's motion for summary
judgment on claim of contributory infringement and denying bulletin board
operator's motion for judgment on the pleadings on claim of contributory
infringement, but denying plaintiff's motion for preliminary injunction
against foregoing defendants where user uploaded works of L. Ron Hubbard);
Central Point Software, Inc., v. Nugent, 903 F. Supp. 1057, 1060 (E.D. Tex.
1995) (granting motion for summary judgment against bulletin board operator
for copyright infringement by reproduction where computer programs were
posted on bulletin board service); Playboy Enters., Inc. v. Frena, 839 F.
Supp. 1552, 1556-57 (M.D. Fla. 1993) (granting summary judgment to magazine
against operator of subscription bulletin board for copyright infringement
by public display where subscribers uploaded to and downloaded from bulletin
board photographs, and noting that the defendant's actions "implicated"
the distribution right). In addition, there have been many incidents of
alleged copyright infringement via the Internet which have not resulted
in a published judicial opinion. See, e.g., Texas v. West Pub. Co., 882
F.2d 171, 174 n.5 (5th Cir. 1989) (reporting that West sued a legal publisher
due to the publisher's plan to market an electronic version of Texas Code
Service containing material allegedly protected by West's copyright); Frank
Music Corp. v. CompuServe Inc., 93 Civ. 8253 (S.D.N.Y. filed 1993) (claiming
in class action suit infringement of copyright when subscribers transmit
songs via bulletin board); 51 Pat. Tm. & Copyr. J. (BNA) 48 (Nov. 9,
1995) (announcing settlement of Frank Music Corp. v. CompuServe Inc.); Joe
Abernathy, Federal Agents Raid Dorm, Seize Computer Equipment, Hous. Chron.,
Dec. 17, 1992, at 40 (reporting that secret service agents seized computer
equipment of students who allegedly received software without authorization
via the Internet); Barbara Carton, Man Charged In Software Piracy, Boston
Globe, Sept. 1, 1994, at 41 (reporting that Software Publishers Association
brought suit against a bulletin board operator for copyright infringement
based on transmission of programs to subscribers); Paul Karon, The Cutting
Edge: Computing/Technology/Innovation Intellectual Properties: On-Line Services
Push the Envelope on Copyright Issue, L.A. Times, May 4, 1994, at 4 (reporting
that Paramount Communications Inc. complained that America On-Line was transmitting
unauthorized images and sounds from the "Star Trek" series); Elizabeth
Lee & Art Kramer, Netwatch the AJC's Daily Online Guide: The Political
Process Finds Its Way Online, Atlanta J. & Const., Oct. 16, 1996, at
C8 (reporting that a lyrics server that permitted users to search for the
words of thousands of songs was shut down following claims of copyright
infringement); Lee Lester, CAAST Plans to Get Tough With Software Pirates
Through Campaign That Would Include Civil Action, Computing Can., Jan. 4,
1995, at 8 (reporting that Software Publishers Association was considering
proceedings for copyright infringement against a bulletin board system in
Ohio which allegedly transmitted software without authorization to more
than 14,000 subscribers); Pair Settles Game Suit With Sega, Austin Am.-Statesman,
Dec. 7, 1995, at C2 (reporting that Sega received a settlement fee of $600,000
for a claim of copyright infringement based on uploading Sega games onto
bulletin board service); SPA Files Copyright Suits Against ISPs, Individual
End Users, EDP Weekly, Oct. 14, 1996, at 7 (reporting that the Software
Publishers Association announced the filing of five suits for copyright
infringement on the Internet); Sandra Sugawara, What's Out of Line, When
On Line? White House Report Says Copying of Computer Service Files May Be
Illegal, Wash. Post, July 7, 1994, at D9 (reporting that Knight Ridder removed
humorist's column from an on-line service because subscribers were copying
the column and further transmitting it via e-mail); Junda Woo & Jared
Sandberg, Copyright Law Is Easy To Break On the Internet, Hard to Enforce,
Wall St. J., Oct. 10, 1994, at B6 (reporting that Walt Disney Co. persuaded
commercial on-line services not to transmit unauthorized images of its characters);
35 Comm. ACM 7 (1992) (reporting that a suit by Playboy Enters., Inc. against
an on-line service for allegedly transmitting photos from Playboy magazines
through a bulletin board was settled for $500,000).
FN165.
The Working Group on Intellectual Property Rights, chaired by Commissioner
of Patents and Trademarks, Bruce Lehman, was established as a subunit of
the Information Infrastructure Task Force, formed by President Clinton in
1993. See Information Infrastructure Task Force, supra note 150, at 1-2.
The Working Group issued its final report in September of 1995, setting
forth its analysis of the intellectual property implications of the National
Information Infrastructure (for which the current Internet was used as the
prototype) and its recommendations for changes to intellectual property
law. See id. at 2, 178, 211-38. Among other changes, the Working Group recommended
amending s 106(3) of the Copyright Act to clarify that distribution of copies
can occur by transmission, as via the Internet. See id. at 213-17, app.
