Joint Author: Your Surprise Partners!

Understanding the legal definitions of joint and derivative work may save legal headaches in the future. The two scenarios below represent situations that do arise and are based on some rather obscure nuances of the copyright law.

Scenario I - The Joint Author

For a number of years you've worked closely with an assistant. Over time, you've become comfortable with the assistant; he has gotten to know your work, style and methods well. You have given him more responsibility and allowed him more participation in the creation of your works. Time passes and there is a parting of the ways between you and your assistant. Shortly after he leaves, to your great surprise, you start seeing your images appearing on products that you had not licensed. Full of righteous indignation, you contact your lawyer, who sends out a strong "Cease and Desist" letter. Instead of an apology from the manufacturer of the products embodying your art works, you get a copy of a license agreement entered into between the manufacturer and your ex-assistant. In the license agreement, the ex-assistant claims to be an owner of the copyright in the work and is authorized to enter into a nonexclusive license agreement. Your attorney then contacts your ex-assistant who takes the position that he created the work with you and that he is a joint author of the work. That as a joint author, he is entitled to license the artwork on an equal basis with you.

Scenario II - The Derivative Work

You create a clay sculpture and send it to the foundry for casting. The foundry creates an edition of the work for you. The foundry employs many skilled and talented artists who are able to bring about the wonderful effect you had envisioned in the finished work. Unfortunately, you have a falling out with the foundry and, shortly thereafter, you receive a letter from the foundry stating that they are the copyright owners of the limited edition of the sculptures. That is the owners of the copyright in the sculptures, they have the right of distribution and order you to cease and desist from any distribution of the works.

You now wake up and believe that you just had a most awful and impossible nightmare. Alas, both of the above scenarios are real.

The Joint Author. The first situation arises when an assistant claims that the artwork on which they worked is a "joint work." The Copyright Act defines joint work as "a work prepared by two or more authors(1) with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole." Joint works result from joint authorship. Joint authorship occurs when two authors "jointly labor in furtherance of a pre-concerted common design." The contribution of the authors does not need to be equal. No expressed collaboration agreement is required to create a joint authorship situation. What is critical is that the intentions of the parties and their contributions are merged into one unitary work, and are present at the time that the work was created and not at a later time.

When a joint work is created, both authors obtain an undivided ownership right in the whole work. Therefore, both authors obtain the right to use and/or license the entire work, which would include the contributions of both authors. While it is not required that the contributions of the joint authors be equal, the contribution of either author must be more than "de minimis." It must be true copyright authorship; it cannot be simply providing ideas. A joint author must be part of the actual physical creative process.

When working together on an artwork, an artist and assistant(2) clearly intend to create a "unitary whole" (a single art work), therefore, the key element on which the question of joint authorship, thus joint ownership, hinges is intent. The nature of the intent of the parties is paramount. The case law states that the parties must regard themselves as joint authors. It would be up to the individual judge or jury in each case to examine the facts and circumstances to determine the intent of the parties. Even if it were agreed that the artist was to receive full public credit for creating the work, that in and of itself does not mean that the artwork is a joint work. One must search beyond credit.

A look at the literary world is illuminating. An author submits a manuscript to an editor, and while the editor might make significant changes, the editor is not generally considered a joint author. On the other hand, a ghost writer, while receiving no or little credit, without an agreement to the contrary, would usually be considered a joint author.

As a joint author is considered an author, they have the rights of authorship. In the arts, this would translate into having the right to license the underlying artwork in any manner the joint author saw fit. However, the licenses would be restricted to nonexclusive licenses and the parties would be required to provide an accounting of all revenues to the non-licensing joint author. If the assistant licensed the art work, an accounting of a percent (what percent is another open question) of the revenues would have to be made and paid over to the artist. The inverse is also true. Thus, in a situation in which the artist licensed the work and there was a claim by the assistant of joint authorship, the assistant could claim a share of the revenues obtained by the artist.

The Derivative Work. The situation with the foundry is one that would be the same if an artist had a limited edition printed or a photographer had photographs made at a custom dark room. The creation of the new work (the bronze, the print or photograph) is called a derivative work. A derivative work is defined in the copyright law as a work which is based upon one or more pre-existing works. The statute specifically lists "art reproductions" in its definition of derivative works. A derivative work can and often does have a copyright owner who is different than the owner of the copyright in the underlying work. For example, the motion picture studio always owns the copyright in the movie, never the author of the book upon which the film was based.

In a highly publicized "dialogue" a few years ago, the U.S. Copyright office refused to register an artist's limited edition prints in her name. The artist had painted a watercolor and had hired a commercial printer to run off an edition of offset lithographs. The Copyright office insisted that the offset lithographs were derivative works created by the commercial printer and that the commercial printer owned the copyright in the prints and not the artist.(3) The artist, of course, retained her copyright in the underlying work.

In order for derivative work to have been created there has to be a certain level of originality and creativity. In the scenario outlined above, in which a foundry takes a wax or clay model and through much work and skill creates a bronze sculpture, the creativity standard would certainly be met. A traditional print maker or a printer using today's computerized technologies would almost certainly be adding the original elements necessary to create derivative work.

The copyright owner of a derivative work is entitled to the various rights of any other copyright owner unless limited by an agreement with the owner of the underlying work. These rights would include the right to make additional derivative works, the right of public distribution and display, etc. If an artist was confronted with a "Cease and Desist" letter from their foundry or printer regarding the exercise of copyrights in the derivative work, the battle would be over the nature of the underlying agreement between the artist and their fabricator under which the derivative works were created. The rights owned by each party would be fact specific as to each case. However, if the artist did not have a written agreement (or at a minimum a provable in-depth discussion regarding the parties' respective rights), the potential for problems certainly exists.

The solution to both the joint author and derivative work dilemmas can be quite simple. A properly drafted agreement between artists and their assistants or between artists and their fabricators can easily resolve these issues. The language that needs to be incorporated to protect an artist's position does not need to be complex or overly burdened with legalese. It does not even need to be contained in a separate document. It can be included in the normal contract an artist has with his or her fabricator or can be included as part of an employment letter with an assistant which outlines the terms of their employment.

A little forethought and effort can prevent a large number of potential and nasty problems.

1.

0 The Copyright Act uses the term "Author" for all creative parties; for example, artists, writers, sculptors, musicians, programmers, film makers, etc.

2.

0 To be a joint author, the assistant must be working as an independent contractor. If the assistant is an employee, then the artist would automatically own the entire copyright in the work.

3.

0 In that case, the artist, instead of suing the U.S. Copyright office, took the course of least resistance and obtained an assignment of copyrights from the printer. What would have been the situation if her relationship with the printer had not been friendly.