Nexus: joint authorship

Guest Post: Martin v Kogan: Court of Appeal clarifies joint authorship test

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The much anticipated judgment of Kogan v Martin [2019] EWCA Civ 1645 was recently handed down by the Court of Appeal (CA) which revisits the thorny issue of joint authorship of copyright works. Alexandra Mezulanik, a research assistant at UCL IBIL, kindly provides this detailed guest post on the case:

Background facts and the IPEC decision

Readers may recall the first-instance IPEC decision, Martin v Kogan [2017] EWHC 2927, which came before HHJ Hacon (reported here). The core dispute concerned the authorship of the screenplay of the film “Florence Foster Jenkins” about the eponymous American socialite who believed herself to be a talented operatic singer but, in truth, was the polar opposite.

Each side relied upon conflicting accounts of how the screenplay was created. Script-writer, Nicholas Martin, claimed sole authorship of the work. He did not dispute that Ms Kogan – an opera singer with a raft of other creative projects under her belt – had introduced him to the FFJ story, but was adamant that he alone wrote the script. His case was that Ms Kogan was just an encouraging sounding-board and proof-reader, who also provided minor suggestions and background information based upon her musical expertise.

In contrast, Ms Kogan counterclaimed joint authorship with Mr Martin. Although she was frank that she had no input in certain scenes and that Mr Martin was “the main writer and contributed considerably more”, her case was one of creative collaboration and “bouncing ideas off each other at speed”.

Gomez does not court the limelight
and is adamant that he works alone.

The nature of the interaction between the two in the creation of the screenplay was clouded, or perhaps fuelled, by their romantic relationship which coincided with the first three drafts of the play but ended before the final version.

In the first instance, the judge declared Mr Martin to be the sole author and owner of the copyright in the screenplay. He based this on a novel theory which drew a distinction between the primary skills required to create a copyright work and ancillary secondary skills [J/44]-[J/51]. The fact that Mr Martin was the “ultimate arbiter” was relevant, “sometimes highly relevant” though not decisive [J/29];[J/54(9)]. Ms Kogan appealed the IPEC decision [76].

The Appeal

Mabel muses that she prefers
T.S. Eliot’s collection of whimsical
poems which formed the basis for Cats…

This CA decision is packed full of pragmatic guidance on the law of joint authorship in the UK. [This writer salutes the judicial collaboration jointly undertaken by IP-heavyweight Floyd LJ along with Henderson and Peter Jackson LJJ]. It confirms where to draw the line on pen-pushing and clarifies the skills which can be of the essence when considering a literary or dramatic work. Additionally, it underscores that judicial findings of fact must be based upon all of the evidence.

Joint authorship – the law (now succinctly summarised at [53])

The court considered the well-established elements of joint authorship under s.10(1) CDPA 1988 in turn: (1) collaboration; (2) authorship; (3) contribution and (4) non-distinctness of contribution, although the focus was on the first three.

1. Collaboration – there must be a common design [33]

Joint authorship only arises when the work is created as a result of a collaboration between contributors pursuant to a common design, meaning that derivative works do not qualify. “Common design” distinguishes between being a friend/critic (like Ezra Pound to T.S. Eliot’s The Waste Land) and a “collaborator”. It is essential to identify the true nature of the interaction between the contributors in relation to the work. The nature of the work is also important when looking at the skill integral to its creation.

2. Creation and fixation are distinct – the question is not: “who wields the pen?”

Mabel pushes the pen but
Monty controls what goes on paper

It can never be enough simply to ask: “who did the writing?” In a welcome development, the CA backed the approach of Laddie J (“a judge with prolific expertise in the law of copyright”) in Cala Homes v Alfred McAlpine [1995] FSR 818 at p.835 over the narrower one of Lightman J in Robin Ray v Classic FM [1998] FSR 622 at [27]-[28]. The CA affirmed [41]:

It is the skill and effort involved in creating, selecting or gathering together the detailed concepts or emotions which the words have fixed in writing which is protected in the case of a literary or dramatic work, whether the work is one of sole or joint authorship. Too much focus on who pushed the pen is likely to detract attention from what it is that is protected, and thus from who the authors are.

3. The contribution of a joint author must be “authorial” [42]

This element is acutely sensitive to the nature of the work. In this case, the screenplay was a dramatic work where devising aspects like the characters, the plot and dramatic incidents could, in principle, amount to a contribution of an authorial kind.

The question of what is “enough” of a contribution should be judged by the “relatively undemanding” Infopaq test, i.e. whether the putative joint author has contributed elements which expressed their own intellectual creation by making free and expressive choices. The more restricted their choices are, the less likely they are to satisfy the test.