1, at 2. The proposed amendment would thus provide that the exclusive rights
of a copyright owner include the right "to distribute copies or phonorecords
of the copyrighted work to the public...by transmission." Id. at app.
2, at 1; see also id. at app. 1, at 2. This recommendation was embodied
in bills introduced in the Senate and House of Representatives in September
of 1995. See S. 1284, 104th Cong. s 2(a) (1995); H.R. 2441, 104th Cong.
s 2(a) (1995). These bills were not adopted prior to adjournment of the
104th Congress. Protection of copyrights via the Internet would be enhanced
by a bill introduced in July of 1997 which would prohibit the circumvention
of copyright protection systems. See H.R. 2281, 105th Cong. s 1201 (1997).
The bill was intended to implement compliance with the World Intellectual
Property Organization [hereinafter WIPO] Copyright Treaty, adopted by delegates
to the WIPO conference in December of 1996. See Hearings on H.R. 2281 and
H.R. 2180 Before the Subcomm. on Courts and Intellectual Property, 105th
Cong. (Sept. 16, 1997) (statement of Hon. Howard Coble, Chairman), available
in 1997 WL 14150810. Another bill, also introduced in July of 1997, would
limit the copyright infringement liability of on-line service providers
under certain circumstances. See H.R. 2180, 105th Cong. (1997).
FN166.
See Graceland Lawyers Unplug Free Cybertours, Charlotte Observer, Nov. 26,
1994, at C3. Another example involved an individual who transmitted via
the Internet photographs of himself with text. A second author then transmitted
a parody of the first author's text together with links to the pictures.
See Message from Paul Jones, <cni-copyright@cni.org> (Jan. 20, 1995)
(describing the incident) (copy on file with Albany Law Review). Aside from
the open question whether providing links to material, that is the location
of material on the Internet, is infringement by creation of a derivative
work by changing the context, cf. Mirage Editions, Inc. v. Albuquerque A.R.T.
Co., 856 F.2d 1341 (9th Cir. 1988), cert. denied, 489 U.S. 1018 (1989),
the textual parody is a serial collaboration. Assuming sufficient use of
material and the absence of statutory exemptions, the parody is either an
infringing or licensed derivative work, or a joint work.
FN167.
For a definition of the term "listserv," see supra note 1.
FN168.
I selected dinosaurs, music research, nerdnosh, and weird-L from a list
of lists compiled and made available by Stephanie da Silva. See <arielle
@taronga.com> (copy on file with author). Cni-copyright describes its
purpose as being "to give those who ask, answer, and discuss copyright
questions of any type a forum for discussion." Introductory Message
for Cni-copyright, < listproc@cni.org> (Nov. 7, 1994) (copy on file
with author). The self- descriptions of the remaining four listservs as
recorded in the list of lists are as follows: 1) dinosaur: "This list
has replaced dinasaur@donald.wichitaks.ncr.com.... We also discuss flying
& swimming archosaurs and other animals of that period as well as earlier
and later periods. Most participants are not paleontologists but some are
extremely well-versed." <http://www.listproc @lepomis.psych.upenn.edu>
(copy on file with author). 2) music research: "Initially the list
was established for people whose chief interests concern computers and their
applications to music representation systems, information retrieval systems
for musial [sic] scores, music printing, music analysis, musicology and
ethnomusicology and tertiary music education." <http://www.comlab.ox.ac.uk>
(copy on file with author). 3) nerdnosh: "The origins of NERDNOSH were
in the lowlands of the Red River years ago, with the water moccasins along
the brakes and the mosquitoes swarming and the River rising and the wolves
howling in the distance as the sun dropped, and a group of us were swapping
stories and the rains came and one of us said, wouldn't this be a great
idea without the snakes and the mosquitoes and the high water and the wolves
and the rain? Here it is. A virtual campfire gathering of storytellers.
Bring us your tired yarns and your family fables and your journals of yesterday
and your imprints on tomorrow." <http://www.netins.net/showcase/
dmorris/nerdnosh.html> (copy on file with author). 4) weird-L: "Disturbing
and potentially offensive prose or poetry. The list is moderated and submissions
may be edited." <listserv@brownvm.brown.edu> (copy on file with
author).
FN169.
The search terms employed to search the archives were: consent, permission,
re-post, repost, copyright, copyrighted, forwarded, free, freely, copy,
copying, permit, forward, circulate, circulated, attribute, attribution,
reprint, reprinted, redistribute, redistributed. For the addresses to the
archives, see supra note 168.
FN170.
