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Authorship in Open Source

Introduction

Collaborative authorship is a hallmark of the free and open source software movement. The Linux kernel is the result of broad collaboration of tens of thousands of distinct authors, contributing thousands of modifications every year. But what are the legal consequences of collaborative authorship? Who decides how the project is licensed? Who has standing to sue over infringement of the project?

In order to discuss the legal ramifications of collaborative authorhsip, it is critical to distinguish the different types of copyrightable works from the different types of copyright property interests. These two subjects each play a very important role in the assignment of rights to a copyright-protected work.

United States copyright law only recognizes two forms of property interest to the copyright rights for that granular work: single-author authorship and joint authorship. The rights to works authored by a single author vest in a single entity.1 The rights to works authored by joint authors are shared by the joint authors, with each joint author enjoying an equal interest in the undivided whole.

While 17 U.S.C. § 101 defines many different types of works, most important for open source projects is the distinction between a standard, monolithic work of authorship and a collective work of authorship.2 A collective work is a work like a periodical or anthology that consists of separate, identifiable parts. Each part can be authored by an individual, independent author. A traditional example of a collective work is an anthology of short stories written by different authors. If a work qualifies as a collective work, the copyright ownership of its constituent parts is held by the individual authors of those parts. The publisher of the collective holds a thin copyright over the selection and arrangement of the work as a collective, with narrow permission to use the independent components in the context of publishing the collective work. 3 Conversely, a standard, monolithic work is one where all of the parts of the work are interrelated, such as a novel, or a software application.

Lastly, writings play an important role in preempting questions about copyright ownership and licensing for open source projects. The standard mechanism for contributing to an open source project is the submission of a pull request, which entails re-copying the entire repository along with the contributed changes, together with all of the project’s existing documentation, when submitting the contribution. Through this mechanism, a contributor is formally publishing the contribution under the license of the project. Another common device used by open source projects is a Contributor License Agreement (CLA) or Developer Certificate of Origin (DCO), both of which can play an important role in establishing the ownership and licensing of the content of open source projects.

This chapter will address copyright’s legal framework around collaborative authorship, specifically evaluating the copyright status of a contribution to a larger work. This requires examining the distinction between jointly-authored works and independently-authored works, the distinction between collective works and monolithic works, and the role that writings can play in resolving authorship ambiguity.

The first section of this chapter will address: the criteria for establishing that a work is a joint work, the property interest consequences of a joint work, and the role that joint authorship plays in open source development. While forms of joint authorship appear in many nation’s copyright laws, the concept is approached differently from country to country.4 This chapter presently focuses on the joint authorship mechanism under United States law.

The second section of this chapter addresses the minimum criteria for creating a copyrightable work and discuss the application of this standard in the context of open source contributions.

The third section addresses the role that writings play in governing copyright ownership interests and work classifications in open source development.

But before delving into the cases, the Copyright Act’s definitions section lays helpful foundations for discussing copyright property interests and work types.

Definitions

“Collective Work” - “A ‘collective work’ is a work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.”5

“Compilation” - “A ‘compilation’ is a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. The term ‘compilation’ includes collective works.”6

“Contributions to Collective Works” - “Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.”7

Copyright to Compilations and Derivative Works - “The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material.”8

Copyrightable Work - This critical term is not statutorily defined. The minimum criteria for establishing a copyrightable work must instead be distilled from case law:

“The sine qua non of copyright is originality. To qualify for copyright protection, a work9 must be original to the author. Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity. To be sure, the requisite level of creativity is extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark, “no matter how crude, humble or obvious” it might be. Originality does not signify novelty; a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not the result of copying. To illustrate, assume that two poets, each ignorant of the other, compose identical poems. Neither work is novel, yet both are original and, hence, copyrightable.” 10

“Joint Work” - “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.”11 “If joint authorship status is accorded to person whose contribution is relatively minor, that person enjoys all benefits of joint authorship.” 12

Copyright can either be individually owned or jointly owned. This contrasts with real property, where a parcel of land is recognized to be infinitely divisible, and the forms of property interest that an individual can hold to a given piece of real property vary considerably (fee simple, expectancy interest, tenancy, life estate, etc.). Copyrighted works are not infinitely divisible. While any piece of real property can be physically cut in half, it can be impossible to separate a copyrighted work into fractional works with independent ownership. Accordingly, there are only two statutorily-recognized forms of copyright property interest that can attach to an individual work.

If a work is authored by one individual, then the copyright rights vest in that one individual alone.13 That individual is the sole entity that can license or transfer ownership of any of the copyright rights that attach to the work or that can allege infringement of the work. If the individual received ideas or input from someone else that constituted improvements or modifications upon the author’s work, and not separate independently-copyrightable works of authorship in themselves, the incorporation of such ideas or input might not disturb the individual’s sole receipt of copyright ownership to the work.14

Conversely, if the work is authored by two or more parties, with their contributions combining to make interdependent parts of an inseparable whole, and where it is the intent of the parties to be joint-authors of this singular work, then joint authorship will apply.15 For a jointly-authored work, authorship vests initially in all joint-authors, with each joint-author enjoying equal interest in the undivided whole.16 The concept of joint authorship is important for the creation of indivisible works that are the product of collaboration, such as a single sculpture where two authors sculpted interdependent parts.

The open source community is intrigued by the joint authorship model.17 However, it may be difficult to establish that an open source project is a joint work without evidence that the co-authors unambiguously intended for the work to be a joint work, and that there is a mutual intention to treat one another as co-authors. As we examine the following cases, consider the asynchronous nature of open source development and the various possible forms of relationships between project creators, contributors, and forkers.

Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 2000)

This seminal Ninth Circuit case on the subject of joint authorship concerned a joint authorship claim by one of the production assistants for the movie Malcolm X who played a significant role in informing the movie’s depiction of Malcolm X’s conversion to Islam. The Aalmuhammed court established a three-criterion test for determining whether joint authorship exists in the absence of a contract, and it continues to be employed in some circuits today.

Opinion

KLEINFELD, Circuit Judge: This is a copyright case involving a claim of co-authorship of the movie Malcolm X. We reject the “joint work” claim but remand for further proceedings on a quantum meruit claim.

I. FACTS

In 1991, Warner Brothers contracted with Spike Lee and his production companies to make the movie Malcolm X, to be based on the book, The Autobiography of Malcolm X. Lee co-wrote the screenplay, directed, and co-produced the movie, which starred Denzel Washington as Malcolm X. Washington asked Jefri Aalmuhammed to assist him in his preparation for the starring role because Aalmuhammed knew a great deal about Malcolm X and Islam. Aalmuhammed, a devout Muslim, was particularly knowledgeable about the life of Malcolm X, having previously written, directed, and produced a documentary film about Malcolm X.

Aalmuhammed joined Washington on the movie set. The movie was filmed in the New York metropolitan area and Egypt. Aalmuhammed presented evidence that his involvement in making the movie was very extensive. He reviewed the shooting script for Spike Lee and Denzel Washington and suggested extensive script revisions. Some of his script revisions were included in the released version of the film; others were filmed but not included in the released version. Most of the revisions Aalmuhammed made were to ensure the religious and historical accuracy and authenticity of scenes depicting Malcolm X’s religious conversion and pilgrimage to Mecca.

Aalmuhammed submitted evidence that he directed Denzel Washington and other actors while on the set, created at least two entire scenes with new characters, translated Arabic into English for subtitles, supplied his own voice for voice-overs, selected the proper prayers and religious practices for the characters, and edited parts of the movie during post production. Washington testified in his deposition that Aalmuhammed’s contribution to the movie was “great” because he “helped to rewrite, to make more authentic.” Once production ended, Aalmuhammed met with numerous Islamic organizations to persuade them that the movie was an accurate depiction of Malcolm X’s life. Aalmuhammed never had a written contract with Warner Brothers, Lee, or Lee’s production companies, but he expected Lee to compensate him for his work. He did not intend to work and bear his expenses in New York and Egypt gratuitously. Aalmuhammed ultimately received a check for $ 25,000 from Lee, which he cashed, and a check for $ 100,000 from Washington, which he did not cash.

During the summer before Malcolm X’s November 1992 release, Aalmuhammed asked for a writing credit as a co-writer of the film, but was turned down. When the film was released, it credited Aalmuhammed only as an “Islamic Technical Consultant,” far down the list. In November 1995, Aalmuhammed applied for a copyright with the U.S. Copyright Office, claiming he was a co-creator, co-writer, and co-director of the movie. The Copyright Office issued him a “Certificate of Registration,” but advised him in a letter that his “claims conflict with previous registrations” of the film.

On November 17, 1995, Aalmuhammed filed a complaint against Spike Lee, his production companies, and Warner Brothers, (collectively “Lee”), as well as Largo International, N.V., and Largo Entertainment, Inc. (collectively “Largo”), and Victor Company of Japan and JVC Entertainment, Inc. (collectively “Victor”). The suit sought declaratory relief and an accounting under the Copyright Act. In addition, the complaint alleged breach of implied contract, quantum meruit, and unjust enrichment, and federal (Lanham Act) and state unfair competition claims. The district court dismissed some of the claims under Rule 12(b)(6) and the rest on summary judgment.

II. ANALYSIS

A. Copyright claim

Aalmuhammed claimed that the movie Malcolm X was a “joint work” of which he was an author, thus making him a co-owner of the copyright.18 He sought a declaratory judgment to that effect, and an accounting for profits. He is not claiming copyright merely in what he wrote or contributed, but rather in the whole work, as a co-author of a “joint work.” 19 The district court granted defendants summary judgment against Mr. Aalmuhammed’s copyright claims. We review de novo.20

Defendants argue that Aalmuhammed’s claim that he is one of the authors of a joint work is barred by the applicable statute of limitations. A claim of authorship of a joint work must be brought within three years of when it accrues.21 Because creation rather than infringement is the gravamen of an authorship claim, the claim accrues on account of creation, not subsequent infringement, and is barred three years from “plain and express repudiation” of authorship.22

The movie credits plainly and expressly repudiated authorship, by listing Aalmuhammed far below the more prominent names, as an “Islamic technical consultant.” That repudiation, though, was less than three years before the lawsuit was filed. The record leaves open a genuine issue of fact as to whether authorship was repudiated before that. Aalmuhammed testified in his deposition that he discussed with an executive producer at Warner Brothers his claim to credit as one of the screenwriters more than three years before he filed suit. Defendants argue that this discussion was an express repudiation that bars the claim. It was not. Aalmuhammed testified that the producer told him “there is nothing I can do for you,” but “he said we would discuss it further at some point.” A trier of fact could construe that communication as leaving the question of authorship open for further discussion. That leaves a genuine issue of fact as to whether the claim is barred by limitations, so we must determine whether there is a genuine issue of fact as to whether Aalmuhammed was an author of a “joint work.”

Aalmuhammed argues that he established a genuine issue of fact as to whether he was an author of a “joint work,” Malcolm X. The Copyright Act does not define “author,” but it does define “joint work”:

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.23

“When interpreting a statute, we look first to the language.”24 The statutory language establishes that for a work to be a “joint work” there must be (1) a copyrightable work, (2) two or more “authors,” and (3) the authors must intend their contributions be merged into inseparable or interdependent parts of a unitary whole. A “joint work” in this circuit “requires each author to make an independently copyrightable contribution” to the disputed work.25 Malcolm X is a copyrightable work, and it is undisputed that the movie was intended by everyone involved with it to be a unitary whole. It is also undisputed that Aalmuhammed made substantial and valuable contributions to the movie, including technical help, such as speaking Arabic to the persons in charge of the mosque in Egypt, scholarly and creative help, such as teaching the actors how to pray properly as Muslims, and script changes to add verisimilitude to the religious aspects of the movie. Speaking Arabic to persons in charge of the mosque, however, does not result in a copyrightable contribution to the motion picture. Coaching of actors, to be copyrightable, must be turned into an expression in a form subject to copyright.26 The same may be said for many of Aalmuhammed’s other activities. Aalmuhammed has, however, submitted evidence that he rewrote several specific passages of dialogue that appeared in Malcolm X, and that he wrote scenes relating to Malcolm X’s Hajj pilgrimage that were enacted in the movie. If Aalmuhammed’s evidence is accepted, as it must be on summary judgment, these items would have been independently copyrightable. Aalmuhammed, therefore, has presented a genuine issue of fact as to whether he made a copyrightable contribution. All persons involved intended that Aalmuhammed’s contributions would be merged into interdependent parts of the movie as a unitary whole. Aalmuhammed maintains that he has shown a genuine issue of fact for each element of a “joint work.”

But there is another element to a “joint work.” A “joint work” includes “two or more authors.”27 Aalmuhammed established that he contributed substantially to the film, but not that he was one of its “authors.” We hold that authorship is required under the statutory definition of a joint work, and that authorship is not the same thing as making a valuable and copyrightable contribution. We recognize that a contributor of an expression may be deemed to be the “author” of that expression for purposes of determining whether it is independently copyrightable. The issue we deal with is a different and larger one: is the contributor an author of the joint work within the meaning of 17 U.S.C. § 101.

By statutory definition, a “joint work” requires “two or more authors.”28 The word “author” is taken from the traditional activity of one person sitting at a desk with a pen and writing something for publication. It is relatively easy to apply the word “author” to a novel. It is also easy to apply the word to two people who work together in a fairly traditional pen-and-ink way, like, perhaps, Gilbert and Sullivan. In the song, “I Am the Very Model of a Modern Major General,” Gilbert’s words and Sullivan’s tune are inseparable, and anyone who has heard the song knows that it owes its existence to both men, Sir William Gilbert and Sir Arthur Sullivan, as its creative originator. But as the number of contributors grows and the work itself becomes less the product of one or two individuals who create it without much help, the word is harder to apply.

Who, in the absence of contract, can be considered an author of a movie? The word is traditionally used to mean the originator or the person who causes something to come into being, or even the first cause, as when Chaucer refers to the “Author of Nature.” For a movie, that might be the producer who raises the money. Eisenstein thought the author of a movie was the editor. The “auteur” theory suggests that it might be the director, at least if the director is able to impose his artistic judgments on the film. Traditionally, by analogy to books, the author was regarded as the person who writes the screenplay, but often a movie reflects the work of many screenwriters. Grenier suggests that the person with creative control tends to be the person in whose name the money is raised, perhaps a star, perhaps the director, perhaps the producer, with control gravitating to the star as the financial investment in scenes already shot grows.29 Where the visual aspect of the movie is especially important, the chief cinematographer might be regarded as the author. And for, say, a Disney animated movie like “The Jungle Book,” it might perhaps be the animators and the composers of the music.

The Supreme Court dealt with the problem of defining “author” in new media in Burrow-Giles Lithographic Co. v. Sarony.30 The question there was, who is the author of a photograph: the person who sets it up and snaps the shutter, or the person who makes the lithograph from it. Oscar Wilde, the person whose picture was at issue, doubtless offered some creative advice as well. The Court decided that the photographer was the author, quoting various English authorities: “the person who has superintended the arrangement, who has actually formed the picture by putting the persons in position, and arranging the place where the people are to be - the man who is the effective cause of that”; “‘author’ involves originating, making, producing, as the inventive or master mind, the thing which is to be protected”; “the man who really represents, creates, or gives effect to the idea, fancy, or imagination.”31 The Court said that an “author,” in the sense that the Founding Fathers used the term in the Constitution,32 was “‘he to whom anything owes its origin; originator; maker; one who completes a work of science or literature.‘”33

Answering a different question, what is a copyrightable “work,” as opposed to who is the “author,” the Supreme Court held in Feist Publications that “some minimal level of creativity” or “originality” suffices.34 But that measure of a “work” would be too broad and indeterminate to be useful if applied to determine who are “authors” of a movie. So many people might qualify as an “author” if the question were limited to whether they made a substantial creative contribution that that test would not distinguish one from another. Everyone from the producer and director to casting director, costumer, hairstylist, and “best boy” gets listed in the movie credits because all of their creative contributions really do matter. It is striking in Malcolm X how much the person who controlled the hue of the lighting contributed, yet no one would use the word “author” to denote that individual’s relationship to the movie. A creative contribution does not suffice to establish authorship of the movie.

Burrow-Giles, in defining “author,” requires more than a minimal creative or original contribution to the work.35 Burrow-Giles is still good law, and was recently reaffirmed in Feist Publications.36 Burrow-Giles and Feist Publications answer two distinct questions; who is an author, and what is a copyrightable work.37 Burrow-Gilesdefines author as the person to whom the work owes its origin and who superintended the whole work, the “master mind.”38 In a movie this definition, in the absence of a contract to the contrary, would generally limit authorship to someone at the top of the screen credits, sometimes the producer, sometimes the director, possibly the star, or the screenwriter - someone who has artistic control. After all, in Burrow-Giles the lithographer made a substantial copyrightable creative contribution, and so did the person who posed, Oscar Wilde, but the Court held that the photographer was the author.39

The Second and Seventh Circuits have likewise concluded that contribution of independently copyrightable material to a work intended to be an inseparable whole will not suffice to establish authorship of a joint work.40 Although the Second and Seventh Circuits do not base their decisions on the word “authors” in the statute, the practical results they reach are consistent with ours. These circuits have held that a person claiming to be an author of a joint work must prove that both parties intended each other to be joint authors.41 In determining whether the parties have the intent to be joint authors, the Second Circuit looks at who has decision making authority, how the parties bill themselves, and other evidence.42

In Thomson v. Larson, an off-Broadway playwright had created a modern version of La Boheme, and had been adamant throughout its creation on being the sole author.43 He hired a drama professor for “dramaturgical assistance and research,” agreeing to credit her as “dramaturg” but not author, but saying nothing about “joint work” or copyright.44 The playwright tragically died immediately after the final dress rehearsal, just before his play became the tremendous Broadway hit, Rent.45 The dramaturg then sued his estate for a declaratory judgment that she was an author of Rent as a “joint work,” and for an accounting.46 The Second Circuit noted that the dramaturg had no decision making authority, had neither sought nor was billed as a co-author, and that the defendant entered into contracts as the sole author.47 On this reasoning, the Second Circuit held that there was no intent to be joint authors by the putative parties and therefore it was not a joint work.48

Considering Burrow-Giles, the recent cases on joint works0, and the Gilbert and Sullivan example, several factors suggest themselves as among the criteria for joint authorship, in the absence of contract. First, an author “superintends”49 the work by exercising control.50 This will likely be a person “who has actually formed the picture by putting the persons in position, and arranging the place where the people are to be - the man who is the effective cause of that,”51 or “the inventive or master mind” who “creates, or gives effect to the idea.”52 Second, putative coauthors make objective manifestations of a shared intent to be coauthors, as by denoting the authorship of The Pirates of Penzance as “Gilbert and Sullivan.”53 We say objective manifestations because, were the mutual intent to be determined by subjective intent, it could become an instrument of fraud, were one coauthor to hide from the other an intention to take sole credit for the work. Third, the audience appeal of the work turns on both contributions and “the share of each in its success cannot be appraised.”54 Control in many cases will be the most important factor.

The best objective manifestation of a shared intent, of course, is a contract saying that the parties intend to be or not to be co-authors. In the absence of a contract, the inquiry must of necessity focus on the facts. The factors articulated in this decision and the Second and Seventh Circuit decisions cannot be reduced to a rigid formula, because the creative relationships to which they apply vary too much. Different people do creative work together in different ways, and even among the same people working together the relationship may change over time as the work proceeds.

Aalmuhammed did not at any time have superintendence of the work.55 Warner Brothers and Spike Lee controlled it. Aalmuhammed was not the person “who has actually formed the picture by putting the persons in position, and arranging the place … .”56 Spike Lee was, so far as we can tell from the record. Aalmuhammed, like Larson’s dramaturg, could make extremely helpful recommendations, but Spike Lee was not bound to accept any of them, and the work would not benefit in the slightest unless Spike Lee chose to accept them. Aalmuhammed lacked control over the work, and absence of control is strong evidence of the absence of co-authorship.

Also, neither Aalmuhammed, nor Spike Lee, nor Warner Brothers, made any objective manifestations of an intent to be coauthors. Warner Brothers required Spike Lee to sign a “work for hire” agreement, so that even Lee would not be a co-author and co-owner with Warner Brothers. It would be illogical to conclude that Warner Brothers, while not wanting to permit Lee to own the copyright, intended to share ownership with individuals like Aalmuhammed who worked under Lee’s control, especially ones who at the time had made known no claim to the role of co-author. No one, including Aalmuhammed, made any indication to anyone prior to litigation that Aalmuhammed was intended to be a co-author and co-owner.

Aalmuhammed offered no evidence that he was the “inventive or master mind” of the movie. He was the author of another less widely known documentary about Malcolm X, but was not the master of this one. What Aalmuhammed’s evidence showed, and all it showed, was that, subject to Spike Lee’s authority to accept them, he made very valuable contributions to the movie. That is not enough for co-authorship of a joint work.

The Constitution establishes the social policy that our construction of the statutory term “authors” carries out. The Founding Fathers gave Congress the power to give authors copyrights in order “to promote the progress of Science and useful arts.”57 Progress would be retarded rather than promoted, if an author could not consult with others and adopt their useful suggestions without sacrificing sole ownership of the work. Too open a definition of author would compel authors to insulate themselves and maintain ignorance of the contributions others might make. Spike Lee could not consult a scholarly Muslim to make a movie about a religious conversion to Islam, and the arts would be the poorer for that.

