A narrow view of creative cooperation: the current state of jount work doctrine.

• Author: Lape, Laura G.

1. Introduction

   Let's start with a classic example transposed to a new setting. A contributor posts to a listserv(1) what looks like a poem, or maybe lyrics. A second subscriber adds a melody and posts the result. The first or second contributor then markets the song and makes a mint. Who owns the copyright to the song? Resolution of this question depends upon the copyright doctrine of joint works, which governs collaborative creation.(2)

   Increased opportunities for collaborative efforts have developed during the tenure of the Copyright Act of 1976 in fields such as scientific research, the computer industry, and the entertainment industry.(3) In particular, interest in and use of computer-mediated collaboration has grown within the past decade.(4) Such computer-mediated collaboration includes forms such as video conferencing, desktop conferencing, and electronic mail applications. The growth of collaborative behaviors, combined with judicial restriction in the scope of the work-made-for-hire doctrine,(5) increase the significance of joint work doctrine under the Copyright Act.

   This Article addresses the creation of joint works under the current Copyright Act, focusing on the courts' restrictive view of joint works. We turn then to a specific context, the Internet, to examine the impact of the use of express language reflecting intent regarding future use of transmitted material. Part II of this Article traces the history of joint work doctrine prior to the 1976 Copyright Act. Part III examines the courts' treatment of joint works under the 1976 Act. Finally, Part IV analyzes the effect of the presence and absence of express language regarding future use of matter communicated via the Internet.

2. Joint Work Doctrine Prior to the 1976 Act

   The current copyright act, the Copyright Act of 1976, makes a break with prior law as to the definition of joint works in several respects. First, the 1976 Act contains the first statutory definition of a joint work, which was not defined in any prior act.(6) Secondly, the 1976 Act was intended to abandon one development of prior case law, the much criticized 1955 decision of the Second Circuit commonly known as the 12th Street Rag case.(7) Given the relative discontinuity between joint works under the 1976 Act and the prior case law, why should we devote any time to the definition of joint works before 1976? First, familiarity with prior judicial treatment of joint works aids our understanding of congressional intent in adopting the 1976 Act since prior case law was the backdrop against which Congress acted.(8) Further, there was not a complete break between the 1976 Act and prior case law. The legislative history of the 1976 Act indicates that the Act's definition of a joint work was intended to be generally consistent with case law prior to the 12th Street Rag case.(9) Finally, we may examine case law prior to the 1976 Act to search for any precursors to the limitations recently imposed by courts on the definition of a joint work in the form of requirements of 1) an independently copyrightable contribution and 2) an intent to be joint authors.(10)

   It has been asserted that the doctrine of joint authorship under United States law owes its origins to Maurel v. Smith,(11) a 1915 case decided by Judge Learned Hand.(12) Learned Hand himself created that impression in Maurel by noting that he had "been able to find strangely little law regarding the rights of joint authors" and by relying on only one joint works case, an 1871 British case.(13) However, nineteenth-century judicial opinions show that courts assumed that joint authorship could be created, although their opinions did not specify how.(14) For example, nineteenth-century opinions refer to parties as joint authors or report allegations of joint authorship.(15) Thus, nineteenth-century parties were treated as joint authors by both the parties themselves and the courts.

   What was missing until the early twentieth century was an attempt by the judiciary to expressly define what constituted a joint work. The 1909 Act cases used a "common design," the intent to contribute to one work, as a basis for finding joint authorship.(16) Along with common design, however, early cases discussed inseparability, that is, how well blended the contributions were in the final product, as a basis for finding joint authorship.(17) For example, Learned Hand reasoned in Maurel that the scenario and dialogue of an opera were parts of a joint work, in part because a scenario followed as much as this goes into the bone and flesh of the production."(18) Learned Hand meant that the scenario and dialogue could not be teased apart. Distinguish this use of inseparability from use of the terms "inseparable" and "indivisible" to describe the legal, rather than the artistic, result, the legal result being the melding of rights which is joint authorship.(19)