See Jessica Litman, The Exclusive Right to Read, 13 Cardozo Arts & Ent.
L.J. 29, 48 (1994) (stating that "much of the activity on the net takes
place on the mistaken assumption that any material on the Internet is free
from copyright unless expressly declared to be otherwise"); Protecting
Intellectual- Property Rights in Cyberspace, Seattle Times, Oct. 30, 1995,
at E3 (discussing "misconceptions about intellectual-property rights
and the Internet" and stating that "some mistakenly believe that
if an author posts an article on the Internet, it is in the public domain
and thereby not protectable"); Message from Brent Sessions, <cni-copyright@cni.org>
(Mar. 30, 1995) (stating, "[s]eems to me that if you post your opinion
or some other personal response to a public listserv that ANYONE can join,
it is public domain") (copy on file with Albany Law Review).
FN171.
See, e.g., Trotter Hardy, The Proper Legal Regime for "Cyberspace,"
55 U. Pitt. L. Rev. 993, 997 (1994) (reporting that "[c]opying and
forwarding mail is a common practice in cyberspace" in the context
of forwarding an e-mail message to a listserv); Message from Mary Brandt
Jensen, < cni-copyright@cni.org> (Apr. 6, 1995) (opining that "you
can reasonably expect that the message [i.e., a message to a listserv] will
be duplicated in part in order to respond to it") (copy on file with
Albany Law Review).
FN172.
See 1 Nimmer & Nimmer, supra note 6, s 6.10, at 6-31 (stating that a
"joint owner may exploit the subject work, and must correspondingly
account to his fellow joint owners for such uses").
FN173.
See supra notes 65-109 and accompanying text (discussing the intent required
for creation of a joint work).
FN174.
See Information Infrastructure Task Force, supra note 150, at 16 (reporting
that waivers of copyright "are not uncommon on the Internet").
FN175.
The waivers in the text appeared on cni-copyright on February 7, 1994 and
Apr. 6, 1995, respectively. See cni-copyright (visited Feb. 7, 1994 &
Apr. 6, 1995) <cni-copyright@cni.org> (copies of all messages from
the five listservs containing express language quoted in the text are on
file with author). In order to discuss a wider variety of express language,
I have included several examples of such language from 1995.
FN176.
Prior to March 1, 1989, the effective date of the Berne Convention Implementation
Act, material could be placed, at least provisionally, in the public domain
by publication without copyright notice. See Berne Convention Implementation
Act of 1988, Pub. L. No. 100-568, 102 Stat. 2853 (1988); 1 Goldstein, supra
note 93, s 3.0, at 3:3, s 3.3, at 3:30, s 3.4 at 3:38-39 (explaining that
publication without copyright notice placed work in the public domain unless
the omission of notice was cured). Under current law, copyright notice upon
publication is not mandatory, with the result that express language must
be used to place material otherwise protected by copyright in the public
domain. See 17 U.S.C. ss 401(a), 402(a), 405(a) (1994) (providing that copyright
notice "may" be placed on publicly distributed copies and phonorecords,
and limiting the loss of copyright protection for omission of notice to
copies and phonorecords publicly distributed before March 1, 1989).
FN177.
See cni-copyright, supra note 174.
FN178.
Also contributing to the ambiguity created by this addendum is the fact
that the permission does not explicitly cover all of the copyright owner's
rights. For example, does it include permission to make derivative works?
See 17 U.S.C. s 106(2) (1994). If not, then the copyright owner retains
some rights and the waiver is not complete.
FN179.
The language quoted in the text appeared on <cni-copyright@cni.org>
on December 2, 1994, April 7, 1995, December 8, 1994, and on <http://
www.netins.net/showcase/ dmorris/nerdnosh.html> on January 5, 1994, respectively.
The following language more clearly reveals lack of intent for modification,
but is still not entirely free from ambiguity: "The author gives permission
to any group or individual wishing to distribute this article, so long as
proper credit is given and the article is reproduced in its entirety."
Lepomis' Home Page (visited May 1994) <http://www.listproc @lepomis.psych.upenn.edu>.
Addition of the words, "without modification," after the word,
"entirety," would make it clear that reproduction of the entire
work with added matter falls outside the scope of the author's intent.
FN180.
This language appeared on <cni-copyright@cni.org> on November 29,
1994.
FN181.
The introduction of the nerdnosh list archive contained as of 1995 the following:
"NERDNOSH (tm) material presented here is copyrighted, and as such
may not be reproduced in any form for any purpose except by the author herself
without the express permission of Yucca Flats, LTD, producers of Nerdnosh."
< http://www.netins.net/showcase/dmorris/ nerdnosh.html> (copy on
file with author).
FN182.
See supra notes 69-109 and accompanying text (discussing the intent requirement
for creation of a joint work).