BY:Michael I. Rudell
(Originally published in the Entertainment Law column in the New York Law Journal, July 24, 1998.)
The U.S. Court of Appeals has upheld a lower court’s decision rejecting the claim by a dramaturge that she is the co-author of the musical “Rent” on the ground that she failed to establish that the principal playwright, Jonathan Larson, intended that there be a co-authorship relationship.1 In its decision, the Court discusses but does not decide whether a person who makes more than a de minimis copyrightable contribution to a work, but who does not meet the requirements of co-authorship, nevertheless retains any rights of interest in his or her own contribution.
The proceedings involve the claim of Lynn Thomson that she was a co-author of “Rent” and that she never assigned, licensed or otherwise transferred her rights. Her amended complaint alleges that she developed the plot and theme, contributed extensively to the story, created many character elements, wrote a significant portion of the dialogue and song lyrics, and made other copyrightable contributions to the work. She asks that the Court declare her a co-author of “Rent” and grant her 16% of the author’s share of the royalties. In July, Judge Kaplan, in a decision from the Bench, concluded that Thomson was not a joint author of “Rent” and dismissed the remainder of her complaint. (The background of the case and analysis of the lower court decision appeared in this column on September 26, 1997.2) The lower court used as the basis for its decision the reasoning contained in Childress v. Taylor3 and the Court agrees that the Childress test was properly applied to the facts of the instant case.
In its discussion, the Court notes that the Copyright Act defines a “joint work” as one prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole. The House Report notes that the touchstone of the statutory definition is the intention at the time the writing is done that the parts be absorbed or combined into a integrated unit. If the parties are joint authors they are entitled to equal undivided interests in the whole work; each joint author has the right to use or to license the work as he or she wishes, subject only to the obligation to account to the other joint owner for any profits that are made.
The Childress case sets forth standards for determining when a contributor to a copyrighted work is entitled to be regarded as a joint author if the parties have failed to sign any written agreement dealing with co-authorship. Explaining why a more stringent inquiry than the language contained in the Copyright Act would seem to be required, the judge in Childress stated: “An inquiry so limited would extend joint author status to many persons who are not likely to have been within the contemplation of Congress. For example, a writer frequently works with an editor who make numerous useful revisions to the first draft, some of which will consist of additions of copyright expression. Both intend their contributions to be merged into inseparable parts of a unitary whole, yet very few editors and even fewer writers would expect the editor to be accorded the status of a joint author, enjoying an undivided half interest in the copyright of the published work.”
The potential danger of allowing anyone who makes even a minimal contribution to the writing of a work to be deemed a statutory co-author as long as the parties intended the contributions to merge motivated the Childress Court to set forth a two-pronged test. A person claiming co-authorship must establish that each of the putative co-authors (1) made independently copyrightable contributions to the work and (2) fully intended to be co-authors.
The lower court concluded that Thomson made at least some non-de minimis copyrightable contribution. It then decided the case on the basis of the second prong – mutual intent of co-authorship.
The decision notes that Childress and its progeny do not explicitly define the nature of the necessary intent to be co-authors. The test of co-authorship will vary depending on specific factual circumstances. The Childress opinion emphasizes that the requirement of intent is particularly important when one person is indisputably the dominant author of the work and, in this respect, care must be taken to guard against the risk that a sole author is denied exclusive authorship status simply because another person renders some form of assistance.
The Court analyzes the following areas to ascertain whether Larson intended to be co-author with Thomson: decision-making authority, billing, written agreements with third parties and additional evidence.
An important indicator of authorship is a contributor’s decision-making authority over what changes are made and what is included in a work. The lower court determined that at all times Larson retained and intended to retain sole decision-making authority as to what went into “Rent.” It took note of Thomson’s statement that she was “flattered that [Larson] was asking [her] to contribute actual language to the text,” and also that the agreement between Larson and the New York Theatre Workshop expressly stated that Larson had final approval over all changes to the play and that all such changes would become his property.
In discerning how the parties view themselves in relation to a work, the way in which they provide credit or billing to themselves is significant. Thomson concedes that she never sought equal billing with Larson, but argues that she did not need to do so in order to be a statutory co-author. The district court found that the billing issue was unequivocal because every script brought to its attention says “Rent,” by Jonathan Larson. Further, the biography he submitted for the playbill, nine days before he died, lists himself as author/composer and Ms. Thomson as dramaturge.
