kevin keener, keener law, copyright ownership in the land of a thousand authors

Copyright Ownership in the Land of a Thousand Authors

Kevin Keener

IP Attorney

www.keenerlawfirm.com


Topics Covered

• Basic Copyright Law

• Joint Authorship

• Co-Owning Copyright

• Derivative Works


Copyright Basics ©

• Copyright protects “original works of authorship fixed in any tangible medium of expression.” 17 U.S.C. § 102(a).

• Copyright protects the expression of an idea, not the idea itself.


Copyright Basics ©

• Types of works that qualify for copyright protection– Literary works– Musical works– Dramatic works– Pantomimes and Choreographic works– Pictoral, Graphic, and Sculptural works– Motion Pictures and other audiovisual works– Sound Recordings– Architectural works


Copyright Basics ©

• Exclusive rights granted to authors– The right to reproduce

– The right to prepare derivative works

– The right to distribute by sale, rental, lease, or lending

– The right to perform publicly

– The right to display publicly

– The right to perform by means of a digital audio transmission (for sound recordings only)


Joint Authorship

• A “joint work” is 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. 17 U.S.C. § 101.


Joint Authorship

• Childress v. Taylor, 945 F.2d 500 (2nd Cir. 1991).– Taylor portrayed “Moms” Mabley in off-off-

Broadway skit. Decided to produce a play based on life of Mabley.

– Taylor hired Childress to write the play.


Joint Authorship

• Childress v. Taylor, 945 F.2d 500 (2nd Cir. 1991).– Taylor performed research, interviewed people

associated with Mabley, suggested characters, and suggested scenes.

– Taylor contributed facts and details about Mabley. Childress was responsible for the actual structure of the play and the dialogue.


Joint Authorship

• Childress v. Taylor, 945 F.2d 500 (2nd Cir. 1991).– Court ruled that Childress was the sole author

of the play.– Two main points the court pointed out:

• Each author must contribute copyrightable material

• Each author must intend for their contributions to be merged into one


Ownership Basics

• Ownership initially vests in the author or authors of a work. 17 U.S.C. § 201(a)

• For a work made for hire, the employer is the author. 17 U.S.C. § 201(b)– A work made for hire is a work prepared by an

employee within the scope of employment. 17 U.S.C. § 101.


Splitting Up Rights

• In a joint work, each author automatically acquires an undivided ownership of the entire work. 1 M. Nimmer, Nimmer on Copyright § 6.03 at 6-6 (1988).

• “Joint authorship entitles the coauthors to equal undivided interests in the whole work-in other words, each joint author has the right to use or to license the work as he or she wishes, subject only to the obligation to account to the other joint owner for any profits that are made.” Thomas v. Larson, 147 F.3d 195, 199 (2nd Cir. 1998).


Splitting Up Rights

• The Copyright Act rejects the doctrine of indivisibility.

• Instead, copyright is a bundle of discrete exclusive rights each of which may be transferred and owned separately. New York Times Co., Inc. v. Tasini, 533 U.S. 483, 495-496 (2001).


Copyright Basics ©

• Exclusive rights granted to authors– The right to reproduce

– The right to prepare derivative works

– The right to distribute by sale, rental, lease, or lending

– The right to perform publicly

– The right to display publicly

– The right to perform by means of a digital audio transmission (for sound recordings only)


Splitting Up Rights

• Davis v. Blige, 505 F.3d 90 (2nd Cir. 2007)– Two songs from a 2001 Mary J. Blige

album were allegedly co-written by Davis and Chambliss in 1998

– Davis filed suit for copyright infringement in 2003

– In 2004, Chambliss assigns his rights in the songs to Blige’s representative “retroactively”


Splitting Up Rights

• Davis v. Blige, 505 F.3d 90, 99 (2nd Cir. 2007)– An owner may convey any rights, permanently or

temporarily, but he may not convey more than he owns.– An owner may even convey his interest in prosecuting

accrued actions of infringement.– An owner may not, however, convey the interests of his

co-owners without their express written consent, even if the person receiving the interest has no notice of the other owners.

– A person may receive an exclusive license in a jointly authored work only if all authors agree in writing.


Derivative Works

• A “derivative work” is a work based upon one or more preexisting works. 17 U.S.C. § 101.– Adaptations– Sequels– Spin-offs– Variations


Derivative Works

• “Protection for a work employing preexisting material…does not extend to any part of the work in which such material has been used unlawfully.” 17 U.S.C. § 103(a)

• Copyright in a derivative work extends only to the new material, and does not give any right to the underlying material. 17 U.S.C. § 103(b)


Derivative Works

• Gilliam v. ABC, Inc., 538 F.2d 14 (2nd Cir. 1976).– Monty Python’s Flying Circus created thirty-minute

episodes for the BBC

– Monty Python wrote and delivered script to the BBC. BBC could make minor changes to script.

– BBC did not have the authority to alter a program after it was recorded.

– Monty Python owned © in script. BBC owned © in program.


Derivative Works

• Gilliam v. ABC, Inc., 538 F.2d 14 (2nd Cir. 1976).– BBC had the authority to license transmission

of the program overseas.– Time-Life acquired the right to distribute in

America. BBC gave Time-Life the right to edit for commercials and censorship. ABC got the right to air programs from Time-Life.


Derivative Works

• Gilliam v. ABC, Inc., 538 F.2d 14 (2nd Cir. 1976).– Monty Python troupe later saw the U.S.

broadcast and was “appalled” at the discontinuity and “mutilation” of the program.

– Court ruled that Time-Life’s editing from 30 minutes to 22 minutes infringed the underlying copyright in the script.


Derivative Works

• Gilliam v. ABC, Inc., 538 F.2d 14 (2nd Cir. 1976).– Even if you get a license to use a work, it may

contain an underlying work for which you do not have a license.


Conclusion

• Joint authors are those who intend that their contributions will be merged together.

• Each joint author owns all rights given by copyright unless they otherwise agree.

• An owner may not convey the rights of the other owners.

• If a work is not a joint authorship, it may be a derivative work. Copyright ownership in a derivative work does not extend to the underlying material.


Questions/Contact

Kevin Keener

P.O. Box 146734

Chicago, IL 60614

773-562-5902

[email protected]
