Clifford Chance

In October, the English Court of Appeal handed down its judgment in the case of Martin vs Kogan, and in so doing provided a helpful clarification on joint authorship in copyright under English law.

This judgment, including its 11-point elaboration on how to identify joint authorship in copyright, is likely to prove a useful reference point for future cases.

Facts

The case concerned Ms Kogan, a writer and opera singer, and Mr Martin, a screenwriter. The two were involved in a romantic relationship, during which time Ms Kogan suggested they write a screenplay based on the story of Florence Foster Jenkins.

Florence Foster Jenkins was an American socialite and wannabe-Soprano during the 1920s-1940s who has been described by author Stephen Pile as "the world's worst Opera singer". She proved a colourful subject, and the script went on to become an internationally-successful film.

Mr Martin brought proceedings in the Intellectual Property Enterprise Court (IPEC) against Ms Kogan for a declaration of sole authorship. He claimed that he "wrote every word and made every decision" of the screenplay, and that Ms Kogan's participation was merely "to proof read, to provide historical background… to provide many suggestions for and about the music… to provide a very limited number of observations about scenes… to act as a sounding board and provide an invaluable source of encouragement and support."

Although Ms Kogan accepted that Mr Martin was the main writer, she claimed to have made significant contributions to many aspects of the screenplay, including the original idea, the characters, the story and the dialogue. According to her, the screenplay amounted to a work of joint authorship under the Copyright, Designs and Patents Act 1988 (CDPA 1988).

In November 2017, the IPEC granted Mr Martin the declaration of sole authorship. Ms Kogan appealed.

Judgement:

In order to arrive at a decision, the Court of Appeal analysed and summarised the existing law on joint authorship.

Works of joint authorship are defined by s.10 of the CDPA 1988 as being works "produced by the collaboration of two or more authors in which the contribution of each author is not distinct from that of the other author or authors."

The Court of Appeal therefore identified four elements necessary for establishing joint authorship:  collaboration;  authorship;  contribution; and  the non-distinctiveness of contributions.

The Court looked at each of these in turn and summarised what it found to be the essential considerations in establishing each element:

Collaboration:

• A work of joint authorship is a work produced by the collaboration of all the people who created it.
• There will be a collaboration where those people undertake jointly to create the work with a common design as to its general outline, and where they share the labour of working it out.
• Derivative works do not qualify. Works where one of the presumed authors only provides editorial corrections or critique, but where there is no wider collaboration, do not qualify. In addition, ad hoc suggestions of phrases or ideas where there is no wider collaboration do not qualify.

Authorship:

• In determining whether there is a collaboration to create a literary or artistic work it is never enough to ask, "Who did the writing?". Authors can collaborate to create a work in many ways. For example, there may be joint authorship if one person creates the plot and the other writes the words, or if either or both types of labour is shared.
• Joint authors must be authors, in the sense that they must have contributed a significant amount of the skill which went into the creation of the work. Again, it is not correct to focus exclusively on who fixed the work in writing.

Contribution:

• Contributions which are not "authorial" in the above sense do not count. What counts as an authorial contribution is acutely sensitive to the nature of the copyright work in question.
• The question of what is enough of a contribution is to be judged by the Infopaq test, i.e. whether the supposed joint author has contributed elements which expressed that person’s own intellectual creation. The essence of that term is that the person in question must have exercised free and expressive choices. The more restrictive the choices, the less likely it will be that they satisfy the test.

Non-distinctiveness of contribution:

• The contribution of a supposed joint author must not be distinct.
• There is no further requirement (other than that required to show "common design" at point 2 above) that the authors must have subjectively intended to create a work of joint authorship.
• The fact that one of the authors has the final say on what goes into the work may have some relevance to whether there is a collaboration but is not conclusive. The author with the final say must be given credit in deciding on the relative proportions of ownership, for the extra work involved in making those choices.
• It follows that the respective shares of joint authors are not required to be equal, but can reflect, pro rata, the relative amounts of their contributions.

The Court found it “entirely realistic" that Ms Kogan’s contribution was made as part of a collaboration and passed the quantitative threshold for joint authorship. The Court of Appeal therefore sent the case back to the IPEC for a new trial before a different judge.

Analysis

The judgment serves as a reminder of the importance of establishing positions on ownership before collaborating on a work.

In determining whether a work should be considered one of joint authorship, the Court found that collaboration would be established by a joint undertaking to create a work based on a "common design" (even making substantial changes or amendments to a work would not be enough without such a common design).

This highlights the potential for subjective intentions to play a role in an assessment of joint-authorship. If a work is anticipated to be of commercial value, it is prudent where possible (and in this case it was understandably not) to clearly establish at the outset intentions regarding ownership in order to avoid any reliance on determinations of ownership based on authorship.

The remedies sought by the parties to the case are also a good reminder that the effect of joint ownership in some forms of IP can be counter-intuitive. Ms Kogan sought through her counter-claim injunctions which could have had the effect of restraining the film production companies from exploiting the film, and damages or an account of profits for infringement of copyright.

It is often the case that parties agreeing to joint ownership of IP expect that it will allow each party the independent right to exploit the work however they see fit. This however is not the effect of joint ownership of copyright.

While a joint owner may exploit their rights in a work itself, under English law, performing essential commercial actions with the work, such as assigning or licensing of rights in the work, will require the consent of co-owners. As such, joint ownership can prove to be very restrictive despite commercial intent to the contrary.

Roland Scarlett, Trainee, IP Group, contributed to the writing of this article.