The broader construction that Aalmuhammed proposes would extend joint authorship to many “overreaching contributors,”58 like the dramaturg in Thomson, and deny sole authors “exclusive authorship status simply because another person rendered some form of assistance.”59 Claimjumping by research assistants, editors, and former spouses, lovers and friends would endanger authors who talked with people about what they were doing, if creative copyrightable contribution were all that authorship required.

Aalmuhammed also argues that issuance of a copyright registration certificate to him establishes a prima facie case for ownership. A prima facie case could not in any event prevent summary judgment in the presence of all the evidence rebutting his claim of ownership. “The presumptive validity of the certificate may be rebutted and defeated on summary judgment.”60 The Copyright Office stated in its response to Aalmuhammed’s application for copyright (during the pendency of this litigation) that his claims “conflict with previous registration claims,” and therefore the Copyright Office had “several questions” for him. One of the questions dealt with the “intent” of “other authors,” i.e., Warner Brothers. The evidence discussed above establishes without genuine issue that the answers to these questions were that Warner Brothers did not intend to share ownership with Aalmuhammed.

Because the record before the district court established no genuine issue of fact as to Aalmuhammed’s co-authorship of Malcolm X as a joint work, the district court correctly granted summary judgment dismissing his claims for declaratory judgment and an accounting resting on co-authorship.

[***]

Discussion
  1. Could a contributor to an open source project seek compensation for their contributions under a theory of quantum meruit?

  2. Is a co-author of a work inherently a co-author of derivative works? See Richlin v. MGM Pictures, Inc., 531 F.3d 962 (heirs of co-author of 14-page treatment that was basis for Pink Panther movies not entitled to co-authorship of the actual movies).

  3. If two parties enter into an agreement to be co-authors of a work, and then the work is authored by one of the parties with no copyrightable contributions from the second party, is the second party a co-author? See Richlin v. MGM Pictures, Inc., 531 F.3d 962, 968, 2008 U.S. App. LEXIS 12917, *15 (“A contract evidencing intent to be or not to be coauthors is dispositive.”)(citing Aalmuhammed v. Lee, 202 F.3d 1227, 1234 (9th Cir. 2000)), but see also Weissmann v. Freeman, 868 F.2d 1313, 1327 (2d Cir. 1989)(“one cannot be found to be a joint author of a work without actually having contributed to that work.”)(Judge Pierce’s concurrence, citing 1 M. Nimmer, Nimmer on Copyright § 6.07 (1988)).

  4. Professor Nimmer firmly disagrees with the Ninth Circuit’s joint authorship test formulated in Aalmuhammed:

“The Aalmuhammed court’s emphasis on ‘control’ as the most important factor in the joint authorship analysis is inconsistent with the plain meaning, legislative history, and transparent logic of the Copyright Act’s ownership regime. The Section 101 definition of ‘joint work’ recognizes a wide range of collaborative working arrangements by requiring only that “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 master-mind concept narrows the range of joint authors down to one or a few individuals for administrative convenience or to avoid unjustified windfalls, not out of fidelity to legislative intent.”61

Does the Ninth Circuit misconstrue the legislative intent behind joint works in Aalmhuammed? Are we likely to see refinement of the Ninth Circuit’s three-crtierion test?

Weissmann v. Freeman 868 F.2d 1313 (2nd Cir. 1989)

Our next case concerns a dispute that arose when one of two joint authors of scholarly works indepedently published a paper derived from the jointly-authored works. It highlights an important issue for open source developers to consider, namely: the creation of works that are derived from joint works, and the relationship between joint authors and those derivative works.

Opinion

CARDAMONE, Circuit Judge: This appeal presents the paradigm of the problems that arise when a long relationship between accomplished professor and brilliant assistant comes to an end. Together the two had researched and co-authored scholarly scientific works. When the appellant–the younger assistant–individually wrote what she considered a new work, the appellee–the mentor–believing himself a co-author of the new piece, used his assistant’s work, styling it as his own, and thereby precipitated the instant litigation.

Heidi S. Weissmann, M.D. appeals the dismissal after a bench trial in the Southern District of New York (Pollack, J.), of her copyright infringement suit against Leonard M. Freeman, M.D. Among the issues presented on appeal is the novel question of whether a medical paper derived from the parties’ prior jointly authored works is itself a joint work, or whether it is a copyrightable individual derivative work, the infringement of which gives rise to a cause of action under the Copyright Act, 17 U.S.C. § 101, et seq. (1982 & Supp. III 1985).

FACTS

The parties are both accomplished scientists in the field of nuclear medicine. Appellant Weissmann is an Associate Professor of Radiology and Nuclear Medicine at the Albert Einstein College of Medicine (Einstein), and is an attending physician specializing in nuclear medicine at the Montefiore Medical Center (Montefiore). She has received numerous awards in the area of radionuclide imaging, and published more than 80 scholarly articles. Appellee Freeman is also a prolific author, and a noted lecturer in the fields of nuclear medicine and diagnostic radiology. He has served as President of the Society of Nuclear Medicine, and currently is a professor of Radiology and of Nuclear Medicine at Einstein, where he has taught since 1964. He is the Director of the Nuclear Medicine Service at Montefiore and Vice-Chairman of the Department of Nuclear Medicine at Einstein.

The parties’ professional association began in 1977 when Dr. Weissmann was in her fourth year of residency at Montefiore and Dr. Freeman was Chief of the Division of Nuclear Medicine at that hospital. In early 1977 appellee was researching the application of the derivatives of a certain radiopharmaceutical, iminodiacetic acid (IDA). IDA is a substance labeled with a radioactive isotope that is injected into the bloodstream and, when picked up by the liver, permits diagnosis of certain liver and biliary disorders. In the late 1970’s drug manufacturers producing IDA analogs needed scientists to develop a patient data base to obtain approval of their Food and Drug Administration applications in order to market the isotopes in the United States. One selected scientist was Dr. Freeman, who began using the IDA analogs in his research efforts. As a fourth-year resident, appellant worked on these initial studies under Dr. Freeman’s tutelage. The parties’ first jointly authored article on IDA derivatives was published in January 1979. Over the next several years a series of articles on the use of IDA scanning in diagnosing biliary diseases were published in the names of Freeman, Weissmann, and other scientists.

Beginning in 1980 the parties worked together as researchers and co-authors of a number of papers focusing on various aspects of nuclear medicine, particularly IDA imaging. Prior versions of the work alleged to have been infringed in the instant litigation were first written in 1980 for a nuclear medicine review course sponsored by the Harvard Medical School. The district court found that the work in which appellant claims a copyright (Plaintiff’s exhibit 1 or P-1) is a “syllabus,” that is, a paper reviewing the state of the art of hepatobiliary imaging techniques, prepared to accompany lectures, and used by medical residents to study for specialty boards. From 1980 to 1985 prior versions of P-1 were constantly revised and updated by the parties in an ongoing cooperative effort.

In 1985 Dr. Weissmann authored the article that precipitated the present copyright suit. It was entitled “Hepatobiliary Imaging” (P-1), and reported on a relatively new diagnostic technique employing radioactive analogs of the agent IDA. The work was prepared as a chapter for the Radiological Society of North America’s book entitled “Syllabus: A Categorical Course in Nuclear Medicine,” printed and published in 1985. The publication listed Dr. Weissmann as the article’s sole author.

Appellant’s creation admittedly was derived from previous papers jointly written by the parties during the course of their professional relationship that extended from 1977 to 1984. An examination of the relevant documents reveals that portions of P-1 were taken virtually verbatim from prior jointly authored pieces that had been presented at Einstein and at the Mount Sinai School of Medicine (Mount Sinai) in 1983 and 1984 respectively. Although P-1 appears to restate the central propositions asserted in the prior works, Weissmann’s exhibits includes the following new elements: (1) a new selection of photo illustrations and associated captions; (2) references to four recent reports in the pertinent literature; (3) new textual additions; and (4) reorganization of previous material. Appellee conceded at trial that this material in P-1 was created solely by appellant.

In the summer of 1987 Dr. Freeman was invited to give a review course on nuclear medicine at Mount Sinai. He prepared P-1 to use in giving the course by deleting Dr. Weissmann’s name from P-1 and replacing it with his own, and by adding three words to the title. Fifty copies of the article were made. Before the date set for the course, appellant obtained one of the copies, and through counsel requested that her revised article not be circulated, and that all those who had received copies be informed that she claimed sole authorship of it. The article was removed from the packet of course materials. Dr. Freeman delivered his lecture without the use of his version of P-1.

After this incident, Weissmann filed the instant suit alleging copyright infringement in violation of 17 U.S.C. § 501 (1982 & Supp. 1985). In her prayer for relief she sought a declaration that Freeman had committed actionable infringement, an injunction permanently restraining him from infringing, and an award of actual damages and profits. Appellant consented to the dismissal of her claim for attorney’s fees because the copyright she obtained covering P-1 was not registered before the suit was commenced, and such is a statutory prerequisite to a claim for attorney’s fees.

PROCEEDINGS BELOW

After a four-day bench trial, Judge Pollack in a written decision concluded that Dr. Freeman’s use of P-1 did not violate the copyright law.684 F. Supp. 1248 (S.D.N.Y. 1988). In support of its determination that Freeman had not infringed any legally cognizable rights that appellant may have had in P-1, the district court found that appellee was a joint author, and therefore a co-owner of any copyright Weissmann acquired in the article. 684 F. Supp. at 1260. The trial court also determined that P-1’s new matter was too trivial to qualify for protection as a derivative work under the copyright statute. Id. at 1261. Additionally, it ruled that even were Freeman not a joint author of the allegedly infringed work, and even were P-1’s new matter copyrightable, Freeman’s purported use of P-1 was a fair use within the purview of § 107 of the Copyright Act. Id. at 1261-62.

In the course of the proceedings the district court denied appellant’s two substantive motions. The first was pursuant to Rule 15(b)for leave to amend the pleadings to conform to the proof. Appellant sought to have the court evaluate and consider claims arising from appellee’s allegedly publishing another verbatim copy of P-1 under his name for a December 1986 symposium in the Republic of China (the Taiwan Publication), and the supposed proof that Freeman’s conduct constituted misrepresentation of origin under § 43(a) of the Lanham Act and under the common law. The second motion made under Rule 60(b) sought reconsideration by the trial court of its finding that the Taiwan Publication had not been proven to be connected with Dr. Freeman. Appellee’s request for attorney’s fees and for sanctions was denied. Appellant appeals from the dismissal of her copyright infringement suit, and appellee cross-appeals from the denial of attorney’s fees and sanctions against appellant.

DISCUSSION

On appeal appellant argues that the district court erred in (1) determining that appellee was a joint author of P-1 within the meaning of §§ 101 and 201 of the Copyright Act, (2) concluding that P-1 did not contain sufficient new matter to qualify for copyright protection as a derivative work under §§ 101 and 103(b), and (3) deciding that, even if appellee was not a joint author and the article therefore did qualify for protection as a derivative work, appellee’s use of P-1 constituted a fair use under § 107, and (4) denying appellant’s 15(b) and 60(b) motions.

I Joint Authorship

Before discussing whether P-1 was a joint work, we set forth the standard of review to be applied to the district court’s determination that P-1 was such a work. Ordinarily the clearly erroneous standard under Fed. R. Civ. P. 52(a) would govern. But, when a district court makes findings of fact predicated upon an incorrect legal standard such findings are not binding on an appellate court. See United States v. Parke, Davis & Co., 362 U.S. 29, 44, 4 L. Ed. 2d 505, 80 S. Ct. 503, (1960) (Rule 52 inapplicable where district court’s findings premised on erroneous view of legal standard).

Here the district court determined that the entire series of the parties’ works on the subject of radionuclide imaging–including the work alleged to have been infringed–constituted a single evolutionary joint work. It discussed the conceded joint authorship in the preexisting works. Without making any specific findings respecting P-1 itself, the court found that Dr. Freeman was a co-owner of P-1 and that P-1 was a joint work. The trial court made this surprising finding despite Dr. Freeman’s concession that he had no hand in P-1’s preparation. The finding was made based on the district court’s mistaken view that joint authorship of the prior existing works automatically makes the two joint authors co-owners of the derivative work. Such a ruling stands copyright law on its head. It flies in the face of the Copyright Act which affords protection to each work at the moment of its creation. Thus, § 101 provides for those works prepared over time that “the portion of it that has been fixed at any particular time constitutes the work as of that time, and where the work has been prepared in different versions, each version constitutes a separate work.” Of greater significance is that the trial court’s view would convert all derivative works based upon jointly authored works into joint works, regardless of whether there had been any joint labor on the subsequent version. If such were the law, it would eviscerate the independent copyright protection that attaches to a derivative work that is wholly independent of the protection afforded the preexisting work. See § 103(b). Hence, it was a plain error for the district court to rule, as a matter of law, that Dr. Freeman’s joint authorship of the prior works made him a joint author with appellant in the derivative work. The district court also made a finding of fact that Dr. Freeman was a joint author with Dr. Weissmann of P-1. Section 201(a) of the Act provides: “Copyright in a work protected under [the Copyright Act] vests initially in the author or co-authors of the work.” Section 101 defines a “joint work” as one “prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.” In a joint work each author “automatically acquires an undivided ownership in the entire work” including any portion of it. 1 M. Nimmer, Nimmer on Copyright § 6.03, at 6-6 (1988). Thus, an action for infringement between joint owners will not lie because an individual cannot infringe his own copyright. The only duty joint owners have with respect to their joint work is to account for profits from its use. See Donna v. Dodd, Mead & Co., 374 F. Supp. 429, 430 (S.D.N.Y. 1974). A review of the meaning of §§ 101 and 103(b) and of their legislative history reveals two basic criteria that must be satisfied before one is a joint author of a derivative work. First, each putative author must have “contributed” to the work. Second, each must intend to contribute to a joint work at the time his or her alleged contribution is made. Because § 103(b) extends independent protection to derivative works, an intent to contribute or an actual contribution to previous works does not serve as proof of ownership in the derivative work. See H.R. Rep. No. 1476, 94th Cong., 2d Sess. 103, 120, reprinted in 1976 U.S. Code Cong. & Admin. News 5659, 5736 (House Report). We consider these two criteria.

A. Contribution to Derivative Work The statute envisions that each author contribute to a joint work. “Under the [§ 101] definition a work would not be ‘joint’ unless its authors collaborated among themselves or unless each of the authors knew, at the time the work was being written, that his contribution would be integrated as an ‘inseparable’ or ‘interdependent’ part of a ‘unitary whole.‘” Supplementary Report of the Register of Copyrights on the General Revision of the U.S. Copyright Law: 1965 Revision Bill, 89th Cong., 1st Sess., Copyright Law Revision Part 6, at 65 (House Comm. Print 1965), reprinted in 1 Copyright Law Revision (1964-1965).

In enacting the definition of a joint work set forth in § 101, Congress endeavored to “make[] plain that copyright in a derivative work is independent of, and does not enlarge the scope of rights in, any pre-existing material incorporated in it. There [was] thus no need to spell this conclusion out in the definition of ‘joint work.’” House Report at 120. The legislative history clearly indicates that one cannot be deemed to be a joint author without actually collaborating in the work’s preparation. Critical therefore “is the intention, at the time the writing is done, that the parts be absorbed or combined into an integrated unit.” Id. That intention must be with respect to the work in which a copyright is claimed, not with respect to the prior works from which it is derived. See MCA, Inc. v. Wilson, 425 F. Supp. 443, 455 (S.D.N.Y. 1976) (owner of underlying work obtains no property rights in derivative work), aff’d, 677 F.2d 180 (2d Cir. 1981).

In the case at hand, because Dr. Freeman conceded that he had not participated in drafting the new matter included in P-1, it follows as a logical corollary, therefore, that he acquired no interest in or right to use P-1 beyond those rights which he had as co-author in the prior joint material incorporated into P-1. Even though one co-author has the right to revise a joint work in order to create an individual derivative work, the other co-author acquires no property rights in the newly created work prepared without his involvement. See Dynamic Solutions, Inc. v. Planning and Control, Inc., 646 F. Supp. 1329, 1338-39 (S.D.N.Y. 1986) (even sole author/owner of preexisting material contained in derivative work has no property right in new matter created for the derivative work added without his participation); see also Weinstein v. University of Illinois, 811 F.2d 1091, 1095 (7th Cir. 1987); House Report at 120; 1 Nimmer § 6.06[B], at 6-15.

B. Intent to Contribute to Derivative Work

The second point upon which inquiry is focused is Dr. Weissmann’s intent. The district court made no express finding on this critical issue. It simply stated in conclusory fashion that because the parties had intended P-1’s predecessors to be used jointly as a “stock piece” to accompany their review lectures, they had somehow impliedly agreed that all future works on the subject of radioactive analogs of IDA, including P-1, would also be a joint work.

In order for a work to be deemed a joint work, the parties must evince “the intention that their contributions be merged,” § 101 (emphasis added), “at the time the writing is done,” House Report at 120, not at some later date. See 1 Nimmer § 6.03, at 6-7. The law on this point is set forth in Edward B. Marks Music Corp. v. Jerry Vogel Music Co., 140 F.2d 266 (2d Cir. 1944) (L. Hand, J.). There it was observed that a finding of joint authorship requires that each author intend his or her contribution, at the time that it is created, to become part of a unitary work to which another will make or already has made a contribution. Or, as Judge Hand stated it, “when both plan an undivided whole . . ., their separate interests will be as inextricably involved, as are the threads out of which they have woven the seamless fabric of the work.” Id. at 267; see also Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., (“Melancholy Baby”), 161 F.2d 406, 409 (2d Cir. 1946), cert. denied, 331 U.S. 820, 91 L. Ed. 1837, 67 S. Ct. 1310 (1947).

Marks was a case in which one individual had written the lyrics for a song and another had written the music. Neither party knew the other, but both were aware that their individual efforts would not stand alone. In holding that the resulting song was a joint work, the critical fact was that both parties were equally aware that their individual authorship efforts would have to be combined in order to create the final integrated product–a commercially viable song. See Marks, 140 F.2d at 267. From this, the rule has evolved that an author who intends to create a joint work must clearly demonstrate his or her intent in that regard. Although such an intent may, as in Marks, be inferred from the circumstances surrounding the creation of the work, in the absence of such a showing, the work is presumed to be the product of an individual author and is the sole property of its creator. See, e.g., Gilliam v. American Broadcasting Cos., Inc., 538 F.2d 14, 22 (2d Cir. 1976) (Lumbard, J.) (reservation of rights by one party inconsistent with joint authorship and work not therefore joint); Picture Music, Inc. v. Bourne, Inc., 314 F. Supp. 640, 645 (S.D.N.Y. 1970) (declining to find joint authorship where a “common design to create a single work” not shown to exist), aff’d on other grounds, 457 F.2d 1213 (2d Cir.), cert. denied, 409 U.S. 997, 34 L. Ed. 2d 262, 93 S. Ct. 320 (1972); cf. Community for Creative Non-Violence v. Reid, 270 U.S. App. D.C. 26, 846 F.2d 1485, 1497 (D.C. Cir. 1988), cert. granted, 488 U.S. 940, 109 S. Ct. 362, 102 L. Ed. 2d 352 (1988).

In the present case, Drs. Weissmann and Freeman collaborated in the preparation and publication of the works from which P-1 was derived. Yet, there is no evidence that they intended their joint product to be forever indivisible like the finite whole of the completed single song in Marks. The facts point to a contrary conclusion. Scientific research is a quest for new discoveries and the preexisting joint works by definition were continually evolving. Dr. Weissmann believed she had a new and better approach and decided to author her research alone. Section 103(b) of the Copyright Act gives her that right when it extends independent protection to derivative works. The joint authorship of the underlying work does not confer any property right in the new work, save those rights which the co-author (here Dr. Freeman) of the previous works retains in the material used as part of the compilation of the derivative work. The district court opinion reveals a fundamental misunderstanding of these principles. This misconception is reflected in its discussion of Dr. Weissmann’s intent to merge her efforts with Dr. Freeman based only on P-1’s predecessors, and not on P-1 itself.

C. Appellant’s Intent to Create a Derivative Work

The remainder of discussion of joint authorship concerns the substantial and uncontroverted evidence that Dr. Weissmann intended P-1 to be her own individual work. As a preliminary matter, it is important to note that of the 88 articles, abstracts, and book chapters listed on her curriculum vitae, 71 credit Dr. Freeman as a co-author. Appellant’s having deviated from that pattern in submitting P-1 for publication as a chapter in the Radiological Society of North America’s book under the name “Heidi S. Weissmann” is persuasive proof of the fact that she intended this particular piece to represent her own individual authorship. Appellant’s use of her own by-line on P-1 constitutes prima facie proof that this work was not intended to be joint. Appellee failed to produce any evidence to rebut appellant’s showing. In fact, Dr. Freeman lectured at the same meeting at which P-1 was first presented, and made no objection to the omission of his name from it.