4. Non-distinctness of contribution

Joint authorship depends on the individual contributions being non-distinct. There is no further requirement that the authors must have subjectively intended to jointly author a work.

The Final Say [51]-[52]:

The contributions of two joint authors do not need to be equal. The fact that one contributor has the final say, or is the “ultimate arbiter”, does not preclude joint authorship. It may however affect the relative share of the copyright to which each author is entitled or it may have an evidential bearing on whether there is a true collaboration – but this is not conclusive.

What went wrong at first instance?

The CA held that although the judge had correctly recognised the need for a collaboration and a non-distinct contribution [58], he had wrongly elided these issues. This made some of his later reasoning difficult to follow [55], not least because he had required Ms Kogan to identify her distinct contributions.

“If two people try to solve a crossword puzzle together, it may be easy to say who first uttered the correct answer to a clue, but more difficult to answer who contributed to it when the solution emerged from a prior discussion.” [57] “It is preferable simply to ask whether the joint author contributed a substantial part of the relevant creative skill which is protected by the copyright in the work” [69].

In assessing contribution, the judge’s distinction between primary and secondary skills was “positively unhelpful” since it “tends to imply that less weight is to be given to ideas than to written words, when both are essential components of the work” [65]. Citing scholarly criticism of the judge’s approach (Simone (2019), Copyright and Collective Authorship) the CA agreed that it was wrong to describe non-textual contributions (including character development, plot and dramatic incident) as a secondary skill. These aspects “can be of the essence of a literary or dramatic work” [67];[69].

The court also had interesting comments concerning the copyright works created from a series of drafts and unpleaded points. (For those interested, see [80];[22] and [83]-[85];[144] respectively.)

Minor/major scales: what was the nature of Ms Kogan’s contribution?

The talented Rupert can create
work with his eyes shut.

Having ordered a retrial, the CA stopped short of determining whether Ms Kogan’s contributions were enough to warrant joint authorship, but the message seems reasonably clear. Having listed various examples of Ms Kogan’s creative input to the screenplay which “deserved to be put in the scales”, the court stated [142]:

We consider that it is entirely realistic to suppose that a reconsideration of all the evidence would show that Ms Kogan's contribution was indeed made as part of a collaboration and passed the quantitative threshold for joint authorship.

Such examples included introducing: comedic dialogue from a wide-ranging choice of what Ms Kogan called “musical psychobabble”; the drama of the Lily Pons character and the choice of the Bell Song; and the working idea that FFJ’s character was “into loveliness” in music.

An essential judicial function: When faced with conflicting but largely unchallenged evidence, the CA was persuaded by Ms Kogan’s claim that the judge had treated her evidence wrongly and unfairly, listing numerous inconsistencies [88]-[99]. As a result, he failed to make findings on key issues: was there a collaboration ([109]-[112]) and, if so, what was its precise nature ([103]; e.g. [126])?

The CA emphasised that judges must make “findings of fact based upon all of the evidence”.
Here, the parties’ actions at the outset were highly relevant to the question of collaboration. It was also pertinent that the two were in a personal relationship and living together for much of the relevant time, so that written communications between the two did not paint as full a picture as might be the case, for example, for parties in a commercial relationship. The judge failed to resolve the parties’ conflicting cases, and potentially took certain comments from Ms Kogan out of context (such as her e-mail congratulating Mr Martin on finishing the second draft “from nothing but [his] own talent”) and assumed them to be objectively true, rather than potentially just affectionate encouragement and support. [Gomez detests being in the doghouse so agrees that he too is unlikely to say “Look what you have achieved with all my help”.]

Although deeply conscious that only rarely should an appellate court disturb a lower court’s findings of fact, the CA found that this appeal presented a different problem: the first instance decision lacked key findings of primary fact, which the CA was in no position to make. Moreover, contrary to the judge’s overall impression, the parties’ conflicting evidence could not be described as “honest differences of recollection” since his conclusion of sole authorship was tantamount to declaring that much of Ms Kogan’s evidence was “simply untrue” [70];[105]. The only option, though regrettable, was to allow the appeal and order a retrial [145]-[146];[103]-[105];[142].

Comment

Mabel ponders whether the pen is
mightier than the keyboard when
the making of the work is distinct f
rom its reduction to material form…

This appeal decision is a significant development for minor joint authors, whose contributions may have been unfairly ignored previously. It confirms that the test for joint authorship should not be stricter than sole authorship. This may sound obvious but the facts of a case can quickly complicate matters. The fact that a major author (who likely receives all the plaudits) has contributed more should not diminish the significance of another joint author’s contribution. It will be interesting to see how parties and indeed the courts grapple with such relationships, especially in a digital context.

