Tuesday, March 14, 2006

Joint Authorship Problems

There is agreement on many aspects of joint authorship, but not all. It is generally agreed that in the United States, joint authors are tenants in common, meaning all own an undivided proportional share in the entirety: 2 authors 50%, 3 authors 33 1/3% etc. Joint authors are not liable for infringement for using the work themselves, and are subject only to a (state law) duty to account for any profits earned. Joint authors can engage in non-exclusive licensing without the others' permission and the licensee is immune from suit by the other joint authors. A joint author may sell its proportional interest without the permission of the others, but cannot engage, solo, in exclusive licensing (which is the same thing as an assignment of the right licensed).

It is also settled, contrary to Nimmer, that to be a joint author one must contribute a modium of expression, and not just ideas, and that if one does so, the proportional share is calculated per capita and not on the extent of the contribution made, meaning that if there are two joint authors and one contributed 10% of the expression that joint author nevertheless owns a 50% interest. It is also agreed that joint authors can vary their proportional interest, but that such an agreement is a transfer of copyright, requiring compliance with Section 204.

One area of disagreement is Goldstein's view that to be a joint author one must contribute expression which can stand on its own as a copyrightable work. That view is based on a misreading of the Second Circuit's Childress v. Taylor opinion, and also reads out of the statute inseparable joint works, leaving only interdependent ones. One unsettled and probably insoluble problem is a joint work created by a private individual (or company) and an employee of the United States acting within the scope of his or her employment. Section 105 excludes from protection works of the United States government, but what happens when only one author is a government employee? This problem also arises with bootlegs, for example if Trent Lott were to sing in a barbershop quartet at the Capitol with private individuals.

7 comments:

Anonymous said...

The joint Govt.-private author problem is one that arises regularly in scientific publishing, since nearly all journals nowadays require a transfer of copyright as a condition for publication. Most publishers have chosen to proceed as if the private authors have some ownership interest that must be assigned to the journal. The US government's position on this issue is about as clear as mud.

I have a philosophical objection to the idea that an entire work can be injected into the public domain because one of, say, six authors happens to be a government employee, but that doesn't mean it isn't the case.

Ownership issues rarely seem to arise in scientific publishing because of the low commercial value, but this particular conundrum is gaining steam as more and more journals go online, and the open-content publishing movement gains traction.

I suspect the SC is going to have to address this someday.

joshua wattles said...

Almost all commercial uses on the Internet of pre-existing copyrighted works from the entertainment industries do not require exclusive rights as part of the intermediaries’ distribution model. Many of those works are works of joint authorship and in many instances the licensee would be able to go forward with use by simply obtaining the approval of one joint author. In the non-Internet based traditional distribution models there has been virtually no reliance on licensing through single joint authors even though there are many instances in which non-exclusive rights would be sufficient.

As the old models loose their dominance, it will be interesting to track whether licensing practices shift. It would seem that there would be an incentive for one joint author to license the whole and act as paymaster for the rest except that very frequently the contractual backbone either assigns licensing authority to a specific entity or has all of the joint authors agree to, in effect, license only as a group. I would expect that these contractual relationships by and large among joint authors specifying licensing authority are not section 204 transfers. As a result, there is no incentive to tell anyone about who has that authority. No registrations on the work, no registrations on the “transfers” and no common database that can be readily mined results in a very poor licensing environment for users hoping to act legitimately.

The Berne system that does away with formalities functioned in business environments abroad where whole categories of intellectual properties were made available through blanket collective licenses by organizations that maintained deep records on ownership to enable distributions of licensing proceeds. The United States lags in this respect and I don’t believe there was an adequate understanding of the impact dumping formalities would have in a different business environment.

William Patry said...

I share Anonymous's discomfort, and it is heightened when the USG, to circumvent Section 105, hires a private contractor and forces the contractor to assign rights to it.

C.E. Petit said...

I'm not sure that the barbershop quartet example is a good one, unless either:

* Singing in public is within the scope of a senator's duties; or

* The subject of the song is somehow legislation

All of which gets rather interesting for military officers. For example, one wouldn't ordinarily consider that a scholarly article on, say, election practices near military bases in Alabama, Georgia, and Florida during WW2 would fall within the ordinary duties of a military officer. It might, though, for an academy instructor in history, or for a command historian. (And yes, this is an example I observed personally.)

John Noble said...

Thought-provoking, as always.

Why is it a "circumvention" of sec. 105 when the USG takes copyright to commissioned works by assignment? What was the legislative intent if not just that?

Doesn't the proviso address the awkwardness and uncertainty of license terms that assure the USG's full authority to exploit all of the copyright holder's rights, including the right (if not obligation) to effectively dump the work into the public domain by non-enforcement? Doesn't assignment of the copyright approach (or at least allow), as nearly as possible, the de facto equivalent of the public domain status of works authored by USG employees.

There may be a circumvention of legislative intent to the extent the USG uses the proviso to restrict the reproduction and distribution of commissioned works; but I don't know how often that happens, and it might be justified when it does. I can imagine, for example, a software developer who is required by FIPS contracting regs to assign the copyright in commissioned software to the USG, and who demands that the USG license back the exclusive right to re-license the work to protect its private market for substitutes.

Or the government might want to encourage the contractor to create a private market to share continuing development costs and assure continued improvements.

Maybe the most obvious reason to allow the USG to take assignment of copyright to commissioned works is so that it can license the reproduction and distribution to the government agencies and government contractors for whom they commissioned the work. I haven't gone to the legislative history, so I don't what they had in mind with this proviso, but it addresses one obvious problem with works in the public domain -- you can't find them on the shelves in the bookstore.

John Noble

William Patry said...

John:

My understanding of the provision on permitting the USG to own copyright by assignment was to cover those rare few who believe they haven't given enough in taxes already and want to give more. The legislative history on Section 105 rtalks about Congress' decision not to bar all independent contractors doing work for the USG from owning copyright, but even there the reports indicate there should be no copyright when the USG is farming out something it could have done itself, which was the siutation, I believe, in the cases I was referring to.
I agree with C.E. that the barbershop quartet performance may not involve the scope of Trent's duties: he does many private performances (along with Ashcroft), but for the sake of the discussion, I was placing it in the Capitol as a part of an official occasion. No doubt others could think of hypos more squarely on point.

John Noble said...

My inclination on the hypo would be to construe the plain language of sec. 105 -- "work of the United States Government" -- to exclude a joint work because it is not just or entirely a work of the United States government.

Then the issue is whether the government acquires an interest in the copyright as a joint author. The answer might be 1) no, because it did not contribute copyrightable expression, per the misreading of Childress; or 2) yes, because sec. 105 does not bar copyright protection, and sec. 201(a) makes the government a "co-owner of copyright" when there is a copyright.

Even if the government is not a "co-owner of copyright," you can make the argument that it has the same /equitable/ rights and remedies as a tenant in common, i.e. accounting and immunity, just because they arise in equity and legal title doesn't distinguish the equities; but not the /legal/ right to grant a non-exclusive license or sell a proportional interest. In any event, as long as sec. 105 does not bar copyright protection for a joint work, the government can contract outside the Act's default rules for anything up to and including an absolute assignment of the copyright.

John Noble