Again, had the trial court separately considered P-1, it would have concluded that appellant’s article was the only work with respect to which it was repeatedly conceded that appellee had played no role. Yet, the trial judge found that “plaintiff did almost all of the writing” for the works listed on her resume of which Freeman was a “co-author” and that she routinely “submitted drafts to Dr. Freeman before publication.” 684 F. Supp. at 1254. It also found that “she would always make sure to leave a copy of a manuscript on his desk if he was not in town or busy with other commitments; she did not always get comments back, but often she did.” Id. Hence, it is significant on the issue of appellant’s intent that P-1 was one of those few works that was not submitted for Dr. Freeman’s review and on which she did not receive his comments. These facts–found by the district court–strongly evidence appellant’s intent that P-1 be solely her own work.

The district court found that Freeman’s participation in the preparation of P-1 was “strikingly illustrated” by Weissmann’s inclusion in P-1 of a section entitled “False-Positive Studies for Acute Cholecystitis” which Dr. Freeman had independently composed for a 1984 Harvard review course. The incorporation of this material into P-1 is irrelevant to the question of whether or not the parties intended P-1 to be a joint work. Appellant correctly points out that the inclusion of the “False Positive” section is not proof of any intention on Dr. Freeman’s part to make a contribution to P-1 because, prior to 1985, he could not have formed an intent to contribute his efforts to her then nonexistent work.

In sum, the evidence presented at trial fully supports appellant’s contention that the work alleged to have been infringed was solely the product of her authorship efforts. Although her work derived from preexisting jointly authored material, appellee played no role in P-1’s creation. As a non-contributing party to P-1, Dr. Freeman’s intent regarding his contributions to the underlying preexisting work is not relevant to claimed joint authorship of P-1. The district court’s conclusion that P-1 was a joint work because the entire series of the parties’ articles on IDA, including P-1, was one evolutionary joint work disregards the copyright protection accorded derivative works, independent of the preexisting works under § 103(b). As a consequence of its plain error of law in this regard, the district court’s finding of fact that Freeman’s co-authorship of the preexisting works also made him a joint author of P-1 is clearly erroneous.

II Derivative Work

We now turn attention to whether P-1 qualifies for protection as a derivative work as that term is defined by the Copyright Act. To establish a claim of copyright infringement, plaintiff must prove ownership of a valid copyright and copying by the defendant. With Dr. Freeman’s copying admitted, the only question is whether Dr. Weissmann owned a valid copyright in a so-called derivative work. Although her certificate of registration “constitute[s] prima facie evidence of the validity of the copyright and of the facts stated in the certificate,” 17 U.S.C. § 410©, it is not conclusive on the issue of copyrightability; it merely creates a presumption of validity. See, e.g., Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 908 (2d Cir. 1980); Past Pluto Productions Corp. v. Dana, 627 F. Supp. 1435, 1440 (S.D.N.Y. 1986) (certificate shifts burden to defendant to disprove copyright’s validity). Section 101 of the Copyright Act defines a “derivative work” as one that is based on “preexisting works.” In addition, § 103(b) provides as follows

The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. The copyright in such a work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material.

Section 101 of the statute further defines a derivative work as “[a] work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship… .” Thus, it is clear that “the manner of expression, the author’s analysis or interpretation of events, the way he structures his material and marshals facts, his choice of words, and the emphasis he gives to particular developments” are protected under the copyright laws. Wainwright Securities, Inc. v. Wall Street Transcript Corp., 558 F.2d 91, 95-96 (2d Cir. 1977), cert. denied, 434 U.S. 1014, 54 L. Ed. 2d 759, 98 S. Ct. 730 (1978).

The principle of derivative work protection is subject to two important limitations, both of which were purportedly recognized by the district court. To support a copyright, a derivative work must be more than trivial, and the protection afforded a derivative work must reflect the degree to which the derivative work relies on preexisting material, without diminishing the scope of the latter’s copyright protection. Durham Indus., 630 F.2d at 909. This rule is premised on the notion that “‘the one pervading element prerequisite to copyright protection regardless of the form of work’ is the requirement of originality–that the work be the original product of the claimant.” L. Batlin & Son v. Snyder, 536 F.2d 486, 489-90 (2d Cir.) (en banc) (quoting 1 Nimmer § 10, at 32 (1975)), cert. denied, 429 U.S. 857, 50 L. Ed. 2d 135, 97 S. Ct. 156 (1976). Originality is and always has been rightly prized. Dostoevsky, for example, insisted that the measure of a person’s worth in pre-Revolutionary Russia did not depend so much on money or position, as it did on one’s originality. F. Dostoevsky, The Idiot, Part I (Garrett Trans. 1958). Mill wrote that “nothing was ever yet done which someone was not the first to do, and … all good things which exist are the fruits of originality… .” J.S. Mill, On Liberty 271 (Harv. Classics, Eliot ed. 1909).

In the law of copyright only an unmistakable dash of originality need be demonstrated, high standards of uniqueness in creativity are dispensed with. In deciding whether the originality of the matter added in P-1 is sufficient to qualify for protection as a derivative work, the standard enunciated in Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir. 1951) (Frank, J.), remains the law in this Circuit: “All that is needed to satisfy both the Constitution and the statute is that the ‘author’ contributed something more than a ‘merely trivial’ variation, something recognizably ‘his own’” Id. at 102-03. The originality requirement for a revised version is a “minimal” or “modest” one. See, e.g., Eden Toys, Inc. v. Florelee Undergarment Co., 697 F.2d 27, 35 (2nd Cir. 1982); Durham Indus., 630 F.2d at 910; Puddu v. Buonamici Statuary, Inc., 450 F.2d 401, 402 (2d Cir. 1971); Millworth Converting Corp. v. Slifka, 276 F.2d 443, 445 (2d Cir. 1960).

The district court here concluded that P-1 and its predecessors had evolved over an extended period of time and that Weissmann’s additions were minuscule, demonstrating little originality. 684 F. Supp. at 1261. Although recognizing that the selection and arrangement of data may merit copyright protection, see Eckes v. Card Prices Update, 736 F.2d 859, 863 (2d Cir. 1984), the trial judge believed that “the update was done as part of the evolution of the stock piece” and that appellant’s modifications of the preexisting joint works did not warrant copyright protection. 684 F. Supp. at 1261.

It was formerly our rule that where, as here, the originality of a work could be determined entirely by reference to documentary evidence, we were in as good a position as the district court to evaluate originality. See Eden Toys, 697 F.2d at 34 n. 6 and 35 (2d Cir. 1982); Taylor v. Lombard, 606 F.2d 371, 372 (2d Cir. 1979); Jack Kahn Music Co. v. Baldwin Piano and Organ Co., 604 F.2d 755, 758 (2d Cir. 1979). But see Apex Oil v. Vanguard Oil & Service Co., 760 F.2d 417, 424 (2d Cir. 1985) (Oakes, J. concurring) (suggesting that “appellate courts must not exercise de novo review over findings … based … on documents or objective evidence”). In 1985 Rule 52(a) of Fed. R. Civ. P. was amended so that findings of fact based upon documentary–along with oral–evidence are not to be set aside unless clearly erroneous.

In our view the district court implausibly overlooked the fact that appellant’s 1985 selection of subject matter and content drawn from prior works and their rearrangement in P-1 is sufficiently the product of original authorship to warrant copyright protection. It failed to give detailed consideration to the new matter that Weissmann added to the parties’ prior works in her authorship of P-1. Its main discussion of P-1’s content is a passing reference to the addition of “only” four new sources from the relevant scientific literature. Although the credibility of the parties as witnesses was fully discussed, the relevance of such an inquiry is problematic when the evidence upon which the derivative work determination must be based is solely documentary. Credibility might have been relevant, for example, had the question of who actually authored the new material been contested. But it is scarcely pertinent to determining whether the newly-added matter satisfies the statutory requirements for protectability. Research has not revealed a single case in which credibility has been deemed significant–let alone dispositive–on the question of whether there is a sufficient level of originality in a given work to render it copyrightable. While the district court’s findings based on the credibility of witnesses is entitled to deference, the trial judge cannot insulate his findings on originality from appellate review by calling them credibility determinations. Anderson v. City of Bessemer, 470 U.S. 564, 575, 84 L. Ed. 2d 518, 105 S. Ct. 1504, (1985).

Our examination of the relevant documents reveals that Weissmann’s additions and modifications in P-1 extend well beyond the mere addition of “four sources.” A thorough review of P-1 and of the works from which it is derived demonstrates that Dr. Weissmann added the following new elements to the existing prior joint work: (1) a selection and arrangement of photo illustrations and associated captions; (2) references to recent reports in the pertinent literature; (3) selection, condensation, and description of additional source material; (4) several new textual additions; (5) substantial rearrangement of the manner and order of presentation of material contained in the parties’ prior joint works; and (6) the addition of a section on “congenital disorders,” a revised treatment of “chronic cholecystitis,” and the incorporation of Dr. Freeman’s “false positive” studies.

The district court found that many of the foregoing additions and revisions repeated verbatim portions of prior works and, from that finding, concluded that P-1 was neither new nor copyrightable. This finding wholly ignores the statutory scheme that expressly protects the selection of subject matter and content from underlying works, as well as the rearrangement of preexisting material taken from those works. See 17 U.S.C. § 101 (defining derivative work as an “abridgment, condensation or any other form in which a work may be recast, transformed, or adapted”). Further, a comparison of the parties’ prior works–including P-1’s most recent predecessor–at once demonstrates numerous differences, and highlights the fact that P-1 gave IDA imaging new and original treatment. Moreover, Dr. Freeman’s copying and distributing P-1 as his own work is further evidence of the non-triviality of Dr. Weissmann’s work, since copying without regard to a plaintiff’s rights is probative on the issue of the originality of a work. See Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 252, 47 L. Ed. 460, 23 S. Ct. 298, (1903) (Holmes, J.) (that works have worth is sufficiently shown by desire to copy them “without regard to the plaintiff’s rights”).

We conclude therefore that the district court’s holding that Weissmann could not acquire a copyright in a derivative work based upon a jointly authored work was an error of law that disregarded the provisions of § 103(b) and the protection it extends to derivative works. Moreover, Dr. Freeman failed to rebut the prima facie showing of copyrightability appellant obtained by her certificate of copyright registration. As a consequence, we hold that Dr. Weissmann’s additions and modifications to the preexisting joint work satisfy the modest requirements set forth in § 103(b) and in the relevant case law sufficiently to make P-1 entitled to copyright protection as a derivative work. The district court’s findings–upon which it reached a contrary legal conclusion–were clearly erroneous because they have left us, after a thorough review of all the evidence, with a firm conviction that the district court was mistaken. See United States v. United States Gypsum Co., 333 U.S. 364, 395, 92 L. Ed. 746, 68 S. Ct. 525, (1948).

CONCLUSION

For the reasons stated, we hold that P-1 was an individually-authored, copyrightable, derivative work created by appellant and that Dr. Freeman’s use cannot be said to be a fair use of it. Accordingly, we reverse the judgment of the district court and remand the case to it with directions that judgment be entered in favor of appellant Weissmann. The judgment otherwise appealed from is affirmed.

REVERSED IN PART AND AFFIRMED IN PART.

Concur by: PIERCE (In Part)

Concur PIERCE, Circuit Judge, concurring: I join in Parts II-V of the court’s opinion. I join only in the result in Part I.

As to Part I, I agree that we must reverse and remand because Dr. Freeman failed to rebut appellant’s claim (evidenced by her registration of P-1 as a derivative work) that she did not intend the new material to be “merged” with the prior joint work. See generally 1 M. Nimmer, Nimmer on Copyright § 6.03 (1988). Appellant’s certificate of registration served as “prima facie evidence of the validity of the copyright and of the facts stated in the certificate.” 17 U.S.C. § 410© (1982). For Dr. Freeman to claim that his use was not an infringement, but rather that the work was “joint,” was a defense much like any other under the Copyright Act. See 3 M. Nimmer, supra, § 13.04. Therefore, it was incumbent upon Dr. Freeman to rebut appellant’s prima facie evidence that the work (P-1) was derivative, not joint. Appellee failed to meet his burden, however, for he failed to present sufficient evidence to demonstrate appellant’s intent to create a joint work.

The district court appears to have applied the opposite presumption. Rather than focusing on the appellant’s intent at the time of creating the derivative work, the court dwelt primarily on the parties’ long-standing and close professional relationship. From that, it seems to have presumed that P-1–a by-product of that professional collaboration–was a “joint” work. That presumption, however, in effect placed the burden on the putative author to show that the work was derivative, rather than on the putative infringer to show that the work was joint. The district court’s approach was therefore at odds with the statutory scheme of burdens of proof, and must be reversed as a matter of law.

I differ, though, with Judge Cardamone’s reasoning in Part I. The fact that Dr. Freeman was not the author of any of the new material that went into P-1 did not, of itself, preclude that work from being “joint.” Of course, as Judge Cardamone notes, one cannot be found to be a joint author of a work without actually having contributed to that work. See 1 M. Nimmer, supra, § 6.07. However, that does not mean that an author, to be a “joint” author, must have contributed to each incremental addition to the work. Thus, in this case, had Dr. Weissmann’s intent been otherwise–had she intended the work to be joint–Dr. Freeman could have been deemed a joint author simply by virtue of his contributions to the earlier work, into which Dr. Weissmann’s material would have been “merged.” See, e.g., Edward B. Marks Music Corp. v. Jerry Vogel Music Co., 140 F.2d 266, 267 (2d Cir. 1944); 1 M. Nimmer, supra, § 6.03, at 6-7.

Further, I do not agree that the earlier incorporation of Dr. Freeman’s “False Positives” study into the evolving syllabus was irrelevant. Though not dispositive, the parties’ past willingness to have their works absorbed into the syllabus was relevant to the question of appellant’s intent when she reshaped the syllabus into P-1.

On balance, however, I agree with the court that the evidence relied upon by appellee was not sufficient to show that appellant intended to create a joint work. Therefore, I join the conclusion of the court, and would reverse and remand, with judgment to be entered for appellant.

Discussion
  1. Open source projects are commonly thought of as a chain of derivative works, whereby every commit is either a copy or derivative work of the previous iteration of the project.62 If a software developer is a joint author of Version 1.2 of an open source project, does that developer remain a joint author of Version 1.3 if that developer neither contributed any of the changes distinguishing versions 1.2 and 1.3 and was not the project maintainer who accepted the changes?

  2. How dispositive is the intent of the authors in determining whether or not a work is jointly authored? What is the minimal amount of evidence required to establish the authors’ intent with respect to whether the works should be considered jointly authored? What steps can be taken to ensure that a work is jointly authored? To ensure that a work is not jointly authored?

  3. What are the risks that joint authorship presents to copyright holders? What are the benefits that it confers? Do open source project maintainers benefit from a joint authorship model? Do contributors benefit under a joint authorship model?

Gaylord v. United States, 595 F.3d 1364 (Fed Cir. 2010)

Our final case on the topic of joint authors concerns the authorship of a sculptural work called “The Column” crafted by the sculptor Frank Gaylord. When the work was used as the basis for a United States stamp, Gaylord protested that he had not permitted this derivative work. The government argued that it was a joint author of the original sculptural work and therefore did not require Gaylord’s permission in order to publish the derivative stamp.

This case has many similarities to Weissmann, but presents an example of the Federal Circuit deciding a question of joint authorship, and illustrates the consequences when joint authorship in the original work is not found.

Opinion

MOORE, Circuit Judge.

Mr. Frank Gaylord appeals the decision of the United States Court of Federal Claims that a stamp issued by the United States Postal Service made fair use of a copyrighted work, specifically, soldier sculptures in formation constituting part of the Korean War Veterans Memorial (Memorial). The court determined that Mr. Gaylord was the sole author of the soldier sculptures and that his sculptures were not exempt from copyright protection under the Architectural Works Copyright Protection Act (AWCPA). Because the court erred when it determined that the stamp made fair use of Mr. Gaylord’s work, but it correctly determined that the government was not a joint author and that the AWCPA did not bar an infringement suit, we affirm-in-part, reverse-in-part, and remand for a determination of damages.

BACKGROUND

This case arises from the Postal Service’s decision to issue a 37-cent stamp depicting a portion of the Memorial. The path from the concept of the Memorial to the creation of the stamp spans more than 15 years.

In 1986, Congress enacted legislation to erect a memorial in Washington, D.C. to honor veterans of the Korean War. Authorization of Memorial, Pub. L. No. 99-572, § 1, 100 Stat. 3226 (1986). The legislation authorized the American Battle Monuments Commission (Commission) to establish the Memorial, and the Commission sponsored a contest to select the designer of the Memorial. A team from the Pennsylvania State University (the Penn State Team) won the contest with a proposal to create 38 larger-than-life granite soldiers in formation. According to the Penn State Team, “[f]rom a distance, one [would see] the Memorial as an elusive, dream-like presence of ghostly figures moving across a remote landscape.” Although its original concept undoubtedly influenced the design of the Memorial, the Penn State Team eventually withdrew from the project.63

The Army Corps of Engineers selected Cooper-Lecky Architects, P.C. (Cooper-Lecky) as the prime contractor for the creation, construction, and installation of the Memorial. Cooper-Lecky sponsored a competition to select the sculptor for the Memorial. Mr. Gaylord, a nationally recognized sculptor, won the contest.

In 1990, Mr. Gaylord began work on the project. Although the Penn State Team’s proposal called for 38 granite soldiers, “the final design featured 19 stainless steel statues representing a platoon of foot soldiers in formation,” referred to as The Column. Gaylord, 85 Fed. Cl. at 63. Mr. Gaylord prepared successively larger models of the soldiers, transforming them along the way in response to critiques and suggestions by Cooper-Lecky, members of the Korean War Veterans Memorial Advisory Board (VAB), and the Commission on Fine Arts (CFA). Once Mr. Gaylord completed models for the soldiers, they were cast in stainless steel and installed at the site of the Memorial on the National Mall in Washington, D.C. At the suggestion of a member of the VAB, Mr. Gaylord staggered the statues, thereby creating the composition of The Column. Cooper-Lecky, the VAB, and the CFA all participated in incorporating The Column into the Memorial, which also includes landscaping, a mural, and granite plates representing the reflection of rice paddies at the soldiers’ feet. A picture of The Column–taken on a sunny day–is below.

Mr. Gaylord received five copyright registrations relating to the soldier sculptures from 1990 to 1995. Each certificate listed Mr. Gaylord as the sole author. The registrations include pictures of the clay models for the sculptures as they evolved over the years, and eventually, the sculptures themselves. For example, in his November 11, 1993 registration, he described the work as clay “statuettes – fully approved – 19 soldiers – National Korean War Veterans Memorial.” His August 12, 1994 registration concerned “19 7’-6” tall clay soldiers to be cast in stainless steel for the National Korean War Veterans Memorial on the mall in Washington, D.C.” Shortly after the statues were installed, on May 1, 1995, Mr. Gaylord filed a certificate of copyright registration for the soldiers as they appeared before and after casting. This certificate included photographs of the soldiers as installed on the National Mall.

In 1995, shortly after the Memorial was dedicated, a photographer named John Alli took a photograph of the Memorial as a retirement gift for his father, a veteran of the Korean War. Mr. Alli visited the Memorial on five or six occasions, taking photographs at various times of year and day. One such visit occurred in January 1996 just after a snowstorm. Over the course of about two hours on that cold winter morning, Mr. Alli took about 100 photographs of the Memorial, including photographs of individual soldiers, from various angles using different exposures and lighting conditions. Mr. Alli selected one of his photographs for his father’s retirement gift. The photograph, titled “Real Life,” is reproduced below. No one questions that Mr. Alli is entitled to his own copyright protection in his photograph as a derivative work.

Mr. Alli decided to sell prints of the photograph. He therefore sought permission from the copyright owner of the underlying work, eventually locating Mr. Lecky of Cooper-Lecky, who held himself out as the “outright” owner of the copyright. Mr. Alli agreed to pay a 10% royalty on sales of prints of his photographs to a licensing entity established by Mr. Lecky. Mr. Lecky did not notify Mr. Gaylord about the agreement with Mr. Alli.64

In 2002, the Postal Service decided to issue a 37-cent stamp commemorating the 50th anniversary of the armistice of the Korean War. The Postal Service selected Mr. Alli’s photograph for the stamp and paid him $ 1500 for its use. Mr. Alli told the Postal Service that it would need the permission of the owner of the copyright of the underlying work and referred the Postal Service to Mr. Lecky.

The Postal Service issued the stamp, titled “Korean War Veterans Memorial.” The stamp features Mr. Alli’s photo and depicts 14 of the 19 soldier sculptures (photos redacted).

The Postal Service produced approximately 86.8 million stamps before retiring the stamp on March 31, 2005. The Postal Service acknowledged that it received over $ 17 million from the sale of nearly 48 million stamps. It was estimated that in 2003, the Postal Service generated $ 5.4 million from the sales of stamps to collectors who did not use the stamps to send mail. In addition, the Postal Service sold retail goods such as commemorative panels and framed art featuring images of the stamp. It did not seek or obtain Mr. Gaylord’s permission to use the sculptures in the stamp or in any related retail goods.