Respectfully, the judge’s primary/secondary skills distinction almost seemed like an attempt to reduce the arts to a science. Additionally, the judge’s qualification at [J/47] of viewing secondary skills in the light of “other contexts such as commercial success”, seemingly favours popular works and introduces a standard of worth – which the low threshold of originality does not warrant.

Stepping back from this particular case, had the appeal court confirmed ‘composition and selection of colour’ as merely secondary skills, how might this diminish the contribution of artistic works from visionaries like Van Gogh, Sorolla or Hockney? Would those works have the same impact without their iconic arrangement and choice of colours? How could such skills be inferior to those flagged as “primary” ones like the use of a brush?

The idea/expression dichotomy is not a binary concept and hinges on the level of detail arising from the facts of the case. Jacob J (as he then was) made this clear in Ibcos Computers v Barclays Finance [1994] FSR 269, finding it was a “question of degree”, and relied on the words of Judge Learned Hand that “nobody has been able to fix that boundary and nobody ever can” [34].

As for the “ultimate arbiter” – if there is concern of ‘control’ being exercised without appropriate recognition, then this might be best addressed via a contract spelling out the nature of the relationship between the putative authors.

Debates between fixation and creation, the ultimate arbiter and the challenges of a primary/secondary skills test come to light when considering contemporary art which has not been made by the hands of the progenitor of the idea such as Jeff Koons and Damien Hirst.

Finally, it is worth reminding readers that this is not a typical case, nor is it one of the CA being tempted to duplicate the trial judge’s role on appeal. In Fage v Chobani [2014] EWCA Civ 5, Lewison LJ made sage observations on a judge’s role within the hierarchy of the courts at [114]-[115] (covered by the original IPKat here). In particular, the trial judge’s function is: “to reach conclusions and give reasons to support his view, not to spell out every matter as if summing up to a jury. Nor need he deal at any length with matters that are not disputed. It is sufficient if what he says shows the basis on which he has acted.”

A European perspective on paparazzi photographs of celebrities and lawsuits against celebrities over the posting of photographs of themselves

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Over the past few months several media outlets have been reporting on a series of copyright lawsuits filed in the US against celebrities over their social media (in particular: Instagram) feeds [Katposts by Hayleigh here, here, and here].

Whilst some of these lawsuits concerned fairly straightforward issues, that is the publication of third-party photographs portraying third parties [eg, Versace publishing a photograph of Jennifer Lopez wearing Versace: here; or super-model Gigi Hadid posting a picture of her boyfriend Zayn Malik: here], others are potentially more intriguing in that they relate to the publication by celebrities of photographs of themselves.

The first of this series of recent lawsuits is the one concerning the publication, by Gigi Hadid on her Instagram account, of this photograph of herself taken by a paparazzo:

The complaint was eventually dismissed because plaintiff had failed to comply with the registration requirement under US copyright law. Indeed, “the registration requirement is “[a] statutory condition” under which a plaintiff must obtain registration of a copyright in a work “before filing a lawsuit” based on infringement of that work.”

From a substantial standpoint, the first Gigi Hadid copyright infringement case was interesting for the variety of arguments raised by the defendant model, ranging from publicity to fair use and implied licence issues.

In the wake of this case, some commentators have raised the question whether Hadid could have made an additional argument, that is that she would be the joint author of the work on grounds that she did contribute sufficient authorship to the creation of the photographer’s work. Apparently, as of today, there has been no case decided by a US court regarding a joint authorship claim as relating to paparazzi photographs.

What would happen, however, if a case like the Hadid one was litigated in Europe? Let's consider some preliminary issues in this post, concerning in particular copyright subsistence in a paparazzo photograph and the question of authorship.

A European perspective on celebrities posting photographs of themselves without authorization

(1) Originality

The first aspect to clarify in a case in which the photograph at issue is a paparazzo photograph would - or, more likely, should - be whether, indeed, a work of this kind could even enjoy copyright protection at all.

It is apparent that the concept of originality mandated by EU law (or, rather, case law of the Court of Justice of the European Union (CJEU)) requires (way) more than just skill, labour or effort, that is all elements that might be present in a photograph taken by a paparazzo who has waited for a long time for the target celebrity to arrive in a specific place, etc.

What the CJEU case law mandates is that the work at issue is ‘its author’s own intellectual creation’, in the sense that it is the result of ‘free and creative choices’ and ultimately carries the author’s own ‘personal touch’.

