This article is written by Vyom Joshi, pursuing LLB (Hons.) in Intellectual Property Rights from Rajiv Gandhi School of Intellectual Property Law, IIT KGP.

Introduction

We, humans, are intellectual beings, and we utilize this intellect for creating original copyrightable work. While creating such copyrightable work, we discuss and review our work with others based on which we improve it. But does this discussion and reviewing entitle them joint-authorship in our work? Can they also claim economic rights available to the original author?

These questions were dealt with in detail in the seminal case of “Erickson v. Trinity Theatre, Inc.:13 F.3d 1061”, which was decided by the Court of Appeals for the Seventh Circuit in the year 1994. This article sheds light on the concept of Joint Authorship as discussed in Erickson v. Trinity Theatre, Inc.

Facts of the case

Plaintiff Karen Erickson in the present case sought preliminary and permanent injunction action against Defendant Trinity Theatre to prevent them from performing three plays and using two videotapes to which she owned the copyright. The three plays in issue were: “Much Ado (Much Ado About Shakespeare)”, “Time Machine (The Theatre Time Machine)”, and “Prairie Voices (Prairie Voices: Tales from Illinois)”. The two videotapes in dispute were of the plays “Time Machine” and “Prairie Voices”.

The plaintiff, Ms. Erickson was one of the founding members of a theatre company that later became known as Trinity Theatre. She worked in various capacities in Trinity Theatre between 1981 and January 1991 as a playwright, artistic director, actress, play director, business manager, and member of the board of directors.

Matter in dispute

1. Much Ado: This play was compiled in the year 1988, and much decisions about its content were made during its rehearsals. One actor, Michael Osborne of the Defendant Theatre, contended that two portions of the play’s copyrighted script, i.e., the introduction to the play and a passage to Macbeth resulted from his suggestions. He further averred that editing of the text of script was done mainly by consensus, and when no consensus was reached Plaintiff had the final decision. He also stated that he understood that the play was being created for the Defendant Theatre and not for Plaintiff alone at the time of its creation.
2. Time Machine: Plaintiff started developing this play in the year 1977. She produced it independently of Defendant Theatre in the year 1984 with two other actors. These actors contended that the development of melodrama and improvisational scene for this play was a collaborative effort as they all worked with an idea and loose structure to create them. One of the actors, Paddy Lynn, also conceded that Plaintiff took all of the notes from rehearsals and compiled them into a script on which she later got copyright. However, Lynn accepted that nothing was included in the script without Plaintiff’s approval. Initially, Plaintiff attributed the play’s script both to herself and Ms Lynn for which she received some royalties. But later, Plaintiff changed this position of hers, stating it was a correction to an initial error.
3. Prairie Voice: Plaintiff developed this play in the year 1990. She initially intended this play to be a collaborative effort where each actor would contribute a story for the play. But, as none of the actors initiated the collaboration, she based the play entirely on her stories. Here, also Plaintiff worked with actors in improvisational format, i.e., working on an idea and loose structure to create the play. The dialogues for the play were provided by other actors. One of the actors, Ruth Ann Weyna, contended that writing the play was a creative process as it involved many actors.

Contentions raised

The Defendant Trinity Theatre contended that all the three play were joint work as Plaintiff created these in collaboration with the Theatre members. The Theatre asserted that they got the rights over these plays and videotapes from the joint-authors of these works, i.e., its members. They based their contention on § 101 of the United States Copyright Act of 1976, 17 U.S.C., which states: 

“A “joint work” is 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.”

The Defendant Theatre further submitted that the standard for determining joint work should be “collaboration alone”. Following this standard, Defendant Theatre would get rights over the use and production of these plays as there was a collaboration between Plaintiff and Defendant Theatre’s members.

Plaintiff contended that the standard of determining joint work should be of “copyrightable subject matter” test. Following this approach, none of the defendant theatre’s members could be considered joint authors as none of them contributed any independently copyrightable subject matter in these plays.

Approaches examined by the court

The Seventh Circuit Court examined two approaches closely to understand the concept of joint authorship; these approaches were: 

1. Professor Nimmer’s De minimis Approach: According to this approach, for achieving the status of the joint author, one needs to show that he made more than a “de minimis” contribution. “De minimis” here requires “more than a word or line must be added by one who claims to be a joint author”. Thus, according to this approach, if in a joint work, one contributor provides an uncopyrightable idea, and the other contributor incorporates that idea into a literary expression, then both can be made joint authors.
2. Professor Paul Goldstein’s Copyrightability Approach: According to this approach, for claiming joint authorship, each author must show that his contribution was an original expression that can be copyrighted independently of the composite work. That is, “a collaborative contribution will not produce a joint work, and a contributor will not obtain a co-ownership interest unless the contribution represents original expression that could stand on its own as the subject matter of copyright”. Furthermore, it must also be shown that contributors at the time of the creation of work intended to be joint authors.

Reasoning followed by the court

The Court accepted and applied Professor Paul Goldstein’s “copyrightability” approach in determining joint authorship as it not only advances creativity in science and arts but also allows unhindered exchange of ideas protecting authorship rights in a consistent and predictable manner as intended by the U.S. Copyright Act, 1976 and Article I, Section 8, Clause 8 of U.S. Constitution. 

The Court applying the “Copyrightability subject matter” test asked the Defendant Theatre to prove these two conditions for claiming joint authorship:

1. The parties intended to be joint authors.
2. The individual contributions were independently copyrightable. 

For “Much Ado” and “Prairie Voices”, the Defendant Theatre and actors could not pass the first test of proving intention to be joint authors. They failed because neither Plaintiff nor Defendant Theatre nor the actors considered themselves to be joint authors, which was evident from the licensing agreement entered between Plaintiff and Defendant Theatre for the performance of these plays. 

An additional reason for denying joint authorship for “Prairie Voices” was that it was entirely based on Plaintiff’s stories. The Court also held that mere improvisation does not entitle actors joint authorship as final inclusion of these contributions into the plays was entirely Plaintiff’s decision.

The decision with regard to “Time Machine” was problematic for the Court as evidence pointed that Plaintiff too initially intended the work to be joint work as she attributed the script to Ms Lynn and herself. But this claim also failed as it could not pass the second test, i.e., the independently copyrightable contribution test. They failed this test because ideas, suggestions and refinements standing alone are not the subject matter of copyright. Therefore, Defendant Trinity Theatre could not establish joint authorship or rights over these plays.

Conclusion

This important case in Copyright law demystified the concept of joint authorship in collaborative work. While applying Professor Paul Goldstein’s Copyrightability test, the court held that the party need to prove the intention to become joint authors and the independent copyrightability of their contribution for claiming joint authorship.

Thus, collaborators in future work must enter into an agreement to make their intention to collaborate clear and to avoid post-collaboration disputes. This becomes important because joint authors hold undivided interests in their work and have the right to use and license the use of work irrespective of the extent of their contribution.

References

1. https://casetext.com/case/erickson-v-trinity-theatre-inc
2. https://www.law.cornell.edu/wex/copyright
3. https://cyber.harvard.edu/metaschool/fisher/joint/links/cases/erickson.html

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