Mr. Gaylord sued the government in the Court of Federal Claims on July 25, 2006, alleging infringement of his copyright. On June 16-20, 2008, the Court of Federal Claims conducted a trial, at which the government argued that the stamp made fair use of the work, excepting it from copyright liability. The government further argued that it had rights to the work as a joint author, which would provide it an unlimited license in the work. Finally, the government argued that the stamp fell under the exclusion from liability for copyright infringement for architectural works under the AWCPA. The Court of Federal Claims determined that Mr. Gaylord was the sole copyright owner of The Column and that The Column did not qualify as an architectural work under the AWCPA. Gaylord v. United States, 85 Fed. Cl. 59, 67, 72 (2008). However, the Court of Federal Claims also determined that the government was not liable for copyright infringement because the government’s use of The Column was fair use. Id. at 71. Mr. Gaylord appeals the court’s decision as to fair use, and the government challenges the court’s determinations of ownership and the inapplicability of the AWCPA. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(3).

[…]

II. Joint Authorship

The government asserts that it has rights to The Column through the contributions of Cooper-Lecky, the VAB, and/or the CFA (collectively, the government entities). Joint authors each possess an independent right to use or license the copyrighted work, subject only to a duty to account to the other coauthor(s) for any profits earned on the work. Cmty. for Creative Non-Violence v. Reid, 846 F.2d 1485, 1498, 270 U.S. App. D.C. 26 (D.C. Cir. 1988) (CCNV), aff’d, 490 U.S. 730, 109 S. Ct. 2166, 104 L. Ed. 2d 811 (1989). Cooper-Lecky granted the government a license to use any work that Cooper-Lecky might hold copyright in, and the VAB and CFA are government entities. Thus, if Cooper-Lecky, the VAB, or the CFA are joint authors with Mr. Gaylord, the government would have a right to use The Column free from Mr. Gaylord’s claims of infringement, subject to its duty to account to Mr. Gaylord.

On appeal, the government alleges that the trial court erred by misreading the certificates of registration, by failing to treat the presumption of validity as rebuttable, and by concluding that The Column was not a joint work. We conclude that the Court of Federal Claims treatment on each issue was proper.

The Court of Federal Claims first noted that Mr. Gaylord was entitled to a prima facie presumption of the validity of his copyright registrations. Gaylord, 85 Fed. Cl. at 66; see also 17 U.S.C. § 410© (“In any judicial proceedings the certificate of a registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate. The evidentiary weight to be accorded the certificate of a registration made thereafter shall be within the discretion of the court.“). On appeal, the government challenges this presumption, arguing that statements of Mr. Gaylord’s sole authorship are rendered facially ambiguous because certain of his copyright registration certificates indicate that the underlying work was “fully approved” or “[f]ully approved by all federal commissions.” These notations appear in the section titled “Nature of Authorship,” describing the nature of the work, rather than in the space provided for the “Name of Author.” The statements of approval do not undermine Mr. Gaylord’s assertions on his registration forms that he is the sole author of The Column. Approval–much like comment and criticism–does not amount to authorship. See PODS, Inc. v. Porta Stor, Inc., 484 F.3d 1359, 1370 (Fed. Cir. 2007).

The government next argues that the Court of Federal Claims erred by failing to treat the presumption of validity as rebuttable. It asserts that “Gaylord bears the burden of establishing sole ownership of ‘The Column’” because “the court should have shifted the burden back to Gaylord in light of the government’s evidence.” We disagree. The Court of Federal Claims thoroughly discussed the government’s evidence and concluded that “Defendant’s proffered contributions of the various committees to ‘The Column’ are not evidence of joint ownership, but rather of suggestion and criticism.” Gaylord, 85 Fed. Cl. at 67. The Court of Federal Claims committed no error in its treatment of the burdens or in the presumption of validity–the court treated the presumption as unrebutted, not unrebuttable.

Finally, the government argues that the Court of Federal Claims erred in not concluding that the copyright at issue was a joint work. We see no clear error in the Court of Federal Claims’ finding that The Column is not a joint work. “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. Authorship is a question of fact. S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1086 (9th Cir. 1989); see also Medforms, Inc. v. Healthcare Mgmt. Solutions, Inc., 290 F.3d 98, 110 (2d Cir. 2002).

Joint authorship requires “an original work of authorship” from each author. CCNV, 846 F.2d at 1495. “To be an author, one must supply more than mere direction or ideas: one must ‘translate [] an idea into a fixed, tangible expression entitled to copyright protection.‘” S.O.S., 886 F.2d at 1087 (quoting CCNV, 490 U.S. at 737); see also PODS, 484 F.3d at 1370 (“Mere participation in, contributions to, and review of the work of [another person] would not necessarily create a joint work.“). As a general rule, each joint author must make an independently copyrightable contribution to the work.65 See Aalmuhammed v. Lee, 202 F.3d 1227, 1234 (9th Cir. 1999); Thomson v. Larson, 147 F.3d 195, 200 (2d Cir. 1998); Erickson v. Trinity Theatre, Inc., 13 F.3d 1061, 1071 (7th Cir. 1994); M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1493 (11th Cir. 1990). Thus, “[a] co-authorship claimant bears the burden of establishing that each of the putative co-authors (1) made independently copyrightable contributions to the work; and (2) fully intended to be co-authors.” Thomson, 147 F.3d at 200.

The government argues that the contributions of the various government entities merged with Mr. Gaylord’s contributions to create a joint work, analogizing to CCNV, 846 F.2d at 1485. In CCNV, the Community for Creative Non-Violence (CCNV) decided to sponsor a display to “dramatize the plight of the homeless.” CCNV, 846 F.2d at 1487. Members of the CCNV conceived of a detailed plan for the display, involving a modern Nativity scene depicting two homeless adults and one infant huddling for warmth over a steam grate placed atop a pedestal from which simulated steam would flow through the grate. Id. The CCNV also decided that the display would include a shopping cart containing the belongings of the homeless family. Id. at 1497 n.16. A sculptor, James Earl Reid, sculpted the three human figures and the shopping cart, making changes along the way to accommodate CCNV’s requests. Id. at 1487-88. A cabinetmaker created the steam grate pedestal. Id. at 1488. The two portions were joined and the entire work was placed on display. Id. A dispute later arose over the copyright in the work, and CCNV sought a declaration of copyright ownership. Id. The primary issue in the case was whether the display was a work made for hire, which would have given CCNV rights to the display. The United States Court of Appeals for the District of Columbia Circuit concluded that the display was not a work made for hire because the statutory requirements set forth in 17 U.S.C. § 101(2)were not met, but remanded for the lower court to determine whether CCNV might have rights as a joint author. Id. at 1494-98. It noted that CCNV contributed the steam grate pedestal, created the initial concept of the display, and provided ongoing direction of the realization of the display. Id. at 1497. It also noted “various indicia of the parties’ intent, from the outset, to merge their contributions into a unitary whole, and not to construct and separately preserve discrete parts as independent works.” Id.

The Supreme Court granted certiorari and determined that the display was not a work made for hire, but noted that “CCNV nevertheless may be a joint author of the sculpture if, on remand, the District Court determines that CCNV and Reid prepared the work ‘with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.‘” Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730, 753, 109 S. Ct. 2166, 104 L. Ed. 2d 811 (1989). The case settled without a decision on the merits of the joint authorship issue. See Cmty. for Creative Non-Violence v. Reid, Civ. No. 86-1507, 1991 U.S. Dist. LEXIS 21020, 1991 WL 415523 (D.D.C. Jan. 7, 1991).

The government asserts that the facts of CCNV are “nearly identical” to this case. As an analogy to the steam grate pedestal that CCNV contributed, the government points to the physical contributions of Cooper-Lecky: a reflecting pool, landscaping around The Column, and irregular polished granite bands representing rice paddies. Notably, none of these features appear in the stamp. Even more notably, none of these features appear in the copyright that Mr. Gaylord obtained. Cooper-Lecky’s physical contributions relate to the Memorial as a whole, not The Column. Mr. Gaylord did not copyright the Memorial. His copyright does not include the reflecting pool, the landscaping, or the rice paddies. The copyright over which we are deciding ownership is the copyright of The Column. None of these contributions by Cooper-Lecky establish entitlement to joint authorship over The Column–they are completely independent from the copyrighted matter in this case.

Focusing on The Column, the government lists several contributions by Cooper-Lecky, the VAB, and the CFA as evidence of joint authorship. The VAB created the story of each soldier, including the ethnicity, military service, and equipment representative of soldiers in the Korean War. At one point, the VAB told Mr. Gaylord to change the ethnicity of one soldier from Italian to Hispanic. The VAB also told Mr. Gaylord to sculpt certain soldiers clean shaven and others with buckled chin-straps. Although the government argues that Mr. Gaylord, Mr. Nelson, and Cooper-Lecky all decided that the soldiers would wear ponchos, we see no clear error in the Court of Federal Claims’ finding that “the poncho concept was based on models produced by Mr. Gaylord.” Gaylord, 85 Fed. Cl. at 67. According to the government, Cooper-Lecky instructed Mr. Gaylord to reduce the amount of wind in the ponchos and to reduce the age of the soldiers by removing wrinkles from their faces. Cooper-Lecky and the CFA had Mr. Gaylord change the position of the first soldier in The Column from a celebratory squatting pose to standing. Finally, a member of the VAB suggested that Mr. Gaylord stagger the placement of the statues in formation. The government asserted that Cooper-Lecky, the VAB, and the CFA “each collaborated to modify the entire compositional structure and setting of ‘The Column.’” Id. at 66. The Court of Federal Claims found, however, that “Mr. Gaylord created the composition of ‘The Column,’ using Colonel Bill Weber’s [a member of the VAB] suggestion to stagger the statues.” Id. The Court of Federal Claims addressed the contributions of Cooper-Lecky, the VAB, and the CFA and concluded that they did not constitute evidence of joint authorship “but rather of suggestion and criticism.” Id. at 67. The court explained that “Mr. Gaylord was able to translate the competing and conflicting ideas, comments, and suggestions of multiple committee members into a new set of figures.” Id. The Court of Federal Claims’ conclusions regarding the contributions by Mr. Gaylord and the government entities are not clearly erroneous. While the government entities provided some direction and ideas, this effort did not rise to the level necessary for a joint work.

If one commissioned a work for a cowboy riding a horse, that contribution would not constitute copyrightable expression. See 17 U.S. C. § 102(b) there is no evidence that Mr. Gaylord created(no copyright protection for ideas). If one later instructed the artist to depict the cowboy as weathered, wearing a cowboy hat, and riding slowly in calm wind, that would not rise to the level of copyrightable expression. See S.O.S., 886 F.2d at 1087 (“A person who merely describes to an author what the commissioned work should do or look like is not a joint author for purposes of the Copyright Act.“). The contributions to The Column by Cooper-Lecky, the VAB, and the CFA amount to no more here. The VAB may have suggested ethnicities and equipment to make the soldiers appear representative of those in the Korean War, but it was Mr. Gaylord who transformed those ideas into copyrightable expression. Cooper-Lecky may have suggested that Mr. Gaylord depict more youthful soldiers with less wind in their ponchos, but those ideas are not copyrightable. The government makes much of Cooper-Lecky’s role in changing the stance of the first soldier. But as the Court of Federal Claims found, upon receiving suggestions and criticism from Cooper-Lecky and members of the committees, Mr. Gaylord transformed the statues himself. The Court of Federal Claims did not apply a “sole laborer” test as the government alleges, rather, it found that the contributions made by Cooper-Lecky, the VAB, and the CFA to The Column do not amount to independently copyrightable expression. We see no clear error in the Court of Federal Claims’ conclusion that Mr. Gaylord is the sole author and sole owner of the copyright in The Column.

Moreover, the Court of Federal Claims determined that the parties never intended to create a joint work in The Column, as distinct from the Memorial. Gaylord, 85 Fed. Cl. at 67. Section 101 requires that 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. We see no clear error in the Court of Federal Claims’ determination that Cooper-Lecky and Mr. Gaylord did not intend The Column to be a joint work. As the Court of Federal Claims indicates, “The history of ‘The Column’ project thus shows an open and contentious dispute regarding copyright ownership, ultimately with [Cooper-Lecky’s] concession that Mr. Gaylord was the sole owner of the copyright.” Gaylord, 85 Fed. Cl. at 67. In 1994, before the soldier statues were cast in their final form, Cooper-Lecky and Mr. Gaylord agreed that “[t]he copyright for this work will be held by the Artist [Mr. Gaylord].” The agreement goes on to specify that the terms of the use of the copyright are articulated under a separate contract. The 1994 agreement was signed by Mr. Lecky of Cooper-Lecky on January 27, 1994, and by Mr. Gaylord on February 7, 1994. According to the government, the final full-sized soldiers were created in August 1994.

The separate agreement referenced in the 1994 contract is a 1995 agreement in which Mr. Gaylord granted Cooper-Lecky royalty-bearing licensing rights in Mr. Gaylord’s copyrighted work. The agreement acknowledged the separate contributions of Cooper-Lecky and Mr. Gaylord to the Memorial, which the agreement characterized as a collective work. The 1995 agreement, like the 1994 agreement, recognizes that Mr. Gaylord “is the sole author of the soldier sculptures to become part of the overall Memorial.” The government asserts that the 1995 agreement cannot dispose of the authorship dispute because it arose after Mr. Gaylord created the final full-sized soldiers, and copyright ownership vests at the moment the work is fixed in any tangible form. Although it arose after the creation of the statues in their final form, the 1995 agreement reflects the understandings of Cooper-Lecky and Mr. Gaylord with respect to authorship of The Column and ownership of its copyright. The 1995 agreement crystallizes the intentions of the parties, which are manifest from the 1994 agreement and actions of the parties preceding the creation of The Column. We see no clear error in the Court of Federal Claims’ determination that the parties never intended The Column to be a joint work.

The dissent argues that the government escapes liability for copyright infringement either by virtue of a contract with Cooper-Lecky or 28 U.S.C. § 1498. These issues were raised sua sponte by the dissent–we received no argument or briefing on either issue. The government cannot escape liability under its DACA31-90-C-0057 contract because Mr. Gaylord is not a party to that contract. Moreover, neither section of DACA31-90-C-0057 cited by the dissent concerns works by Mr. Gaylord. Section I-28 concerns works to which Cooper-Lecky could assert or establish authorship. Section I-29 concerns works made for hire, and the government has not provided any evidence establishing that The Column was a work made for hire. See 17 U.S.C. §§ 101, 201. Nor can the government escape liability under 28 U.S.C. § 1498, because there is no evidence that Mr. Gaylord created The Column in the service of the United States or using government time, material, or facilities. We decline to engage in appellate fact-finding to cobble together an excuse for the government’s copyright infringement.

We conclude that the Court of Federal Claims did not clearly err in determining that authorship of The Column rested solely with Mr. Gaylord.

[***]

Discussion
  1. What do the United States Government in Gaylord and Aalmuhammed in Aalmuhammed have in common? What distinguishes their cases from one another? Which comes closer to demonstrating joint authorship?

  2. What consequences could the legal operation of joint authorship have on the maintenance of an open source project? What is the worst thing that could happen as a result of failing to be acknowledged as a joint author of a project that you largely authored? What is the worst thing that could happen as a result of acknowledging a person who creates a one character bug fix as a joint author of the project?

  3. If an open source project that originated with a sole entity is determined to be a work jointly authored by multiple entities, what is the harm suffered by the original entity? How could the latter entities exploit the work in a way that would be injurious to the original entity?

  4. How might the duty of accounting66 come into play in the context of a jointly-authored open source project? Can the joint author of an open source project use the entire project outside the terms of its license? If the joint author were to use the project under the terms of the license, would the duty of accounting automatically be satisfied?

Section 2 - Copyrightable Works: The Role of Collective Works in Open Source Projects

While Section 1 of this chapter focused on the nature of a copyright property interest, distinguishing individual copyright holders from joint authors, this section will address the different types of copyrightable works, and the role that this distinction plays in open source development. The primary focus will be on the specific type of work that open source projects are most commonly considered to be: a collective work.

To be a collective work, the work must be composed of pieces that constitute separate and independent works of authorship. At first blush, this requirement creates the impression that an open source project would only constitute a collective work when the project incorporates a free-standing library or piece of software as a component of the project. However, does this narrow interpretation of the requirement reconcile with copyright law? Might a work be able to constitute a separate, independent work of authorship without meeting the criteria that one would associate with a free-standing library or piece of software?

There are some scenarios in open source development that clearly point to the creation of a collective work. The primary example being the case where a pre-existing library is added, in its entirety, to an open source project. This action neatly fits the statutory definition of a collective work. But does any contribution to an open source project create a collective work? What are the rights held by the author of a component of a collective work?

TCA TV Corp. v. McCollum, 839 F.3d 168 (2nd Cir. 2016)

Our first case will examine the barriers that exist to alleging copyright infringement of a work that is merely an incorporated component of a larger work. In this case, the component work at issue is Abbot and Costello’s famous Who’s On First routine, a self-contained routine that featured as a component of various radio and television performances. When the routine was later exploited by a third party, who has standing to sue?

Opinion

Reena Raggi, Circuit Judge:

In this action for copyright infringement, plaintiffs, successors-in-interest to the estates of William “Bud” Abbott and Lou Costello, appeal from a judgment of dismissal entered in the United States District Court for the Southern District of New York (George B. Daniels, Jr., Judge) in favor of defendants, who include the producers of Hand to God and the play’s author, Robert Askins. See TCA Television Corp. v. McCollum, 151 F. Supp. 3d 419 (S.D.N.Y. 2015). Plaintiffs assert that the district court erred in concluding from the amended complaint that defendants’ use of a portion of the iconic Abbott and Costello comedy routine, Who’s on First?, in Act I of Hand to God was so transformative as to establish defendants’ fair use defense as a matter of law. See Fed. R. Civ. P. 12(b)(6). Defendants here not only defend the district court’s fair use determination but also argue that affirmance is warranted, in any event, by plaintiffs’ failure to plead a valid copyright interest. The district court rejected that argument. See TCA Television Corp. v. McCollum, 151 F. Supp. 3d at 430-31.67

For the reasons explained herein, we conclude that defendants’ verbatim incorporation of more than a minute of the Who’s on First? routine in their commercial production was not a fair use of the material. Nevertheless, we affirm dismissal because plaintiffs fail plausibly to allege a valid copyright interest.

I. Background

The following facts derive from plaintiffs’ amended complaint, incorporated exhibits, and documents susceptible to judicial notice. See Goel v. Bunge, Ltd., 820 F.3d 554, 559 (2d Cir. 2016)(acknowledging that, on motion to dismiss, courts may consider documents appended to or incorporated in complaint and matters of which judicial notice may be taken); Island Software & Comput. Serv., Inc. v. Microsoft Corp., 413 F.3d 257, 261 (2d Cir. 2005) (stating that court may take judicial notice of copyright registrations). For purposes of this appeal, we presume these facts to be true. See Anschutz Corp. v. Merrill Lynch & Co., 690 F.3d 98, 102 (2d Cir. 2012).

A. Abbott and Costello’s Who’s on First? Routine

Abbott and Costello were a popular mid-Twentieth Century comedy duo. One of their routines, commonly referred to as Who’s on First? (also, the “Routine”), has become a treasured piece of American entertainment history.68 The Routine’s humor derives from misunderstandings that arise when Abbott announces the roster of a baseball team filled with such oddly named players as “Who,” “What,” and “I Don’t Know.” A rapid-fire exchange reveals that “who’s on first” need not be a question. It can be a statement of fact, i.e., a player named “Who” is the first baseman. Later parts of the routine reveal, after similar comic misunderstandings, that a player named “What” is the second baseman, and one named “I Don’t Know” is the third baseman.

B. Agreements Pertaining to Rights in the Routine

The parties cite various contracts and copyright filings spanning more than 40 years as relevant to claimed rights in the Routine.

1) Abbott and Costello’s Agreements with UPC

a. The July 1940 Agreement

Abbott and Costello first performed Who’s on First? in the late 1930s, notably on a 1938 live radio broadcast of The Kate Smith Hour. The Routine was published for purposes of federal copyright law when Abbott and Costello performed a version of it in their first motion picture, One Night in the Tropics (”Tropics”).69

The team appeared in Tropics pursuant to a July 24, 1940 contract (the “July Agreement”) with Universal Pictures Company, Inc. (“UPC”). The July Agreement guaranteed Abbott and Costello a minimum of five weeks’ work at a pay rate of $3,500 per week. In turn, Abbott and Costello (the “Artists”) agreed to grant UPC (the “Producer”) certain rights and to furnish it with certain items. We reproduce the relevant text here, adding bracketed signals and highlighting to distinguish various provisions:

[1] The Artists expressly give and grant to the Producer the sole and exclusive right to photograph and/or otherwise reproduce any and all of their acts, poses, plays and appearances of any and all kinds during the term hereof, and [2] further agree [a] to furnish to the Producer, without charge to it, the material and routines heretofore used and now owned by the Artists for use by the Producer in the photoplay in which they appear hereunder and for which the Producer shall have the exclusive motion picture rights, and [b] to record their voices and all instrumental, musical and other sound effects produced by them, and [c] to reproduce and/or transmit the same, either separately or in conjunction with such acts, poses, plays and appearances as the Producer may desire, and further [3] give and grant to the Producer solely and exclusively all rights of every kind and character whatsoever in and to the same, or any of them, perpetually, including as well the perpetual right to use the names of the Artists and pictures or other reproductions of the Artists’ physical likenesses, and recordations and reproductions of the Artists’ voices, in connection with the advertising and exploitation thereof.