The CJEU recently summarized 10 years of EU case law on originality in its decision in Funke Medien [Katpost here]:

[I]t is for the national court to ascertain whether […] the author was able to make free and creative choices capable of conveying to the reader the originality of the subject matter at issue, the originality of which arises from the choice, sequence and combination of the words by which the author expressed his or her creativity in an original manner and achieved a result which is an intellectual creation […], whereas the mere intellectual effort and skill [is] not relevant in that regard

With specific regard to portrait photographs, in Painer the CJEU considered that an author can make ‘free and creative choices’ at different stages of the production of a photograph:

In the preparation phase, the photographer can choose the background, the subject’s pose and the lighting. When taking a portrait photograph, he can choose the framing, the angle of view and the atmosphere created. Finally, when selecting the snapshot, the photographer may choose from a variety of developing techniques the one he wishes to adopt or, where appropriate, use computer software.

Arguably, very few (if any) of these elements are actually ‘chosen’ by the paparazzo when taking a photograph on the street, as his/her actions depend on where the celebrity at issue decides to appear and how he/she decides to behave. It is the celebrity who decides the pose and expression that he/she wishes to assume.

In sum, the unauthorized reposting of a paparazzo photograph might not be even an infringement of copyright due to the fact that copyright would not even subsist in such work.

This said, however, simple photographs like paparazzi photographs could be still protected by applicable sui generis national rights (where available), in accordance with what Article 6 of the Term Directive expressly allows.

(2) Authorship and joint authorship

Assuming that the photograph at issue is sufficiently original, one could consider more closely the argument raised that the celebrity portrayed in the photograph is to be considered joint author of that work.

(Unfortunately), authorship and joint authorship are not (yet) areas of copyright in respect of which the EU (or the CJEU) has undertaken a general harmonization (there has only been some limited harmonization for certain types of works). Recital 14 of the Term Directive sums it up rather bluntly:

The question of authorship of the whole or a part of a work is a question of fact which the national courts may have to decide.

If we take the case of the UK, very recently the Court of Appeal of England and Wales revisited the issue of joint authorship in Kogan v Martin, adopting a somewhat different approach from the one envisaged at first instance [Katpost here]. In its decision, the Court of Appeal revisited the law – or, rather, the case law – on joint authorship and spelled out that there are three key criteria that need to be satisfied:

First, there must be a collaboration between the authors, in the sense of a ‘joint project’;
The second element is authorship. By relying on the position adopted by Laddie J in Cala Homes, the court rejected the view that only those ‘who pushed the pen’ are joint authors: “It is the skill and effort involved in creating, selecting or gathering together the detailed concepts or emotions which the words have fixed in writing which is protected”;
Finally, the contribution made by a joint author must be an 'authorial' one.

The position of the court is intriguing: whilst in the case of a celebrity photographed on the street without any prior warning, it appears unlikely that a collaboration could be envisaged, things might be different at, eg, red carpets, film premieres, awards ceremonies etc, that is in all those situations in which a celebrity knows that there will be photographers and actually accepts to pose for them. In all these instances, in fact, it might not be impossible to advance the view that, indeed, the celebrity at issue is joint author of the photograph:

(3) Image rights

An additional point to consider is not one relating explicitly to copyright, but rather image rights. As readers know, this is a profoundly un-harmonized area of the law, and different approaches are in place across different EU Member States.

Whilst continental European jurisdictions have long-standing histories of image rights protection (and often image rights are also included in national copyright statutes), this is not the case of jurisdictions like the UK, in which protection is only available on a fragmentary basis through reliance on different causes of action, including inherently flexible actions like passing off (as in the Rihanna case [here], the outcome of which heavily depended on the background facts), breach of confidence, and – more recently – misuse of private information, etc.

Kats (with celebrities)
(source: Zimbio)

Conclusion

This post has focused on preliminary copyright issues, notably the question of originality and authorship/joint authorship of celebrity paparazzi photographs (issues like licensing and copyright exceptions and limitations have been left out of the analysis).

Generally speaking, it may be questionable that copyright protection could be successfully invoked for all photographs whose only merit appears to be that of being at the right place at the right. In his decision in the Red Bus case, Judge Birss QC (as he then was) suggested that one thing is a photograph whose composition also includes elements arising from being at the right place at the right time and another thing is a 'mere photograph', that is "an image which is nothing more than the result of happening to click [one's own] camera in the right place at the right time." While the former situation might give rise to originality, the latter would not be enough for copyright protection to arise. In the case of paparazzi photographs taken in the street, where indeed it is mostly about 'being in the right place the right time', the same might be argued.

As discussed, arguments relating to joint authorship, especially in photographs for which the celebrity at issue has actually willingly posed, might not be unconceivable to advance, also considering that the inclusion of the celebrity at issue is what makes the photograph actually 'original' (and valuable): it is not really the background, the lighting, the angle, etc.

What do readers think?

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