New Developments Regarding Orphan and Joint Works Copyrights: Proposed legislation, recent opinions may foster more clarity under copyright law

Given the U.S. copyright law's affection for precision and formality, it can be surprising to learn that no procedure exists to facilitate the use of the large class of works known as “orphan works”—works in any medium for which copyright owners cannot be identified or located.

Likewise, uncertainty has developed in determining whether two parties should be treated as co-authors of a “joint work” which, under the Copyright Act, either may proceed to exploit without the other's consent (subject to a duty to account for a portion of the resulting proceeds)—often an informal, undocumented course of dealing between individuals that can result in those parties being wedded for the life of copyright in the joint work.

But new proposed legislation addressing orphan works, and recent court opinions dealing with joint works, may bring greater clarity (if not universal satisfaction) to these dysfunctional copyright families.

Orphan works

From scrapbook photos found at flea markets to industrial designs exploited without attribution to their creator, orphan works represent a huge body of creative work that later users have understandably been reluctant to exploit, lest they subsequently be faced with exorbitant claims for money damages (or worse, demand that the new user's work be enjoined until such time as the orphan work is removed).

Photographers and other rights owners have long argued that any mechanism allowing use of orphan works without prior approval of the copyright owner would result in widespread abuse, while documentarians and Web designers respond that freezing such use only frustrates the underlying purpose of the Copyright Act: that owners of copyrighted works benefit financially from use of their works.

Two years after an effort to govern the use of orphan works died in 2005-06 Congress, new proposals were introduced in April 2008 in both the House and the Senate. The Senate bill passed on September 26, but the bailout legislation affecting the financial markets has probably sidelined House action until after the fall elections. Click here for full text of the House bill.

Both bills require that users of such works, prior to commencement of such use, must perform and document a “diligent” search for the copyright owner. The Register of Copyrights is instructed to maintain “current statements of best practices for conducting and documenting a search.” However, the House bill goes further and requires users to register their search efforts in a “notice of use archive” to be maintained at the Copyright Office, including the following information:

• The type of work being used, as listed in section 102(a) of the Copyright Act
• A description of the work
• A summary of the search conducted
• The owner, author, recognized title, and other available identifying element[s] of the work, to the extent the infringer knows such information with a reasonable degree of certainty
• A certification that the infringer performed a qualifying search in good faith under this subsection to locate the owner of the infringed copyright
• The name of the infringer and how the work will be used

It is not clear from the text of the House measure whether this “archive” would be closed (i.e., disclosed only when a user is sued) or open to all, although the latter alternative raises serious privacy concerns and the prospect of abuse by “copyright trolls.”

If the orphan work is used after such a search is conducted, and the owner subsequently surfaces, both bills bar the imposition of monetary damages, attorneys' fees or expenses, and instead require only the payment of “reasonable compensation” for the use of the infringed work. Reasonable compensation is defined as “the amount on which a willing buyer and willing seller in the positions of the infringer and the owner of the infringed copyright would have agreed with respect to the infringing use of the work immediately before the infringement began.”

The bills also contain an important limitation on injunctive relief when the orphan work is incorporated into a larger work with significant original expression (such as the incorporation of a photograph into an audio-visual documentary). This limitation provides an important safe harbor to users who would otherwise have no choice but to forego use of the orphan work rather than risk loss of a substantial investment in the larger work.

A number of prominent organizations representing commercial photographers and other visual artists (including the Advertising Photographers of America, the National Press Photographers Association and the Stock Artists Alliance) have stated they cannot support the bills in their current form, focusing in particular on what they view as too broad a definition of works truly “orphaned” (for example, some have suggested no work should be deemed an orphan work unless it is at least 25 years of age or older).

It remains to be seen whether, and if so in what form, the copyright laws will be amended to permit such use. Interested clients should consult with a member of our Entertainment Transactions Group to remain informed as to the progress of this legislation.

Joint works

Section 101 of the Copyright Act defines a “joint work” as “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.” Divining this intent in the absence of a collaboration agreement expressly stating the parties' respective rights has led to a split among the Courts of Appeals, but recent opinions indicate a growing consensus forming around the approach of the 2nd Circuit in the “Rent” case, Thomson v. Larson, 147 F.3d 195 (2d Cir. 1998).

The 2nd Circuit test examines the “factual indicia of ownership” to determine whether each of the parties “fully intended to be co-authors.” In this case, dealing with the hit Broadway musical “Rent,” plaintiff Thomson acted as a creative consultant to author Jonathan Larson and was found by the trial court to have contributed more than a de minimus quantity of copyrightable material to the finished script.

However, the parties never entered into a written agreement for Thompson's services before Larson's death on the eve of the play's opening. Thompson argued that she was entitled to joint author status, but the court rejected this argument based on Larson's sole decision-making authority with respect to the play, the fact that only he was credited as author, and only he entered into agreements for production of the play.

By contrast, the 9th Circuit in Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 2000) focused simply on which party “superintends” the work, as opposed to engaging in the broader factual inquiry required by the 2nd Circuit. Aalmuhammed, a devout Muslim, was asked to assist Denzel Washington in his preparation for the starring role in the Spike Lee/Warner Bros. motion picture “Malcolm X.” The producers did not enter into a written “work for hire” agreement with Aalmuhammed as would arguably be the norm for significant services to a major motion picture, and plaintiff established that he rewrote several specific passages of dialogue and wrote scenes relating to Malcolm X's Hajj pilgrimage.

As with the “Rent” dramaturge, Aalmuhammed's contribution was more than de minimus and clearly copyrightable in its own right. But the 9th Circuit avoided an intricate examination of the “factual indicia of ownership” and was able to rule against Aalmuhammed by limiting authorship status to “the person to whom the work owes its origin and who superintended the whole work,” the “master mind.” The court noted: “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.” Under this reasoning, a party not in “control” who nevertheless contributes significant copyrightable content to the whole would never qualify as a joint author.

The court in Berman v. Johnson, 518 F. Supp. 2d 791 (E.D. Va. 2007) illustrates the current preference for the 2nd Circuit approach, notwithstanding its more fact-intensive analysis. In this dispute over the authorship of the documentary film “Your Mommy Kills Animals,” defendant Johnson had terminated his relationship with plaintiff Berman midway through production and ultimately released the film in substantially different form. Defendant argued that he was clearly the only party in “control” and therefore the sole author of the work, citing Aalmuhammed.

The court, noting the dispute “highlights a circuit split regarding the requirements for joint authorship,” rejected the 9th Circuit's approach as “susceptible to inequitable manipulation” and embraced the 2nd Circuit's focus on whether the parties originally intended to be co-authors and the fact that each of the parties clearly contributed copyrightable content to the resulting work. Plaintiff was accordingly awarded a declaration that she was a joint author of the film.

While Berman and other recent opinions suggest that the 2nd Circuit's approach is dominant, writers, composers, visual artists and others with an appetite for collaboration should realize that there is still no substitute for a collaboration agreement that clearly expresses the parties' intent and provides a clear procedure for decision-making and allocation of resulting revenues.

The members of our Entertainment Transactions Group are available to assist with your questions and concerns in this area.