J.A. 168-69.

b. The November 1940 Agreement

On November 6, 1940, only days before Tropics’s public release, Abbott and Costello entered into a new multi-year/multi-picture agreement with UPC (the “November Agreement”).70 That contract terminated the July Agreement without prejudice to, among other things, UPC’s “ownership … of all rights heretofore acquired,” including those “in or to any … material furnished or supplied by the Artists.” Id. at 162. In the November Agreement, Abbott and Costello agreed “to furnish and make available to the Producer all literary and dramatic material and routines heretofore used by the Artists either on the radio or otherwise and now owned by the Artists,” and acknowledged that “the Producer shall have the right to use said material and routines to such extent as the Producer may desire in connection with any photoplay in which the Artists render their services hereunder and in connection with the advertising and exploitation of such photoplay.” Id. at 129. Abbott and Costello agreed that they would “not use or license, authorize or permit the use of any of the material and/or routines” so referenced “in connection with motion pictures” by others than UPC for specified times. Id. Nevertheless, they reserved the right to use materials and routines created by them (without the assistance of UPC writers) “on the radio and in personal appearances.” Id. at 129-30.

2) UPC Registers a Copyright for Tropics

In November 1940, UPC registered a copyright for Tropics with the United States Copyright Office, which it renewed in December 1967. See id. at 36, 39-40.

3) UPC Uses an Expanded Version of the Routine in The Naughty Nineties and Registers a Copyright for that Movie

In 1945, Abbott and Costello performed an expanded version of Who’s on First? in another movie for UPC, The Naughty Nineties. That version maintains the core of the Routine—with “Who” on first base, “What” on second, and “I Don’t Know” on third—but several new players take the field: left fielder “Why,” center fielder “Because,” pitcher “Tomorrow,” catcher “Today,” and shortstop “I Don’t Care.”

In June 1945, UPC registered a copyright for The Naughty Nineties with the United States Copyright Office, which it renewed in 1972. See id. at 37, 41-42; Am. Compl. ¶ 45.71

4) The 1944 Copyright Registration for “Abbott and Costello Baseball Routine”

In April 1944, a work entitled “Abbott and Costello Baseball Routine” was registered with the Copyright Office “in the name of Bud Abbott and Lou Costello, c/o Writers War Board.” J.A. 114. The certificate indicates that this “Baseball Routine” was published on “March 13, 1944” in “’Soldier Shows,’ No. 19.” Id.72 The record suggests that this registration was not renewed, prompting the Copyright Office to conclude that the work had entered the public domain in 1972, and, on that ground, to reject a 1984 application for a derivative work registration filed by the children of Abbott and Costello based on the 1944 registration.

5) The 1984 Quitclaim Agreement

Plaintiffs do not rely on the 1944 registration to support their copyright claim here. Rather, they claim to have succeeded to UPC’s copyright interests in the Routine as performed in Tropics and The Naughty Nineties based on a quitclaim agreement dated March 12, 1984 (the “Quitclaim”).

In the Quitclaim, which was subsequently recorded with the Copyright Office, UPC’s successor-in-interest, Universal Pictures (“Universal”), granted Abbott & Costello Enterprises (“A & C”), a partnership formed by the heirs of Abbott and Costello,73 “any and all” of Universal’s rights, title, and interest in the Routine. Id. at 45. Universal stated that it did so relying upon A & C’s representation that it was “a partnership composed of the successors in interest to the late Bud Abbott and Lou Costello” and, therefore, “the owner of copyright in and to the Routine.” Id. at 46.

A & C dissolved in 1992, with 50% of its assets transferred to TCA Television Corporation, a California entity owned by Lou Costello’s heirs, and the other 50% divided evenly between Bud Abbott’s heirs, Vickie Abbott Wheeler and Bud Abbott, Jr. Wheeler would later transfer her 25% interest to a California partnership, Hi Neighbor, and Abbott, Jr. would transfer his 25% interest to Diana Abbott Colton. It is by operation of the Quitclaim and the referenced dissolution and transfer agreements that plaintiffs TCA Television, Hi Neighbor, and Colton now claim a copyright interest in Who’s on First?.

C. Hand to God

As described in the amended complaint, Hand to God (the “Play”) is “a dark comedy about an introverted student in religious, small-town Texas who finds a creative outlet and a means of communication through a hand puppet, wh[ich] turns into his evil or devilish persona.” Am. Compl. ¶ 58. After two successful off-Broadway runs, Hand to God opened to critical acclaim on Broadway in the spring of 2015. Through press coverage, plaintiffs learned that Hand to God incorporated part of the Routine in one of its “key scene[s],” without license or permission. Id. at ¶ 63. While the Play was still in previews for its Broadway opening, plaintiffs sent defendants a cease and desist letter. Defendants’ failure to comply with that request prompted this lawsuit.

  1. The Relevant Scene

Plaintiffs allege that the Play infringes their copyright in the Routine by using its first part—that is, the part pertaining to first baseman “Who”—in Act I, Scene 2. In that scene, which occurs approximately 15 minutes into the Play, the lead character, “Jason,” and the girl with whom he is smitten, “Jessica,” have just emerged from the basement of their church, where they had been participating in a Christian puppet workshop. Jason tries to impress Jessica by using his sock puppet, “Tyrone,” to perform, almost verbatim, a little over a minute of Who’s on First?. Jason plays the Bud Abbott role, while Tyrone assumes Lou Costello’s character.74

When Jason somewhat bashfully concludes the “Who” part of the Routine, Jessica compliments him by saying, “That’s really good,” and asks, “Did you come up with that all by yourself[?]” Suppl. App’x 21. When Jason answers, “Yes,” the audience laughs at what it recognizes as a lie. Id.; see Am. Compl. ¶ 64. The answer, however, triggers a different response from the puppet, which, seemingly of its own volition, calls Jason a “Liar,” and states that the comic exchange they just performed is “a famous routine from the [F]ifties.” Suppl. App’x 21. Jason corrects Tyrone, stating that the sketch is from the “Forties.” Id. Tyrone then insults Jessica, telling her that she would know the Routine’s origin if she “weren’t so stupid.” Id. Jason and Jessica each order Tyrone to “shut up” to no effect. Id. at 22. Instead, as the scene continues, Tyrone vulgarly divulges Jason’s physical desire for Jessica. Only after a seeming physical struggle with Tyrone is Jason able to remove the puppet from his hand and thereby end Tyrone’s outburst. Jason tries to apologize to Jessica, but she quickly exits, leaving Jason—in the words of the stage direction— “[d]efeated by what he ca[]n’t defeat.” Id. at 24.

The scene foreshadows darker and more disturbing exchanges between Jason and the puppet that will occur as the Play proceeds.

  1. Promotional Materials

Plaintiffs allege that, in online promotional materials for the Play, defendants used a “video clip” of Jason and his puppet performing Who’s on First? to “stoke interest” in and sell tickets for the Play. Am. Compl. ¶¶ 69, 89. These promotional materials are not part of the court record.

D. District Court Proceedings

On June 4, 2015, plaintiffs filed this action in the Southern District of New York, claiming both federal and common law copyright infringement. Defendants promptly moved to dismiss, arguing, inter alia, that (1) plaintiffs did not hold a valid copyright; (2) the Routine was in the public domain; and (3) Hand to God’s incorporation of the Routine was sufficiently transformative to qualify as a permissible fair use, not prohibited infringement.

On December 17, 2015, the district court granted defendants’ motion to dismiss. It declined to do so on either of the first two grounds argued by defendants, concluding that, at the 12(b)(6) stage, plaintiffs had “sufficiently alleged a continuous chain of title” to the Routine to survive dismissal. TCA Television Corp. v. McCollum, 151 F. Supp. 3d at 431. Instead, the court concluded that dismissal was warranted because defendants’ use of Who’s on First? in Hand to God was “highly transformative” and a non-infringing fair use. Id. at 434, 437.

This appeal followed.

[…]

B. Dismissal for Failure To Plead a Valid Copyright

Defendants argue that, even if we reject dismissal on the basis of a fair use defense, we should affirm because plaintiffs fail plausibly to plead ownership of a valid copyright in the Routine. See Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S. Ct. 1282, 113 L. Ed. 2d 358 (1991) (identifying two elements of infringement: (1) ownership of valid copyright and (2) copying original elements of work). Defendants assert that Abbott and Costello’s Who’s on First? Routine fell into the public domain in 1968, when the initial copyright term for Tropics expired. Defendants concede that UPC’s registration for that movie protected the Routine—first published therein—from entering the public domain through the term of that copyright, see Shoptalk, Ltd. v. Concorde-New Horizons Corp., 168 F.3d 586, 592 (2d Cir. 1999), but they assert that only Abbott and Costello, as the Routine’s authors, could renew the copyright in that work—as distinct from Tropics—which the team failed to do.75

In disputing this challenge, plaintiffs argue that UPC had the right to renew the copyright in the Routine because (1) Abbott and Costello assigned ownership of their common law copyright in the Routine to UPC in either the July or November Agreement, (2) the Routine as published in Tropics was a “work for hire” owned by UPC, and (3) the Routine merged into Tropics so as to support a single copyright. Plaintiffs maintain that, under any of these theories, UPC’s renewal of the Tropics copyright also maintained copyright protection for the Routine, so that they now hold a valid copyright in that work by virtue of UPC’s transfer of its rights in the Routine in the Quitclaim.

We identify no merit in any of the theories relied on by plaintiffs to support their copyright claim and, accordingly, we affirm dismissal of the amended complaint for failure to plead a valid copyright.

  1. Copyright Assignment

In rejecting defendants’ copyright invalidity challenge, the district court thought that “[t]he contract language, together with UPC’s subsequent registration of the copyrights” for Tropics and The Naughty Nineties, might admit a finding of “implied assignment of the initial copyright from Abbott and Costello.” TCA Television Corp. v. McCollum, 151 F. Supp. 3d at 429; see Nimmer § 10.03[B][2], at 10-56.2(6) (explaining that pre-1978 assignment of common law copyright could be effectuated orally or implied from conduct). The conclusion is flawed in two respects. First, as detailed in this section, the July and November Agreements clearly express the parties’ intent for Abbott and Costello to license the use of, not to assign copyrights in, their existing comedy routines for use in UPC movies in which the team appeared. Second, and requiring no further discussion in the face of clear contract language, UPC’s registration (and renewal) of copyrights in its movies says nothing about what Abbott and Costello intended to convey in the two agreements because UPC would have taken such action to protect its independent movie rights in any event. See generally Faulkner v. Nat’l Geographic Soc’y, 220 F. Supp. 2d 237, 239 (S.D.N.Y. 2002)(noting that under 1909 Copyright Act, proprietor of collective work had right to renew copyright in collective work itself).

Turning then to the agreements, we note at the outset that neither contract has a choice of law provision. Thus, the controlling law would be the contract’s “center of gravity,” which typically is the place of contracting or performance. Lazard Freres & Co. v. Protective Life Ins. Co., 108 F.3d 1531, 1539 (2d Cir. 1997)(internal quotation marks omitted). The July Agreement was executed in New York with expected performance in California. The November Agreement was also to be performed in California and may have been executed there, where UPC was located and Abbott and Costello were then completing Tropics. Any uncertainty on the latter point is irrelevant, however, because New York and California law both instruct that contracts must be interpreted according to the mutual intent of the parties at the time the contract was formed. See Welsbach Elec. Corp. v. MasTec N. Am., Inc., 7 N.Y.3d 624, 629, 859 N.E.2d 498, 825 N.Y.S.2d 692, 695 (2006); AIU Ins. Co. v. Superior Court, 51 Cal. 3d 807, 821, 274 Cal. Rptr. 820, 799 P.2d 1253, 1264 (1990). Both states recognize that the best evidence of the parties’ intent is the language used in their contract. See Brad H. v. City of New York, 17 N.Y.3d 180, 185, 951 N.E.2d 743, 928 N.Y.S.2d 221, 224 (2011); AIU Ins. Co. v. Superior Court, 51 Cal. 3d at 822, 799 P.2d at 1264. Thus, where contract language is clear and unambiguous, courts will enforce an agreement according to its terms, without looking outside the four corners of the document. See Brad H. v. City of New York, 17 N.Y.3d at 185, 928 N.Y.S.2d at 224; AIU Ins. Co. v. Superior Court, 51 Cal. 3d at 822, 799 P.2d at 1264.

The July Agreement employing Abbott and Costello for “one feature photoplay,” J.A. 165, states that the team would furnish UPC with “routines heretofore used and now owned by Artists for use by the Producer in the photoplay in which they appear hereunder and for which the Producer shall have the exclusive motion picture rights,” id. at 169 (emphases added). The longer-term November Agreement similarly states that the team would furnish UPC with all “routines heretofore used by the Artists either on the radio or otherwise and now owned by the Artists,” and that UPC would “have the right to use said material and routines to such extent as the Producer may desire in connection with any photoplay in which the Artists render their services hereunder.” Id. at 129 (emphases added). As the highlighted language in each agreement makes plain, Abbott and Costello furnished UPC with their routines for a limited purpose: use in any movies in which the team appeared under the respective agreements.76 This is unmistakably the language of an exclusive, limited-use license, not the assignment of copyright. See Compendium of Copyright Office Practices § 12.2.1 (1973) (stating that license is “exclusive or non-exclusive grant of permission to use a copyrighted work for certain purposes”).

A clause in the July Agreement granting UPC “all rights of every kind and character whatsoever in and to the same … perpetually” warrants no different conclusion. J.A. 169. This language appears in the same sentence as that quoted in the preceding paragraph and, thus, “all rights … in and to the same” can only be understood to reference UPC’s motion picture rights, not the team’s common law copyright in its routines.77 Indeed, in the November Agreement, wherein the team grants UPC the right to photograph and reproduce their “acts,” the “perpetual” right “to use the same” is expressly granted “only in connection with the photoplays in which the Artists appear hereunder and in connection with the advertising and exploitation thereof.” Id. at 127. The November Agreement states that “the Producer shall not have the right to use the Artists’ names or likenesses or reproductions of their voices in radio broadcasts (except as hereinafter expressly permitted) independent of … motion picture productions or in commercial tie-ups.” Id. at 128.

Other language in the November Agreement further confirms that Abbott and Costello granted UPC only a license to use their routines. The team therein agreed “that they w[ould] not use or license, authorize or permit the use of any of the material and/or routines” furnished to UPC under the agreement “in connection with motion pictures for any person, firm or corporation other than the Producer, at any time prior to the termination of the employment of the Artists under this agreement or one year after the general release of the photoplay in which used, whichever is later.” Id. at 129. The fact that the Agreement limits Abbott and Costello’s ability to use or license specified material (i.e., material created before the agreements) only “in connection with motion pictures,” and only for a limited time, plainly indicates the parties’ understanding that the team retained ownership of the copyright in their pre-agreement material and granted UPC only a license. See P.C. Films Corp. v. MGM/UA Home Video Inc., 138 F.3d 453, 456 (2d Cir. 1998) (explaining that under 1909 Copyright Act, “transfer of anything less than the totality of rights commanded by copyright was automatically a license rather than an assignment [of] the copyright”).

Thus, the language of the July and November Agreements, by itself, clearly belies plaintiffs’ claim that Abbott and Costello therein conveyed their common law copyright in the Routine to UPC. That conclusion is reinforced by the very Quitclaim on which plaintiffs’ claimed ownership of the Who’s on First? copyright depends. To secure the Quitclaim of UPC’s interests in the Routine (then held by its successor, Universal), plaintiffs’ predecessors-in-interest therein represented that they owned the copyright in the Routine. In short, the parties to the Quitclaim understood Abbott and Costello not to have transferred, but to have retained, ownership of the Routine’s copyright.

Accordingly, plaintiffs cannot state a plausible infringement claim based on a 1940 transfer of copyright ownership from Abbott and Costello to UPC in either the July or November Agreement. The record does not support such assignment.78

  1. Work Made for Hire

Plaintiffs maintain that, even if the July and November Agreements cannot be construed to have assigned copyrights, they are work-for-hire agreements. They argue that UPC, “[a]s the author under a work-for-hire agreement of the films . . . , properly registered its copyright in these two films with the Copyright Office, and thereafter timely renewed their copyright registrations.” Appellants’ Br. 9; see Estate of Burne Hogarth v. Edgar Rice Burroughs, Inc., 342 F.3d 149, 156-57 (2d Cir. 2003) (explaining that, under 1909 Copyright Act, employer was legal author and, therefore, had renewal rights).

The argument is defeated by plaintiffs’ own allegation—which we must accept as true—that the Routine was first performed in March 1938, more than two years before Abbott and Costello entered into the July and November Agreements with UPC. See Am. Compl. ¶ 32. Insofar as Abbott and Costello had already performed Who’s on First? in 1938, they plainly did not create the Routine at UPC’s “instance and expense” in 1940, as would be required for it to be a work-for-hire. Playboy Enters., Inc. v. Dumas, 53 F.3d 549, 554 (2d Cir. 1995) (stating that work is considered “for hire” when made at hiring party’s instance and expense, i.e., “when the motivating factor in producing the work was the employer who induced the creation” (internal quotation marks omitted)); see also Urantia Found. v. Maaherra, 114 F.3d 955, 961 (9th Cir. 1997) (“An employment (or commissioning) relationship at the time the work is created is a condition for claiming renewal as the proprietor of a work made for hire.” (internal quotation marks omitted)).

Plaintiffs seek to avoid this conclusion by noting defendants’ (1) concession—at least for purposes of their motion to dismiss—that new material was added to the Routine for Tropics, see TCA Television Corp. v. McCollum, 151 F. Supp. 3d at 431; and (2) failure to establish “the contents, language or scope of protectable expression of the 1938 radio broadcast,” Appellants’ Reply Br. 22. We are not persuaded.

On review of a motion to dismiss, courts must draw all reasonable inferences in plaintiffs’ favor. Even applying that principle here, it is not plausible to infer that the Routine, as performed in 1938, did not already contain the initial series of exchanges about a person named “Who” playing first base for the simple reason that there is no Routine without at least that part. Further, because that is the part of the Routine appropriated in Hand to God, plaintiffs must plausibly allege a valid copyright in that material, regardless of later additions. Thus, to the extent plaintiffs’ copyright claim rests on a theory of work-for-hire, it was their burden to plead facts showing that the appropriated parts of the Routine had not existed in the 1938 iteration of Who’s on First?, but were first created for Tropicsso as to be covered by the copyright and copyright renewal of that movie. See Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. at 361(stating that to establish infringement claim, plaintiff must demonstrate, among other things, ownership of valid copyright).

  1. Merger of Routine in Motion Pictures

Finally, plaintiffs argue that even if their copyright ownership claim cannot rest on either an assignment or work-for-hire theory, it is plausible because “so much of the Routine as was used in the Movies ‘merged’ with the Movies to become a ‘unitary whole.’” See Appellants’ Reply Br. 28. Thus, the Routine was not separately registerable; rather it was protected by UPC’s statutory registration and its renewal of the copyrights for movies using the Routine.

This argument also fails because, as this court recently observed, “authors of freestanding works that are incorporated into a film … may copyright these ‘separate and independent works.’” 16 Casa Duse, LLC v. Merkin, 791 F.3d 247, 259 (2d Cir. 2015) (emphasis added) (quoting 17 U.S.C. § 101); see id. at 257 (noting that separate copyrights may be necessary where motion picture incorporates “separate, freestanding pieces that independently constitute ‘works of authorship’“). Who’s on First? was such a freestanding work within Tropics. As already noted, plaintiffs acknowledged in the amended complaint that the Routine (1) was prepared and existed on its own for some years before it was performed in Tropics, see Am. Compl. ¶ 32; and (2) was performed independently from the films “thousands of times” on the radio and elsewhere, see id. at ¶¶ 34-35; see also J.A. 129 (stating in November Agreement that “Artists reserve the right to use on the radio and in personal appearances” all preexisting routines). The Quitclaim representation that plaintiffs’ predecessors-in-interest still owned the Routine’s copyright in 1984 is also at odds with the argument that the Routine had so merged with Tropics as to admit a single copyright owned by UPC.

Neither Garcia v. Google, Inc., 786 F.3d 733 (9th Cir. 2015) (en banc), nor Richlin v. Metro-Goldwyn-Mayer Pictures, Inc., 531 F.3d 962 (9th Cir. 2008), relied on by plaintiffs, is to the contrary. In Garcia, the Ninth Circuit reversed a panel decision holding that an actor’s five-second contribution to a movie was sufficiently creative to entitle her to register a copyright in her performance. The en banc court explained that “[t]reating every acting performance as an independent work” would be a “logistical and financial nightmare.” Garcia v. Google, Inc., 786 F.3d at 743. This case is not analogous. While the screen actor’s performance there was so “integrated into” the filmed work as to be “inseparable from” it, see 16 Casa Duse, LLC v. Merkin, 791 F.3d at 254, Who’s on First? is a freestanding comedy routine performed by Abbott and Costello not only years before the first frame of Tropics was ever filmed but also for many years thereafter. Thus, the concerns at issue in Garcia are not present here.