   A series of 1909 Act cases addressed the question whether co-authors need have worked together and at the same time.(20) In the leading case, Edward B. Marks Music Corp. v. Jerry Vogel Music Co.,(21) Learned Hand clarified that all that is needed is intent for the contributions to be used in a single work: "[I]t makes no difference whether the authors work in concert, or even whether they know each other; it is enough that they mean their contributions to be complementary in the sense that they are to be embodied in a single work to be performed as such."(22) The Marks holding was stretched beyond what came to be considered the breaking point in 1955 in Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., known as the 12th Street Rag case.(23) In that case, the Second Circuit held that the intent to contribute to a larger work can be conceived long after the first contribution has been produced, and can be conceived by someone other than the author of that contribution.(24) Note that the Marks rule is consistent with the definition of a joint work adopted in the 1976 Act, while the 12th Street Rag rule is not.(25)

   The requirement imposed by courts beginning in the late 1980s, that each joint author make an independently copyrightable contribution, is not found in the 1909 Act cases.(26) However, two opinions appear late in the tenure of the 1909 Act, in which the Southern District of New York mentioned in passing, and the Second Circuit placed reliance on, the parties' failure to consider themselves joint authors in order to resist the 12th Street Rag doctrine.(27) Thus, these cases may be precursors to the requirement of an intent to be joint authors imposed by courts beginning in the late 1980s. Note that these cases are not direct precedent to the 1976 Act joint work cases, because that Act's legislative history indicated that its definition of a joint work was to be consistent with the line of cases prior to the 12th Street Rag case.(28)

   In the first of these two cases, Picture Music, Inc. v. Bourne, Inc.,(29) it was only under the Second Circuit's 12th Street Rag doctrine that the song in question could be a joint work, since the assignee, Berlin, rather than the original author, conceived the intention for the second contribution to be made.(30) The Southern District of New York, unhappy with a finding of a joint work, which seemed compelled by the 12th Street Rag precedent, noted that that case had been criticized by commentators and would be overruled by what would become the 1976 Act.(31) The court then relied primarily on the insufficiency of the second contributor's contribution to find that the song was not a joint work.(32) After stating its conclusion and rationale, the court added that "[i]t was not the intention of the parties that [the second contributor] should become a joint owner of the source material or of the popular song so closely derived therefrom."(33) The court continued, in what appears to have been intended as explanation, that the second contributor did not become a co-owner of the source material because the original work was not transferred to her," nor did she become a co-owner of the final song because she had not made a "significant contribution."(34) The court's preceding reference to the parties' lack of intention to become joint owners is inexplicit at best.(35)

   In Gilliam v. American Broadcasting Cos.,(36) the Second Circuit's partial reliance on the parties' lack of intent to be joint authors in order to conclude that a finding of no joint authorship was likely, is only slightly more illuminating.(37) After a very brief discussion, the court concluded that the "matter is subject to further exploration at the trial," but would not bar a preliminary injunction.(38) The Second Circuit apparently believed that the 12th Street Rag doctrine, criticism of which the court noted, was necessary for a finding that the television program at issue was a joint work.(39) In fact, joint authorship could have been found in Gilliam under Marks, since the writers had intended, at the time they wrote the script, that it would be embodied with other contributions in a single work, the television program.(40) Further, the contract provision that the script writers would "retain all rights in the script not granted in the agreement," used by the court as evidence that the parties did not consider themselves joint authors," in fact functioned much more directly as an agreement by the television producer to assign any joint authorship rights it might have, other than those specified in the agreement, to the script writers.(41) Precursors under the 1909 Act to the requirement of intent to be joint authors appear to be limited to the brief and ambiguous discussions in Picture Music and Gilliam.

   The picture of the definition of a joint work as of the adoption of the 1976 Act, then, is one of a doctrine relatively recently developed, with the definition expanding beyond the tolerance of the courts and Congress, but with little in the way of precursors to the limits on joint...