As for Richlin, the Ninth Circuit did not there hold, as plaintiffs contend, that an author is “not entitled to an independent copyright by reason of inclusion of his [story] treatment’s material in [a] motion picture.” Appellants’ Reply Br. 27-28 (emphasis in original). Rather, the court there assumed that plaintiffs’ story treatment was independently copyrightable when it held that plaintiffs had “failed to secure a federal copyright for it.” Richlin v. Metro-Goldwyn-Mayer Pictures, Inc., 531 F.3d at 976. Thus, the court acknowledged that “publication of a motion picture with notice secures federal statutory copyright protection for all of its component parts,” but observed “that does not mean that the component parts necessarily each secure an independent federal statutory copyright.” Id. at 975-76. The movie’s publication protected so much of the treatment as was disclosed therein, but it “did not constitute publication of the Treatment ‘as such’—i.e., as a work standing alone.” Id. at 973.

This reasoning undermines rather than supports plaintiffs’ merger theory. The plaintiffs in Richlin “clearly intended” that the treatment “be merged into inseparable or interdependent parts of a unitary whole.” Id. at 967. That is not this case. As already explained, the Routine was created and performed by Abbott and Costello well before Tropics was filmed, and the team continued to perform it for years after. Indeed, the Agreements’ licensing of the Routine’s performance in Tropics and The Naughty Nineties contemplated such independent performances. In these circumstances, we conclude that the Routine did not merge into UPC’s films so as to avoid the need for its creators to renew the copyright. See 16 Casa Duse, LLC v. Merkin, 791 F.3d at 259.

In sum, because plaintiffs fail plausibly to allege that (1) Abbott and Costello assigned their common law copyright in Who’s on First? to UPC; (2) the Routine, as appropriated by defendants in Hand to God, was first created for UPC as a work-for-hire; or (3) the Routine so merged with the UPC movies in which it was performed as to become a unitary whole, we conclude that plaintiffs did not plead their possession of a valid copyright in the Routine, as required to pursue their infringement claim.

Accordingly, even though the district court erred in dismissing plaintiffs’ amended complaint based on defendants’ fair use of the appropriated material, we affirm dismissal based on plaintiffs’ failure plausibly to allege a valid copyright.

[***]

Discussion
  1. The Court concluded that plaintiffs had failed to plead ownership of a valid copyright to the Who’s On First routine because the copyrights to the routine were never independently renewed. If the copyrights to the routine had been renewed before expiring, what would the result have been?

  2. How might the TCA court evaluate minor contributions to an open source project? Is a patch to an open source project equivalent to an actor’s performance in a movie? Is it easier, or more appropriate, to treat a patch as an independent work of authorship?

Effects Assocs. v. Cohen, 908 F.2d 555, 558-59 (9th Cir. 1990)

This next case we will examine is another dispute related to movie production. Footage was prepared for inclusion in a horror movie by an independent contractor. The producer who requested the footage was disastisfied, and paid only half the promised amount for the work. The contractor sued the producer on copyright grounds, alleging that the producer had incorporated the footage in the horror film without a license.

This case addresses an issue that is critical to open source development: If a contributor has submitted work to be included in a larger work, has the author of the larger work received a license from the contributor to incorporate that contribution?

Opinion

KOZINSKI, Circuit Judge.

What we have here is a failure to compensate. Larry Cohen, a low-budget horror movie mogul, paid less than the agreed price for special effects footage he had commissioned from Effects Associates. Cohen then used this footage without first obtaining a written license or assignment of the copyright; Effects sued for copyright infringement. We consider whether a transfer of copyright without a written agreement, an arrangement apparently not uncommon in the motion picture industry, conforms with the requirements of the Copyright Act.

Facts

This started out as a run-of-the-mill Hollywood squabble. Defendant Larry Cohen wrote, directed and executive produced “The Stuff,” a horror movie with a dash of social satire: Earth is invaded by an alien life form that looks (and tastes) like frozen yogurt but, alas, has some unfortunate side effects - it’s addictive and takes over the mind of anyone who eats it. Marketed by an unscrupulous entrepreneur, the Stuff becomes a big hit. An industrial spy hired by ice cream manufacturers eventually uncovers the terrible truth; he alerts the American people and blows up the yogurt factory, making the world safe once again for lovers of frozen confections.

In cooking up this gustatory melodrama, Cohen asked Effects Associates, a small special effects company, to create footage to enhance certain action sequences in the film. In a short letter dated October 29, 1984, Effects offered to prepare seven shots,79 the most dramatic of which would depict the climactic explosion of the Stuff factory. Cohen agreed to the deal orally, but no one said anything about who would own the copyright in the footage.

Cohen was unhappy with the factory explosion Effects created, and he expressed his dissatisfaction by paying Effects only half the promised amount for that shot. Effects made several demands for the rest of the money (a little over $ 8,000), but Cohen refused. Nevertheless, Cohen incorporated Effects’s footage into the film and turned it over to New World Entertainment for distribution. Effects then brought this copyright infringement action, claiming that Cohen (along with his production company and New World) had no right to use the special effects footage unless he paid Effects the full contract price. Effects also brought pendent state law claims for fraud and conspiracy to infringe copyright.

The district court initially dismissed the suit, holding that it was primarily a contract dispute and, as such, did not arise under federal law. In an opinion remarkable for its lucidity, we reversed and remanded, concluding that plaintiff was “master of his claim” and could opt to pursue the copyright infringement action instead of suing on the contract. Effects Assocs., Inc. v. Cohen, 817 F.2d 72, 73 (9th Cir. 1987). We recognized that the issue on remand would be whether Effects had transferred to Cohen the right to use the footage. Id. at 73 & n. 1, 74. On remand, the district court granted summary judgment to Cohen on the infringement claim, holding that Effects had granted Cohen an implied license to use the shots. Accordingly, the court dismissed the remaining state law claims, allowing Effects to pursue them in state court. We review the district court’s grant of summary judgment de novo.

Discussion

A. Transfer of Copyright Ownership

The law couldn’t be clearer: The copyright owner of “a motion picture or other audiovisual work” has the exclusive rights to copy, distribute or display the copyrighted work publicly. 17 U.S.C. § 106 (1988). While the copyright owner can sell or license his rights to someone else, section 204 of the Copyright Act invalidates a purported transfer of ownership unless it is in writing. 17 U.S.C. § 204(a) (1988).80 Here, no one disputes that Effects is the copyright owner of the special effects footage used in “The Stuff,”81 and that defendants copied, distributed and publicly displayed this footage without written authorization.

Cohen suggests that section 204’s writing requirement does not apply to this situation, advancing an argument that might be summarized, tongue in cheek, as: Moviemakers do lunch, not contracts. Cohen concedes that “in the best of all possible legal worlds” parties would obey the writing requirement, but contends that moviemakers are too absorbed in developing “joint creative endeavors” to “focus upon the legal niceties of copyright licenses.” Appellees’ Brief at 16, 18. Thus, Cohen suggests that we hold section 204’s writing requirement inapplicable here because “it is customary in the motion picture industry … not to have written licenses.” Id. at 18. To the extent that Cohen’s argument amounts to a plea to exempt moviemakers from the normal operation of section 204 by making implied transfers of copyrights “the rule, not the exception,” id., we reject his argument.

Common sense tells us that agreements should routinely be put in writing. This simple practice prevents misunderstandings by spelling out the terms of a deal in black and white, forces parties to clarify their thinking and consider problems that could potentially arise, and encourages them to take their promises seriously because it’s harder to backtrack on a written contract than on an oral one. Copyright law dovetails nicely with common sense by requiring that a transfer of copyright ownership be in writing. Section 204 ensures that the creator of a work will not give away his copyright inadvertently and forces a party who wants to use the copyrighted work to negotiate with the creator to determine precisely what rights are being transferred and at what price. Cf. Community for Creative Non-Violence v. Reid, 490 U.S. 730, 109 S. Ct. 2166, 2177-78, 104 L. Ed. 2d 811 (1989) (describing purpose of writing requirement for works made for hire). Most importantly, section 204 enhances predictability and certainty of copyright ownership - “Congress’ paramount goal” when it revised the Act in 1976. Community for Creative Non-Violence, 109 S. Ct. at 2177; see also Dumas v. Gommerman, 865 F.2d 1093, 1103-04 (9th Cir. 1989). Rather than look to the courts every time they disagree as to whether a particular use of the work violates their mutual understanding, parties need only look to the writing that sets out their respective rights.

Section 204’s writing requirement is not unduly burdensome; it necessitates neither protracted negotiations nor substantial expense. The rule is really quite simple: If the copyright holder agrees to transfer ownership to another party, that party must get the copyright holder to sign a piece of paper saying so. It doesn’t have to be the Magna Charta; a one-line pro forma statement will do.

Cohen’s attempt to exempt moviemakers from the requirements of the Copyright Act is largely precluded by recent Supreme Court and circuit authority construing the work-for-hire doctrine.82 Section 101 of the Act defines, in relevant part, a work made for hire as “a work prepared by an employee within the scope of his or her employment.” 17 U.S.C. § 101 (1988). Section 201(b) provides that the copyright in such a work is presumed to vest in the employer, not the employee. 17 U.S.C. § 201(b) (1988). Prior to the Supreme Court’s decision in Community for Creative Non-Violence, some circuits had broadly construed section 101’s use of the term employee, holding a work to have been prepared by an employee whenever the hiring party controlled, or had the right to control, the product. See Community for Creative Non-Violence, 109 S. Ct. at 2172. This broad definition encompassed virtually all contributions to books and movies because, as the Court recognized, such contributions are “usually prepared at the instance, direction, and risk of a publisher or producer.” Id. at 2173. The Court rejected this rule as inconsistent with both the language and purpose of the Copyright Act. Id. at 2172-74, 2177-78. It held instead that the term employee was to be defined according to general agency principles, id. at 2173, 2178; where a non-employee contributes to a book or movie, as Effects did here, the exclusive rights of copyright ownership vest in the creator of the contribution, unless there is a written agreement to the contrary. See id. at 2173.

This is similar to the conclusion we had reached several months earlier in Dumas v. Gommerman. We had reasoned that, while many individuals may contribute to the final product, the Act does no more than give publishers and producers “statutory permission” to contract with the various contributors for the rights of authorship. 865 F.2d at 1101 (quoting Easter Seal Soc’y v. Playboy Enters., 815 F.2d 323, 329 (5th Cir. 1987), cert. denied 485 U.S. 981, 108 S. Ct. 1280, 99 L. Ed. 2d 491 (1988)(emphasis original)). Absent an express transfer of ownership, a contributor who is not an employee retains ownership of his copyright. See id.

Thus, section 101 specifically addresses the movie and book publishing industries, affording moviemakers a simple, straightforward way of obtaining ownership of the copyright in a creative contribution – namely, a written agreement. The Supreme Court and this circuit, while recognizing the custom and practice in the industry, have refused to permit moviemakers to sidestep section 204’s writing requirement. Accordingly, we find unpersuasive Cohen’s contention that section 204’s writing requirement, which singles out no particular group, somehow doesn’t apply to him. As section 204 makes no special allowances for the movie industry, neither do we.

B. Nonexclusive Licenses

Although we reject any suggestion that moviemakers are immune to section 204, we note that there is a narrow exception to the writing requirement that may apply here. Section 204 provides that all transfers of copyright ownership must be in writing; section 101 defines transfers of ownership broadly, but expressly removes from the scope of section 204 a “nonexclusive license.” See note 2 supra. The sole issue that remains, then, is whether Cohen had a nonexclusive license to use plaintiff’s special effects footage.

The leading treatise on copyright law states that “[a] nonexclusive license may be granted orally, or may even be implied from conduct.” 3 M. Nimmer & D. Nimmer, Nimmer on Copyright § 10.03[A], at 10-36 (1989). Cohen relies on the latter proposition; he insists that, although Effects never gave him a written or oral license, Effects’s conduct created an implied license to use the footage in “The Stuff.”

Cohen relies largely on our decision in Oddo v. Ries, 743 F.2d 630 (9th Cir. 1984). There, we held that Oddo, the author of a series of articles on how to restore Ford F-100 pickup trucks, had impliedly granted a limited non-exclusive license to Ries, a publisher, to use plaintiff’s articles in a book on the same topic. We relied on the fact that Oddo and Ries had formed a partnership to create and publish the book, with Oddo writing and Ries providing capital. Id. at 632 & n. 1. Oddo prepared a manuscript consisting partly of material taken from his prior articles and submitted it to Ries. Id. at 632. Because the manuscript incorporated pre-existing material, it was a derivative work; by publishing it, Ries would have necessarily infringed the copyright in Oddo’s articles, unless Oddo had granted him a license. Id. at 634. We concluded that, in preparing and handing over to Ries a manuscript intended for publication that, if published, would infringe Oddo’s copyright, Oddo “impliedly gave the partnership a license to use the articles insofar as they were incorporated in the manuscript, for without such a license, Oddo’s contribution to the partnership venture would have been of minimal value.” Id.83

The district court agreed with Cohen, and we agree with the district court: Oddo controls here. Like the plaintiff in Oddo, Effects created a work at defendant’s request and handed it over, intending that defendant copy and distribute it.84 To hold that Effects did not at the same time convey a license to use the footage in “The Stuff” would mean that plaintiff’s contribution to the film was “of minimal value,” a conclusion that can’t be squared with the fact that Cohen paid Effects almost $ 56,000 for this footage. Accordingly, we conclude that Effects impliedly granted nonexclusive licenses to Cohen and his production company to incorporate the special effects footage into “The Stuff” and to New World Entertainment to distribute the film.85

Conclusion

We affirm the district court’s grant of summary judgment in favor of Cohen and the other defendants. We note, however, that plaintiff doesn’t leave this court empty-handed. Copyright ownership is comprised of a bundle of rights; in granting a nonexclusive license to Cohen, Effects has given up only one stick from that bundle – the right to sue Cohen for copyright infringement. It retains the right to sue him in state court on a variety of other grounds, including breach of contract. Additionally, Effects may license, sell or give away for nothing its remaining rights in the special effects footage. Those rights may not be particularly valuable, of course: “The Stuff” was something less than a blockbuster, and it remains to be seen whether there’s a market for shots featuring great gobs of alien yogurt oozing out of a defunct factory. On the other hand, the shots may have much potential for use in music videos. See generally Kozinski & Banner, Who’s Afraid of Commercial Speech?, 76 Va. L. Rev. 627, 641 (1990). In any event, whatever Effects chooses to do with the footage, Cohen will have no basis for complaining. And that’s an important lesson that licensees of more versatile film properties may want to take to heart.

Discussion
  1. What actions of the contractor could have been sufficient to demonstrate that the scene was not licensed for inclusion in the movie? What actions could have ensured that scene would not be found to have been licensed for inclusion in the movie?

  2. What actions could the filmmaker have taken to prevent the issue of whether the scene had been licensed for inclusion in the movie from being a triable question of fact?

There are two, often interrelated, questions that have arisen throughout this chapter: When someone has contributed to a work, have they become a joint author? And, have they actually licensed their contribution to the larger work? As critical and academically-complex as these questions are in world of open source development, both questions are frequently resolved through common conventions of open source development.

The first convention to note is the technical nature of “pull request” contributions to open source projects. When a GitHub member contributes a patch to someone else’s project on GitHub, they generally do so in the form of a pull request. The pull request entails copying the entire project and republishing it, together with the contributor’s modifications, as a new version. Therefore, as part of submitting that patch, the user has formally applied whatever license documentation had been included in the project to the contents of the patch.

This does leave two holes that are important to note. If a contributor contributes code not by way of pull request, but say, by email, it becomes much less clear that inbound/outbound contribution licensing applies. A court might conclude from the context of the email, and from the industry practice of inbound/outbound, that the email contributor has licensed the work to the project, but it would be highly fact-dependent. The second hole enters if the project does not have a license at the time the contribution is received. With no license or contributing documentation in operation, it is left entirely to the facts of the contribution to determine whether a joint, collective, and/or derivative work has been created, to what part of the project the contributor owns, and what, if any, license the project creator or public has received to the contributed work.

The second convention is the role of writings such as Contributor License Agreements, Developer Certificates of Origin, and contributing instructions in further clarifying that a project receives a license to the contents of third-party contributions. Some of these documents provide a clear statement as to the type of intellectual property being created and who owns what:

“You (or your employer) retain the copyright to your contribution; this simply gives us permission to use and redistribute your contributions as part of the project.”86

By specifically clarifying that the contribution is regarded as a copyrighted work, with copyrights held by the contributor, and a license attaching to the contribution that permits the contribution to be incorporated into the larger work, this (in theory) effectively forces a court to treat the project as a collective work, with all contributions to the work constituting individually owned but affirmatively licensed components. This writing goes very far to suggest that the contributor is not being treated as a coauthor.

Conversely, the language of the Linux Foundation’s Developer Certificate of Origin, while including an express license of the contribution to the project, does not have terms identifying the contribution as a work that is copyrighted to the author and licensed to the project. This (in theory) leaves the determination that the contributor has become a co-author a greater possibility.

While many of the conventions and practical writings that comprise open source development operate to resolve ambiguities around authorship and licensing status, there is one convention within open source that leaves for difficult open questions; the AUTHORS file. Many open source projects include an AUTHORS file, but the was this file is used varies between projects, and is sometimes ambiguous. Some projects maintain both a list of CONTRIBUTORS and AUTHORS which ostensibly (or expressly) separates the list of humans that have contributed to the project from humans and/or entities that hold copyright rights to portions of the project. However, AUTHORS files rarely, if ever, expressly state that the enumerated authors are the individual copyright holders to separate and distinguishable parts of the project, rather than co-authors of the whole. The grouped designation of “authors” for the “project” strongly lends to an interpretation that the named authors are indeed “co-authors.”

Corwin v. Quinonez, 858 F. Supp. 2d 903 (N.D. Ohio 2012)

Our final case concerns a copyright dispute between former bandmates. Plaintiff Michael Corwin alleged that he was a co-author of the band’s songs and sought an accounting of the profits defendant Wesley Quinonez had earned from the songs.

Here we see the District Court for the Northern District of Ohio endorse the Childress standard over the Aalmuhammed standard, finding Quinonez’s lack of intent to treat Corwin as a co-author to be dispositive.

Opinion

MEMORANDUM OPINION KATZ, J.

Plaintiff Michael Corwin brings this action for a declaratory judgment and accounting of profits against Defendant Wesley Quinonez. Plaintiff seeks a declaratory judgment that he and Defendant are joint owners of thirty-one songs created during their membership in the band “Rediscover.” Further, Plaintiff contends that as joint authors, he and Defendant are co-owners of the copyrights for the songs at issue, and that he is therefore entitled to an accounting of any profits Defendant has derived therefrom. Defendant counterclaimed for a declaration that he is the sole author and sole owner of the songs in question, and further counterclaimed for an accounting of any profits Plaintiff derived from the songs.

The matter is currently before the Court on Defendant’s motion for summary judgment as to the parties’ competing requests for a declaration of authorship. (Doc. 30). For the reasons stated herein, Defendant’s motion is granted and Plaintiff’s complaint is dismissed.87

I. Background

Defendant is the founder and original member of Rediscover. Defendant styles Rediscover’s music as “electro-pop;” i.e., pop music that is predominately created electronically, but that may also include vocal and instrumental components. Prior to Plaintiff’s membership, Defendant, as the sole member of Rediscover, had “written, produced, performed,” and was selling a compact disc (“CD”) album titled “The Ocean is Calling Us.” (Plaintiff’s Deposition, Doc. 46 at 21:10-22:11) (hereinafter, “Pl’s. Dep.”). Plaintiff joined Rediscover in January 2005 and remained a member through June 2008. In addition to Plaintiff and Defendant, Rediscover included band members Robert Wagner and Daaren Davis.

During Plaintiff’s membership, Rediscover went on tour, had a short-lived relationship with a record label (Unborn Media Records, d/b/a One Big Spark, (hereinafter, “One Big Spark,” or “the record label”)), and recorded three albums: “Out of Touch,”88 “Call Me When You Get This,”89 and “Sleepless Nights.”90 Additionally, a fourth album, “Lost Songs,”91 was produced sometime after Plaintiff’s membership ended. Combined, these four albums include the thirty-one songs currently in dispute, as reflected by a stipulation the parties filed with the Court. (Doc. 51).

The first two albums, “Out of Touch” and “Call Me When You Get This,” were both recorded in Defendant’s basement studio using recording equipment and computer software provided by Defendant. “Out of Touch” was finished sometime in 2005, and “Call Me When You Get This” was finished sometime in 2006. The parties disagree about the extent of Plaintiff’s input and control over the writing and recording process, but with the exception of three songs—”Dance Transylvania,” “I Consume You,” and “Baby Got Her Gun Out”—Plaintiff agrees that Defendant independently programed and recorded each basic electronic song using music production software called FL Studio. Once the basic song was created, Plaintiff and Defendant collaborated on how Plaintiff could perform live instrumental components on top of the basic track. For “Dance Transylvania,” “I Consume You,” and “Baby Got Her Gun Out,” Plaintiff apparently contends that he brought the original idea for these songs to Defendant,92 but concedes that he had no working knowledge of FL Studio during the production of the first album, and only limited knowledge during production of the second.

Sometime prior to production of the third album, “Sleepless Nights,” Rediscover became affiliated with the record label One Big Spark. “Sleepless Nights” was subsequently recorded with the assistance of the label.93 In addition to pre-production work in Baltimore, Defendant again independently programed and recorded each of the basic electronic songs for “Sleepless Nights” using FL Studio. Plaintiff, Defendant, and band members Robert Wagner and Daaron Davis then traveled to Florida to finish recording the album alongside record producer Pete Thornton. As with the previous two albums, the four band members collaborated on how to add instrumental and vocal components to the already existing tracks. Moreover, Plaintiff and Defendant worked with Thornton on technical production aspects throughout recording.

At some point after the Florida recording sessions it was determined that portions of the album were unsatisfactory. It is unclear from the briefs who made this determination but, in any event, Defendant traveled to Boston to re-master the album with producers from One Big Spark. While there, Defendant re-wrote portions of songs and altered or omitted portions of the other band members’ contributions, including Plaintiff’s. Neither Plaintiff nor the other two band members traveled to Boston or otherwise participated in the re-mastering process, though they were aware of Defendant’s activities.

At some point after the re-mastering process, Rediscover’s affiliation with One Big Spark “fell apart” in 2008. Despite this, One Big Spark agreed to give the final master recordings to Rediscover for the band’s use.

The recording process for, and Plaintiff’s involvement in, the final album, “Lost Songs,” is unclear, as the parties’ briefs do not mention the album by name. What is clear is that Plaintiff’s membership in Rediscover ended in mid-2008, apparently before “Lost Songs” was recorded. Even so, the parties’ stipulation lists the “Lost Songs” album and each of its eleven songs as disputed. (Doc. 51). Moreover, Plaintiff’s affidavit enumerates contributions he made to ten of the album’s eleven songs.

In addition to the parties’ above-described involvement in the recording process, it should be noted that several songs were registered with Broadcast Music, Inc. (“BMI”), a performance rights society that manages licensing negotiations for the music of member composers. Specifically, composers can register songs with BMI, and BMI then “negotiates blanket licenses which grant the operator of a bar, radio station, etc., the right to play any of the thousands of songs in [BMI’s] stable for a fixed fee. BMI distributes 80 percent of the money received for such licenses back to the composers based on the popularity of their songs.” Broadcast Music, Inc. v. Star Amusements, 44 F.3d 485, 486 (7th Cir. 1995). In this case, “Baby Got Her Gun Out,” “Shake It,” “Do You Think,” and “Kiss Me” were registered with BMI in four equal shares—one share for each of Rediscover’s four members—so that each band member would receive an equal portion of the royalties. It is unclear who registered these four songs, but Plaintiff stated at deposition that band member Robert Wagner was the first to begin BMI registrations, and that Defendant also registered songs.0.

Finally, on December 13, 2010—after Plaintiff filed this lawsuit— Defendant secured four copyright registrations, one for each of the four albums at issue. 0.All four registrations denote “Wesley James Quinonez, dba Rediscover” as the author and copyright claimant, and state that Quinonez dba Rediscover created the “sound recording, music, [and] lyrics” for all four albums. Id.

II. Summary Judgment Standard

Summary judgment is appropriate where “the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56©. The moving party bears the initial responsibility of “informing the district court of the basis for its motion, and identifying those portions of ‘the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any,’ which it believes demonstrate the absence of a genuine issue of material fact.” Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S. Ct. 2548, 2553, 91 L. Ed. 2d 265 (1986). The movant may meet this burden by demonstrating the absence of evidence supporting one or more essential elements of the non-movant’s claim. Id. at 323-25. Once the movant meets this burden, the opposing party “must set forth specific facts showing that there is a genuine issue for trial.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 106 S. Ct. 2505, 2511, 91 L. Ed. 2d 202 (1986) (quoting Fed. R. Civ. P. 56(e)).

Once the burden of production has so shifted, the party opposing summary judgment cannot rest on its pleadings or merely reassert its previous allegations. It is not sufficient “simply [to] show that there is some metaphysical doubt as to the material facts.” Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S. Ct. 1348, 1356, 89 L. Ed. 2d 538 (1986). Rather, Rule 56(e) “requires the nonmoving party to go beyond the pleadings” and present some type of evidentiary material in support of its position. Celotex, 477 U.S. at 324, 106 S. Ct. at 2553; see also Harris v. General Motors Corp., 201 F.3d 800, 802 (6th Cir. 2000). Summary judgment must be entered “against a party who fails to make a showing sufficient to establish the existence of an element essential to that party’s case, and on which that party will bear the burden of proof at trial.” Celotex, 477 U.S. at 322, 106 S. Ct. at 2552.

“In considering a motion for summary judgment, the Court must view the facts and draw all reasonable inferences therefrom in a light most favorable to the nonmoving party.” Williams v. Belknap, 154 F. Supp. 2d 1069, 1071 (E.D. Mich. 2001) (citing 60 Ivy Street Corp. v. Alexander, 822 F.2d 1432, 1435 (6th Cir. 1987)). However, “‘at the summary judgment stage the judge’s function is not himself to weigh the evidence and determine the truth of the matter,‘” Wiley v. U.S., 20 F.3d 222, 227 (6th Cir. 1994) (quoting Anderson, 477 U.S. at 249); therefore, “[t]he Court is not required or permitted … to judge the evidence or make findings of fact.” Williams, 154 F. Supp. 2d at 1071. The purpose of summary judgment “is not to resolve factual issues, but to determine if there are genuine issues of fact to be tried.” Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 130 F. Supp. 2d 928, 930 (S.D. Ohio 1999). Ultimately, this Court must determine “whether the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law.” Anderson, 477 U.S. at 251-52; see also Atchley v. RK Co., 224 F.3d 537, 539 (6th Cir. 2000).

III. Discussion

A. Preliminary Issues

  1. Absence of Copyright Registration by Plaintiff

As a threshold matter, Defendant argues that Plaintiff’s lawsuit is barred by 17 U.S.C. § 411(a), which requires that “no action for infringement of the copyright in any United States work shall be instituted until registration of the copyright claim has been made in accordance with this title.” (Doc. 50 at 1). Noting that Plaintiff has failed to produce a registered copyright, Defendant contends that Plaintiff’s claims must be dismissed.

Defendant’s argument is inapposite, as Plaintiff did not file a copyright infringement lawsuit. Rather, Plaintiff filed a declaratory judgment claim pursuant to 28 U.S.C. § 2201 requesting a declaration that he and Defendant are joint authors of the songs in question. See Gaiman v. McFarlane, 360 F.3d 644, 648, 652 (7th Cir. 2004) (suit for declaration of joint authorship “is not a suit for infringement.“); see also Severe Records v. Rich, 658 F.3d 571, 581-82 (6th Cir. 2011) (citing Goodman, infra, at 1032); Zuill v. Shanahan, 80 F.3d 1366, 1369 (9th Cir. 1996) (distinguishing claims of joint authorship and claims of infringement); Goodman v. Lee, 815 F.2d 1030, 1031-32 (5th Cir. 1987) (joint author sought declaratory judgment of joint authorship); Brown v. Flowers, 297 F. Supp. 2d 846, 851 (M.D.N.C. 2003), aff’d 196 Fed. Appx. 178, 2006 U.S. App. LEXIS 19055 (4th Cir. 2006) (Section 411(a) not applicable where “[plaintiff] is not bringing an infringement action … [but instead] alleges that the partnership had ownership rights in the songs created … .“). Defendant’s invocation of Section 411(a) as a bar to Plaintiff’s lawsuit is therefore unpersuasive.

  1. Distinction Between Sound Recordings and the Underlying Compositions

At the outset, the Court notes that copyright law recognizes a distinction between sound recordings and the underlying composition. BTE, ET, CIE, LLC v. Bonnecze, 43 F. Supp. 2d 619, 627-28 (E.D.L.A. 1999). The District of New Jersey explained this distinction as follows:

A sound recording as copyrightable subject matter must be distinguished from the copyrighted literary, musical or dramatic work embodied in the sound recording and fixed on a phonorecord. When a copyrighted song is recorded on a phonorecord, there are two separate copyrights: one on the musical composition and the other in the sound recording. The sound recording is the aggregation of the sounds captured in the recording while the song or tangible medium of expression embodied in the recording is the musical composition. Thus, the rights of an owner of a copyright in a sound recording do not extend to the song itself. A copyright in the recording and in the song are separate and distinct and by statute are treated differently.

T.B. Harms Co. v. Jem Records, Inc., 655 F. Supp. 1575, 1577 n.1 (D.N.J. 1987) (internal citations omitted).

In this case, Defendant’s counterclaim unambiguously seeks a declaration of sole ownership both as to the sound recordings and the underlying compositions. (Doc. 26 at ¶¶3-4). The relief sought by Plaintiff, however, is less clear. Plaintiff’s Complaint refers exclusively to “the compositions,” or “the musical compositions.” Similarly, Plaintiff’s response to Defendant’s motion for summary judgment refers exclusively to “the compositions” in the statement of facts section, (Doc. 47 at 3-7), and otherwise seems to use the words “song,” “work,” “track,” and “composition” interchangeably. The exception to this is two places in which Plaintiff’s brief reads: “Plaintiff states the following as his contributions to the final recording of the following tracks,” (Doc. 47 at 7) (emphasis added), and “the evidence is on Plaintiff’s favor to indicate that his contributions to the final work were indeed significant enough to create a joint work … .” Id. at 12 (emphasis added). Whether the Court construes Plaintiff’s request as involving the sound recordings, the underlying compositions, or both is moot because, as explained below, Plaintiff is unable to establish joint authorship.

B. Plaintiff’s Assertion of Joint Authorship

Copyright ownership of a protected work initially vests in the work’s author. 17 U.S.C. § 201(a). When a work is “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, the authors create a “joint work,” id., and are considered to be “joint authors.” Childress v. Taylor, 945 F.2d 500, 505 (2d Cir. 1991). Thus, joint authors are entitled 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.” Thomson v. Larson, 147 F.3d 195, 199 (2d. Cir. 1998) (citing 17 U.S.C. § 201(a)); Childress, 945 F.2d at 508). Further, because joint authors own an undivided interest, they are not liable to one another for copyright infringement. See Newman v. Crowell, 1979 U.S. Dist. LEXIS 9343, at *4-*5 (S.D.N.Y. Oct. 4, 1979) (joint copyright owners cannot sue each other for infringement “because a copyright owner cannot infringe his own copyright.“).

In an unpublished opinion, BancTraining Video Sys. v. First Am. Corp., 1992 U.S. App. LEXIS 3677 (6th Cir. Mar. 3, 1992), the Sixth Circuit analyzed joint authorship, but did not establish a specific test for courts to apply when determining the issue. The parties do not cite BancTraining or otherwise suggest what the Sixth Circuit’s joint authorship test is or should be. Instead, they argue under the Second Circuit’s Childress v. Taylor test, which requires a party claiming joint authorship to show that (1) each party intended to be joint authors, and (2) each party made an independently copyrightable contribution to the work. See Childress v. Taylor, supra, 945 F.2d at 505-06; see also Thomson v. Larson, supra, 147 F.3d 195 (refining Childress’ joint authorship test). After examination, this Court believes Childress states the appropriate test for determining joint authorship.

In adopting the Childress test, this Court finds persuasive the Seventh Circuit’s reasoning for doing so in Erickson v. Trinity Theatre, Inc., 13 F.3d 1061 (7th Cir. 1994). See Erickson at 1067-71 (Childress best satisfies statutory definition of joint work, Childress’ “independently copyrightable contribution” requirement provides consistency, promotes judicial efficiency, and reinforces goals of Copyright Act, and majority of courts considering joint authorship have applied Childress). Moreover, this Court notes that several other district courts in the Sixth Circuit have applied Childress and Erickson when confronting claims of joint authorship. See Downey v. Downey, 2010 U.S. Dist. LEXIS 99828, at *5 (S.D. Ohio Aug. 26, 2010); Tang v. Putruss, 521 F. Supp. 2d 600, 606 (E.D. Mich. 2007); Perry v. Herd, 2006 U.S. Dist. LEXIS 17404, at *57 (E.D. Tenn. Feb. 14, 2006); Balkin v. Wilson, 863 F. Supp. 523, 528 (W.D. Mich. 1994). Therefore, this Court will apply the Childress test to Plaintiff’s claim of joint authorship.

As explained above, Childress requires a party claiming joint authorship to show that (1) each party intended to be joint authors, and (2) each party made an independently copyrightable contribution to the work. 945 F.2d at 505-06. With regard to intent, it is not enough that the parties intend their contributions to be merged into “inseparable or interdependent parts of a unitary whole.” See Bonnecaze, supra, 43 F. Supp. 2d at 623 (citing Childress, 945 F.2d at 507-08). Rather, the parties must “entertain in their minds the concept of joint authorship.” Childress, 945 F.2d at 508; see also Thomson, 147 F.3d at 201 (citing Childress, 945 F.2d at 508) (“since coauthors are afforded equal rights in the co-authored work, the ‘equal sharing of rights should be reserved for relationships in which all participants fully intend to be joint authors.‘“). Further, in Thomson v. Larson, the Second Circuit explained that “the intention standard is not strictly subjective.” 147 F.3d at 201 (“co-authorship intent does not turn solely on the parties’ own words or professed state of mind.“). Instead, Childress requires “a nuanced inquiry into the factual indicia of ownership,” which includes decision making authority over the work, the way in which contributors bill or credit themselves for the work, control of written agreements related to the work, and any other evidence. Id. (emphasis added). With regard to Childress’ second prong, a putative joint author’s contribution must be independently copyrightable. Erickson, 13 F.3d at 1072. As such, “ideas, refinements, and suggestions, standing alone,” are not sufficient. Id. Rather, a party asserting joint authorship must point to specific contributions that were fixed in a tangible medium. Id. at 1071; see also Bonnecaze, 43 F. Supp. 2d at 628 (ideas and insights contributed by drummer of rock band insufficient to establish joint authorship of underlying compositions, and drummer’s contributions to sound recordings cannot serve as the required tangible expression for establishing joint authorship of underlying compositions).

Applying the Childress test to the facts of this case, the Court finds that Plaintiff is unable to establish joint authorship for failure to satisfy the first prong: a showing of intent. Plaintiff advances three substantive arguments to demonstrate Defendant’s intent. First, several portions of Plaintiff’s complaint and opposition brief claim that Defendant acknowledged Plaintiff as a joint author and co-owner:

Defendant denies the fact that for several years Defendant acknowledged and conceded Plaintiff’s 50% ownership of the Compositions. Thus there is a dispute as to this fact … . After being pressed by Plaintiff to share revenues from the songs, about August 2010, Defendant then repudiated Plaintiff’s co-ownership by contending that Defendant was the sole owner of the Compositions. (Doc. 47, Pl’s. Mem. at 5);

In the present case Defendant Quinonez did previously acknowledge Plaintiff Corwin as a joint-author and therefore their [sic] exists an intent at the time of the writing that the parts be absorbed or combined into an integrated unit. Id. at 13;

Plaintiff states in his affidavit that Quinonez had acknowledged him as a co-author publicly and then ceased to do so in August 2010. Id. at 15 (emphasis added);

By letters to Plaintiff and other individuals in August 2010 and thereafter, Defendant for the first times repudiated. Plaintiff’s co-ownership … . (Doc. 1, Pl’s. Compl., at ¶15) (emphasis added).

The only evidence Plaintiff offers in support of these unsubstantiated claims is another unsubstantiated claim; namely, his affidavit, which states that “[Defendant] acknowledged my contribution in the past. [Defendant] then repudiated my co-ownership to copywritten [sic] works in August of 2010.” (Doc. 47-2 at ¶¶6-7). Such a conclusory allegation is insufficient to create a genuine dispute of fact regarding Defendant’s intent to be joint authors with Plaintiff. See Sigmon v. Appalachian Coal Props., 400 Fed. Appx. 43, 2010 U.S. App. LEXIS 19493, at *48-*49 (6th Cir. Sept. 17, 2010) (“While an affidavit may certainly be sufficient to establish a genuine issue of material fact … that is not the case if the affidavit contains only conclusory allegations and naked conclusions of law … .“). This is especially true given that Plaintiff claims Defendant acknowledged his joint authorship status both publicly, (Doc. 47 at 15), and in letters to “other individuals,” (Doc. 1 at ¶15), yet he fails to provide any evidence aside from his own conclusory affidavit. To the contrary, Defendant produced the affidavit of fellow band member, Robert Wagner, which states:

I cannot support the allegation that [Defendant] has previously conceded a 5050 ownership of the songs in question with [Plaintiff]. I have no knowledge of [Defendant] making any statement to that effect … . I cannot support the allegation that [Defendant] has sent letters to [Plaintiff] and others repudiating a 5050 ownership of the songs in question. I have no knowledge of correspondence addressing 5050 ownership of the songs in question.94

(Doc. 40-1 at p.4, ¶¶5-6). Plaintiff’s baseless assertion that Defendant conceded joint authorship is therefore not persuasive.95

Second, Plaintiff claims he and Defendant shared decision making authority sufficient to demonstrate a mutual intent to be joint authors. Specifically, Plaintiff cites a portion of Defendant’s deposition that describes the process by which Plaintiff recorded live instrumental components on top of Defendant’s pre-recorded electronic song:

Q: For all the songs that have lead guitar … you guys would have some process where you would discuss what was going to go in there?

A: Sure.

Q: And then the plaintiff would play what he thought was appropriate and you would hit the buttons to record it and he would play it and it would get recorded, right?

A: Fair enough.

(Doc. 45, Defendant’s Deposition, at 58:3-12) (hereinafter, “Def’s. Dep.”). Citing this exchange, Plaintiff claims that “Defendant’s own words show his intention at the time the songs were created that the parts created by Plaintiff were to be absorbed or combined into an integrated unit the song itself.” (Doc. 47 at 7).

Setting aside the fact that this deposition excerpt limits Defendant’s statement to a description of Plaintiff’s lead guitar contributions, and that Plaintiff has claimed guitar contributions in only nineteen songs-all of which appear on the third and fourth albums only, (Doc. 47 at 7-8)-Defendant’s statement does not satisfy Childress’ intent requirement. As explained above, it is not enough that the parties intend their contributions to be merged into “inseparable or interdependent parts of a unitary whole.” See Bonnecaze, 43 F. Supp. 2d at 623 (citing Childress, 945 F.2d at 507-08). The parties must “entertain in their minds the concept of joint authorship.” Childress, 945 F.2d at 508. When reading past the excerpt cited by Plaintiff, it is clear that “Defendant’s own words” do not establish that he entertained the concept of joint authorship in his mind, because Defendant’s words do not describe a scenario in which he ceded control of the recordings to Plaintiff:

Q: [The style of the lead guitar part] was within the discretion of the plaintiff, right?

A: It was actually in the discretion of me. It was if I thought it was going to fit with the song.

Q: Okay. Maybe that’s not what I want to ask you … . With respect to the style of it, maybe it was your decision, I don’t know, is that true?

A: That is true. I made the final decision of what we used for the song.

(Def’s. Dep. at 58:19-59:5). See Erickson, 13 F.3d at 1072 (no intent for joint authorship where minor suggestions made by putative joint author, but final decision belonged “entirely” to principal playwright); cf. Janky, 576 F.3d at 362 (sufficient joint authorship intent where putative joint author “wielded considerable control over what the song finally looked like; one could even say he demanded the changes.“).96 Further, Plaintiff concedes that when Defendant traveled to Boston to re-master the “Sleepless Nights” album, Defendant re-wrote portions of songs and altered or omitted portions of the other band members’ contributions, including Plaintiff’s. Plaintiff further concedes that neither he nor the other two band members traveled to Boston or participated in this process. Thus, Plaintiff cannot show that he exercised decision making authority sufficient to demonstrate a mutual intent to be joint authors.

Finally, Plaintiff points to the band’s four songs that were registered with BMI in each of the four band members’ names. Plaintiff maintains that the profit sharing and mutual recognition resulting therefrom demonstrates joint authorship intent. This argument is not persuasive. Plaintiff concedes that he does not even know who registered the songs, let alone that Defendant did so contemplating that the two of them should be joint authors. Moreover, even if Defendant did register the songs, doing so in each of the four members’ names hardly evinces an intent that only two of them be joint authors. Further, Plaintiff points to only four songs registered with BMI, leaving twenty-seven songs unaccounted for. Simply put, a reasonable jury could not find that the four-way registration of four songs demonstrates intent of joint authorship.

For the reasons stated above, the Court finds that Plaintiff cannot satisfy the requisite showing of intent under Childress’ joint authorship test, and the Court therefore need not examine the “independent copyrightable contribution” prong. Moreover, Plaintiff’s claim for a declaration of joint authorship must be dismissed and, because Plaintiff’s claims for an accounting and constructive trust are not cognizable without a showing of joint authorship, the remainder of Plaintiff’s complaint must also be dismissed.

C. Defendant’s Assertion of Sole Authorship

Defendant’s third amended counterclaim seeks a declaratory judgment that he is the sole author of the compositions at issue, and the sole owner of the sound recordings at issue. (Doc. 23 at ¶¶3-4).

Under Section 410(a) of the Copyright Act, a copyright registration made within five years after publication of a work is prima facie evidence and creates a rebuttable presumption of the registration’s validity and of the facts stated therein. BancTraining, 1992 U.S. App. LEXIS 3677, at *7-*8 (citing 17 U.S.C. § 410(a)). In this case, the copyright registrations for the “Shake It, et al.,” “Sleepless Nights,” and “Lost Songs” albums were made within five years. (Doc. 31-1 at 1-9). Defendant has therefore proffered prima facie evidence of sole authorship, and Plaintiff has failed to rebut this evidence with his assertion of joint authorship.

Defendant concedes that the copyright registration for the “Out of Touch” album was made some five and a half years after its first publication. Id. at 10-12. Despite this delay, “[t]he evidentiary weight to be accorded the certificate of registration made [after five years] shall be within the discretion of the court.” 17 U.S.C. § 410(a). In this case, the Court finds the copyright registration, coupled with Defendant’s song-by-song description of his authorship, (Doc. 30 at 14-36), satisfies Defendant’s burden of demonstrating authorship, and Plaintiff again has failed to rebut this showing with his assertion of joint authorship.

In light of the above, the Court finds that Defendant is the sole author of the compositions at issue, and the sole owner of the sound recordings at issue.

V. Conclusion

For the reasons stated herein, Defendant’s motion for summary judgment is granted. (Doc. 30). The Court hereby declares that Defendant is the sole author of the compositions at issue, and the sole owner of the sound recordings at issue (Copyright Registrations SR 670-739; SR 669-420; SR 670-722; and SR 670-714). Further, Plaintiff’s complaint is dismissed. (Doc. 1). Counts II and III of Defendant’s third amended counterclaim remain pending. (Doc. 23).

IT IS SO ORDERED.

Discussion
  1. How are the Aalmuhammed and Childress standards different? What do they have in common? Which circuits have formally adopted which test as of the time of your reading?

  2. If provided with a clear written declaration of intention to be joint authors, what are the minimal criteria for meeting the second prong of the Childress test?

  3. A helpful example of interdependent contributions is the case of Brownstein v. Lindsay, 742 F.3d 55, 59 (3d Cir. 2014) where one author created a test using scientific principles and the other author created software embodying the first author’s test:

“Beginning around December 1993, Lindsay began devising the idea and developing the rules for categorizing names by ethnicity (e.g., by looking at first names, last names, suffixes, prefixes, and geographic location). These rules became known as the Ethnic Determinate System (“EDS”) — they could be written out in text, just as one might write out a recipe or driving directions. The system would use this set of rules to run a computer program that would predict the ethnicity of a random list of names from a direct mailing database.

In January 1994, Lindsay enlisted Brownstein to turn her rules into computer code. This required Brownstein to code a number of computer programs that did everything from rewriting a list of names into the proper data format for processing to turning Lindsay’s rules into computer code. These programs became known as the ETHN programs. Over the years, Brownstein improved and updated the ETHN programs, with each new generation of programs being a distinct work from the previous generation. The combined system of Lindsay’s rules and Brownstein’s computer code was named the LCID. The result was that Lindsay was the sole author of the EDS, as an independent work of the LCID, Brownstein was the sole author of the ETHN programs, as another independent work of the LCID, and they both had an equal authorship interest in the LCID as a joint work of the EDS and the ETHN programs.”

Is a court likely to consider the nature of open source development analagous or distinct from this form of cooperation? What could the role of “project maintainer” designations and privileges have when evaluating which author(s) possess creative control over the work?

  1. What type of copyrighted work is this open source casebook? If you were to contribute content to this casebook, what rights would you hold over what content? Where do you look to find answers to these questions?

  1. That entity may be the author as an independent actor, the author’s employer under a work for hire arrangement, or someone who has contracted the author to create the work as a work for hire. 17 U.S.C. § 101.

  2. This is entirely independent from the question of whether the work is jointly authored. A work can be both a collective work and be a work of joint authorship simultaneously.

  3. “[T]he owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.” 17 U.S.C. § 201©.

  4. See 12 M. Nimmer, Nimmer on Copyright V, Foreign Laws for a survey of international laws governing joint works.

  5. 17 U.S.C. § 101.
  6. Id.
  7. 17 U.S.C. § 201©.
  8. 17 U.S.C. § 103(b).
  9. “‘The two fundamental criteria of copyright protection [are] originality and fixation in tangible form… . The phrase “original works of authorship,” which is purposely left undefined, is intended to incorporate without change the standard of originality established by the courts under the [1909] copyright statute.’” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 355, 111 S. Ct. 1282, 1292-93 (1991) (citing H. R. Rep. No. 94-1476, p. 51 (1976); S. Rep. No. 94-473, p. 50 (1975)).

  10. Id. at 1287-88 (internal citations omitted).
  11. 17 U.S.C. § 101.
  12. Bencich v. Hoffman, 84 F. Supp. 2d 1053 (D. Ariz. 2000).
  13. However, if the work were to constitute a Work Made For Hire, then sole copyright ownership would vest with the principal. 17 U.S.C. § 201(b).

  14. “A ‘joint work’ in [the Ninth] circuit ‘requires each author to make an independently copyrightable contribution’ to the disputed work.” Aalmuhammed v. Lee, 202 F.3d 1227, 1231 (9th Cir. 2000) (quoting Ashton-Tate Corp. v. Ross, 916 F.2d 516, 521 (9th Cir. 1990)).

  15. 17 U.S.C. § 101.
  16. 17 U.S.C. § 201(a).
  17. See Pamela S. Chestek, A Theory of Joint Authorship For Free and Open Source Software Projects, (2017).

  18. 17 U.S.C. §§ 101, 201(a).
  19. Cf. Thomson v. Larson, 147 F.3d 195, 206 (2nd Cir. 1998).
  20. See Covey v. Hollydale Mobilehome Estates, 116 F.3d 830, 834 (9th Cir. 1997), amended by, 125 F.3d 1281 (1997).

  21. See 17 U.S.C. § 507(b); Zuill v. Shanahan, 80 F.3d 1366, 1371 (9th Cir. 1996), cert. denied, 519 U.S. 1090, 136 L. Ed. 2d 710, 117 S. Ct. 763 (1997).

  22. Zuill, 80 F.3d at 1371.
  23. 17 U.S.C. § 101.
  24. Richardson v. United States, 526 U.S. 813, 119 S. Ct. 1707, 1710, 143 L. Ed. 2d 985 (1999).

  25. Ashton-Tate Corp. v. Ross, 916 F.2d 516, 521 (9th Cir. 1990).
  26. See Ashton-Tate Corp. v. Ross, 916 F.2d 516, 521 (9th Cir. 1990).
  27. 17 U.S.C. § 101.
  28. 17 U.S.C. § 101.
  29. See Richard Grenier, Capturing the Culture, 206-07 (1991).
  30. Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 61, 28 L. Ed. 349, 4 S. Ct. 279 (1884).

  31. Id. at 61 (quoting Nottage v. Jackson, 11 Q.B.D. 627 (1883)).
  32. U.S. Const. Art. 1, § 8, cl. 8.
  33. Burrow-Giles, 111 U.S. at 58 (quoting Worcester).
  34. Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 345, 113 L. Ed. 2d 358, 111 S. Ct. 1282 (1991).

  35. Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58, 28 L. Ed. 349, 4 S. Ct. 279 (1883).

  36. Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 346, 113 L. Ed. 2d 358, 111 S. Ct. 1282 (1991).

  37. See Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 28 L. Ed. 349, 4 S. Ct. 279 (1884); Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 113 L. Ed. 2d 358, 111 S. Ct. 1282 (1991).

  38. Burrow-Giles, 111 U.S. at 61 (quoting Nottage v. Jackson, 11 Q.B.D. 627 (1883)).

  39. Id. at 61.
  40. Thomson v. Larson, 147 F.3d 195, (2nd Cir. 1998); Erickson v. Trinity Theatre, Inc., 13 F.3d 1061 (7th Cir. 1994); Childress v. Taylor, 945 F.2d 500 (2d Cir. 1991).

  41. Thomson, 147 F.3d at 202-05.
  42. Id.
  43. Id. at 197.
  44. Id.
  45. Id. at 198.
  46. Id.
  47. Id. at 202-04.
  48. Id. at 202-24.
  49. Burrow-Giles v. Sarony, 111 U.S. at 61 (quoting Nottage v. Jackson, 11 Q. B. div. 627 (1883)).

  50. Thomson, 147 F.3d at 202.
  51. Burrow-Giles v. Sarony, 111 U.S. at 61 (quoting Nottage v. Jackson, 11 Q. B. Div. 627 (1883)).

  52. Id.
  53. Cf. Thomson v. Larson, 147 F.3d 195, 202 (2nd Cir. 1998).
  54. Edward B. Marks Music Corp. v. Jerry Vogel Music Co., Inc., 140 F.2d 266, 267 (2nd Cir. 1944) (Hand, J.) modified by, 140 F.2d 268 (1944).

  55. See Burrow-Giles v. Sarony, 111 U.S. 53, 61, 28 L. Ed. 349, 4 S. Ct. 279 (1883).

  56. Id.
  57. U.S. Const. Art. 1, § 8, cl. 8.
  58. Thomson, 147 F.3d at 200 (internal quotations omitted).
  59. Id. at 202 (citing Childress v. Taylor, 945 F.2d 500, 504 (1991)).
  60. S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1086 (9th Cir. 1989).
  61. 1 Nimmer on Copyright § 6.07 (2018)
  62. See Pamela S. Chestek, A Theory of Joint Authorship For Free and Open Source Software Projects, (2017).

  63. The members of the Penn State Team are not parties to this litigation, and no one has suggested that they have copyrights in the Memorial.

  64. In 2006, Mr. Gaylord sued Mr. Alli for copyright infringement. Mr. Alli settled the dispute and agreed to pay Mr. Gaylord 10% of his net sales.

  65. The Seventh Circuit carved out an “exception” to this rule in a case where neither collaborator made independently copyrightable contributions, but the result of the collaboration produced a copyrightable work. Gaiman v. McFarlane, 360 F.3d 644, 658 (7th Cir. 2004). The court explained that “it would be paradoxical if though the result of [the contributors’] joint labors had more than enough creativity and originality to be copyrightable, no one could claim copyright.” Id. Because the government does not argue that Mr. Gaylord’s work was not worthy of copyright protection, this exception does not apply here.

  66. See Oddo v. Ries, 743 F.2d 630, 633 (9th Cir. 1984) (“A co-owner of a copyright must account to other co-owners for any profits he earns from licensing or use of the copyright, but the duty to account does not derive from the copyright law’s proscription of infringement. Rather, it comes from equitable doctrines relating to unjust enrichment and general principles of law governing the rights of co-owners.“)(internal quotations omitted).

  67. Defendants do not cross-appeal the district court’s denial of dismissal on the ground of copyright invalidity; rather, they argue it as an alternative ground for affirmance, even if plaintiffs’ fair use challenge prevails. In this opinion, we first address plaintiffs’ challenge to the fair use determination supporting dismissal because if we were to identify no error in that ruling there would be no need to consider defendants’ proposed alternative ground for affirmance.

  68. In 1999, Time magazine named the Routine the best comedy sketch of the Twentieth Century. See Am. Compl. ¶ 37; Best of the Century, Time, December 31, 1999, at 73.

  69. Viewing the facts in the light most favorable to plaintiffs, the district court discussed in some detail why (1) before Tropics’s release, the Routine was protected by common law copyright; and (2) the movie’s release could constitute “publication” of the Routine, extinguishing any common law right and requiring registration and deposit with the federal Copyright Office to claim any statutory copyright protection. See TCA Television Corp. v. McCollum, 151 F. Supp. 3d at 427-30.

  70. Plaintiffs’ amended complaint cites only the November Agreement with UPC as the relevant contract. See Am. Compl. ¶ 43. By the time that agreement was signed, however, Abbott and Costello presumably had already finished their work on _Tropics_—including any additions to the Routine reflected in that movie. Thus, it would appear that the team’s work on Tropics was pursuant to the July Agreement, discussed supra at I.B.1.a. The discrepancy does not affect our analysis here because, in the district court, defendants conceded that, at least for purposes of their motion to dismiss, the July Agreement had “in effect, been pleaded” by plaintiffs in support of their claim. Sept. 9, 2015 Hr’g Tr. 2-3.

  71. By operation of the Sonny Bono Copyright Term Extension Act, Pub. L. No. 105-298, 112 Stat. 2827 (1998), the renewal term for Tropics will not expire until 2035 and that for The Naughty Nineties will not expire until 2040. See 17 U.S.C. § 304(b).

  72. The George Mason University Libraries, in their “Guide to the John C. Becher Soldier Show Collection, 1940-1953,” indicates that “Soldier Shows” refers to entertainments “made by soldiers for soldiers,” with the object of “mass participation” to raise morale. J.A. 208-09. Because the record here is devoid of any information about either Soldier Shows generally or Soldier Shows, No. 19 in particular, we make no assumptions about the content of the material that is the subject of the 1944 copyright registration.

  73. Bud Abbott died in 1974; Lou Costello died in 1959. See Bud Abbott, Straight Man to Lou Costello, Is Dead, N.Y. Times, April 25, 1974, at 42; Lou Costello, 52, Dies on Coast; Comic Had Teamed with Abbott, N.Y. Times, Mar. 4, 1959, at 31.

  74. (footnote describing the Routine as used in the Play omitted).
  75. Because both parties seemingly concede that the Routine was protected from entering the public domain through at least Tropics’s initial copyright term, we need not determine whether Tropics’s publication automatically divested Abbott and Costello of their common law copyright and injected it into the public domain. See Roy Export Co. Establishment of Vaduz, Liechtenstein v. Columbia Broad. Sys., Inc., 672 F.2d 1095, 1101-02 (2d Cir. 1982).

  76. Plaintiffs acknowledged as much in the district court when they argued that the agreements’ language “represented a clear grant of rights to UPC in all previous acts and routines created by Abbott and Costello . . . if used in any motion pictures produced by UPC in which Abbott & Costello provided their services.” Pls.’ Mem. Opp. Mot. Dismiss at 7, TCA Television Corp. v. McCollum, No. 15-cv-4325 (GBD), ECF No. 61 (emphasis added).

  77. See supra p. 7 (quoting relevant sentence in July Agreement in full).

  78. Because the agreements cannot be construed to effect an assignment of the Routine’s copyright to UPC, we need not decide whether they further conveyed the Routine’s renewal rights. See Corcovado Music Corp. v. Hollis Music, Inc., 981 F.2d 679, 684 (2d Cir. 1993) (recognizing strong presumption against conveyance of renewal rights).

  79. The price originally agreed to was $ 62,335; in an invoice dated January 10, 1985, Effects adjusted this amount upward to $ 64,033.92, because of additional expenses incurred in creating the shots.

  80. The Copyright Act defines “transfer of copyright ownership” as an “assignment, mortgage, exclusive license, or any other conveyance, alienation, or hypothecation of a copyright or of any of the exclusive rights comprised in a copyright … but not including a nonexclusive license.” 17 U.S.C. § 101.

  81. Cohen concedes that he licensed Effects to prepare the footage as a derivative work incorporating other shots from “The Stuff,” and that Effects has a valid copyright in this footage. Appellees’ Brief at 25 n. 3.

  82. Because Effects is not an employee and there is no written agreement stating that plaintiff’s footage is a work made for hire, Cohen can’t take advantage of this doctrine. See pp. 7709-10 infra. In any event, Cohen has waived this argument by failing to raise it below. See S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1087 (9th Cir. 1989).

  83. Oddo did nevertheless prevail, but on other grounds. Ries was unhappy with Oddo’s manuscript and hired another writer to do the job right. This writer added much new material, but also used large chunks of Oddo’s manuscript, thereby incorporating portions of Oddo’s pre-existing articles. 743 F.2d at 632. By publishing the other writer’s book, Ries exceeded the scope of his implied license to use Oddo’s articles and was liable for copyright infringement. Id. at 634.

  84. As the district court found, “every objective fact concerning the transaction at issue supports a finding that an implied license existed.” Order Granting Summary Judgment (Aug. 26, 1988) at 2. Effects’s copyright registration certificate states that the footage is to be used in “The Stuff,” so does the letter agreement of October 29, 1984, and Effects’s President James Danforth agreed at his deposition that this was his understanding. CR 24 at 11. Also, Effects delivered the film negatives to Cohen, never warning him that cutting the negatives into the film would constitute copyright infringement. CR 24 at 29. While delivery of a copy “does not of itself convey any rights in the copyrighted work,” 17 U.S.C. § 202 (1988) (emphasis added), it is one factor that may be relied upon in determining that an implied license has been granted.

  85. Plaintiff argues that an implied license is an equitable remedy, akin to estoppel, for which Cohen does not qualify because he hasn’t paid in full the agreed-to price for the footage. We reject this argument. Plaintiff cites no authority for the proposition that an implied license is equitable in nature; it seems to us to be a creature of law, much like any other implied-in-fact contract. See, e.g., Landsberg v. Scrabble Crossword Game Players, Inc., 802 F.2d 1193, 1199 (9th Cir. 1986). In any event, it is unclear that a balancing of equities would favor plaintiff, who has been paid almost $ 56,000 for footage that is worthless to Cohen should plaintiff prevail. Nor can we construe payment in full as a condition precedent to implying a license. Conditions precedent are disfavored and will not be read into a contract unless required by plain, unambiguous language. Sulmeyer v. United States (In re Bubble Up Delaware, Inc.), 684 F.2d 1259, 1264 (9th Cir. 1982). The language of the October 29, 1984, agreement doesn’t support a conclusion that full payment was a condition precedent to Cohen’s use of the footage. Moreover, Effects’s president conceded at his deposition that he never told Cohen that a failure to pay would be viewed as copyright infringement. CR 24 at 29.

  86. Contributing instructions for snappy (retrieved from https://github.com/google/snappy/blob/master/CONTRIBUTING.md on 8/20/18).

  87. Because Defendant’s motion “expressly reserves any argument as to damages,” id. at 1, Count II (Accounting) and Count III (Constructive Trust) of Defendant’s third amended counterclaim remain pending.

  88. The “Out of Touch” album contains the following four songs, all of which are in dispute: “Dance Transylvania,” “I Consume You,” “This Place,” “Your Pretty Eyes.” (Doc. 51).

  89. The “Call Me When You Get This” album contains the following seven songs, all of which are in dispute: “Baby Got Her Gun Out,” “Shake It,” “Do You Think?,” “My Pretty Eyes,” “Standing On Edge,” “I Consume You - alt. version.” (Doc. 51).

  90. The “Sleepless Nights” album contains the following nine songs, all of which are in dispute: “Sleepless Nights,” “Standing On Edge - alt. version,” “Say It Like You Mean It,” “Drink The Night Away,” “Gorgeous,” “I’m Just Like The Other Guys,” “Not Invited,” “Face Down,” “I Will Forget You.” (Doc. 51).

  91. The “Lost Songs” album contains the following eleven songs, all of which are [**4] in dispute: “Belmont,” “Ecstacy,” “Every Fucking Movie,” “Hang On,” “Hideout,” “I’m In Love With You,” “One Eighty,” “Shake,” “Stuck in 1999,” “Voodoo,” “You Won’t Be Breathing.” (Doc. 51).

  92. Plaintiff does not make any specific arguments as to “Dance Transylvania,” “I Consume You,” or “Baby Got Her Gun Out.” The Court was apprized of Plaintiff’s apparent claims about the three songs only through Defendant’s reference to portions of Plaintiff’s deposition. Nowhere does Plaintiff’s brief assert that Plaintiff made contributions to “Dance Transylvania,” “I Consume You,” or “Baby Got Her Gun Out” that were more substantial than the contributions he made to any of the other songs at issue. Instead, Plaintiff’s brief only contains sweeping assertions about all thirty-one disputed songs. Similarly, Plaintiff’s affidavit—which purports to enumerate the contributions Plaintiff made to each of the disputed songs—only lists contributions for eighteen songs, and does not even mention “Dance Transylvania,” “I Consume You,” or “Baby Got Her Gun Out.” (Doc. 47-2 at ¶5).

  93. Specific details regarding the nature of Rediscover’s “affiliation” with One Big Spark remain unclear.

  94. Defendant also submitted the affidavit of Mike Hearst, which likewise denies knowledge of Defendant conceding joint authorship. (Doc. 40-1 at p.2, ¶¶5-6). It is unclear to the Court, however, who Mike Hearst is.

  95. The Court’s analysis is not altered by Plaintiff’s passing reference to Janky v. Lake County Convention & Visitors Bureau, 576 F.3d 356 (7th Cir. 2009). That case involved a clear concession of joint authorship—namely, plaintiff’s filing of the copyright registration with defendant listed as a joint author and the song designated as a “joint work”—followed by a post-hoc excuse that the registration was simply meant to convey gratitude. Id. at 362.

  96. The Court is aware that the Second Circuit admonished that “the intention standard is not strictly subjective. In other words, co-authorship intent does not turn solely on the parties’ own words or professed state of mind.” Thomson, 147 F.3d at 201. In this instance, however, Plaintiff limits his argument to the sufficiency of Defendants words to establish intent of joint authorship.

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