Regarding agreements with third parties, in a contract he entered into with the New York Theatre Workshop, Larson is identified as the author of “Rent” and no mention is made of Thomson. That document also incorporates the terms of a prior one, which states that Larson shall receive billing as sole author.
Other evidence also indicates Larson’s lack of intent to make Thomson a co-author. For example, he “absolutely, vehemently and totally” rejected the suggestion of the artistic director that he work with a book writer and was steadfast in his determination to make “Rent” entirely his own project.
Evidently, Larson understood the concept of co-authorship because he used the term “co-author” on two separate copyright applications for different versions of a screenplay he wrote. He also used that term in a 1993 agreement with Billy Aronson, which provided that Aronson would not be considered a co-author of “Rent.” On the basis of this evidence, the district court found that Larson understood the phrase “co-author” and there was absolutely no evidence whatsoever that he regarded himself as a co-author with Ms. Thomson.
Considering the entirety of the evidence, the district court concluded that Mr. Larson never regarded himself as a joint author with Ms. Thomson. The Court accepts the district court’s application of the Childress standards to the evidence before it and upholds its finding that Larson never intended to be a co-author with Thomson.
The decision next discusses the alleged copyright interest of Thomson. The Copyright Act states that a copyright in a work protected thereunder vests initially in the author or authors of the work. Each author’s rights in a joint work are non-exclusive, whereas a sole author retains exclusive rights in his or her own work.
The Court states that in this respect, the instant case presents somewhat of a conundrum.” Unlike most dramaturges who do not have any copyright interest in the work on play scripts they perform because either they have signed agreements waiving copyright ownership or they have no copyright interest under the work-for-hire doctrine, Thomson was not a party to a written agreement with Larson and he never asked her to state that her contribution would be a work-for-hire or that she would own no copyright in the work she created.
Thomson argues that if she is not a joint author of “Rent” then she must have all of the rights of a sole author with respect to her own contribution. She asserts that the only alternative to finding co-authorship is to split a co-created work into its components — i.e., she must be entitled to withdraw her purported contributions.
Larson’s heirs contend that under Childress copyrightable contributions by an editor or another person retained to assist an author belong to the author absent mutual co-authorship intent. In the alternative, they claim that even if, despite the Childress decision, the sole author is not the copyright owner of the materials contributed by others, the suggestions proffered by Thomson were impliedly or expressly licensed to Larson for use in “Rent.”
In an amicus curiae brief, the Dramatist Guild indicates that “given the collaborative nature of theatre, any contribution of copyrightable material should be understood as conveying with it to the playwright a non-exclusive license to use the collaborator’s material in the work, absent some other arrangement in writing.”
The Court indicates that this circuit has not decided whether a person who makes a non-de minimis copyrightable contribution but cannot meet the mutual intent requirement of co-authorship retains, in the absence of a work-for-hire agreement or any explicit contractual assignment of copyright, any rights and interests in his or her own contribution. The only ground for relief asserted by Thomson was her purported co-authorship of “Rent.”
Thomson’s assertion that, if she is not deemed a co-author she has exclusive rights with respect to the materials she contributed to “Rent,” was raised for the first time on appeal. She did not bring an infringement suit nor (at the time of the decision) had she attempted to restrain any use of her allegedly copyrightable material. Accordingly, the district court had no occasion to rule on whether Thomson, if not deemed a co-author, nevertheless had copyright interests in the material that she contributed to “Rent,” or, alternatively, whether Thomson granted Larson a license to use the material that she purportedly contributed to “Rent” and, if so, on what terms. Because these issues were not raised below, the Court expresses no opinion on them.
After this decision was handed down, Thomson brought a motion for a preliminary injunction restraining the production company and several others from copying, producing and distributing the lyrics, dialogue, plot developments, character details, structural components and thematic elements written by Thomson as registered by her with the Copyright Office and expressed in “Rent” and as contained in any other works derived therefrom. If this case is not settled, a judicial decision is bound to influence, not only the relationship between a dramaturge and playwright, but that between an editor and author and, perhaps, other similar relationships, as well.
1 Thomson v. Larson et al., U.S. Court of Appeals for the Second Circuit, Docket No. 97-9085 (1998).
2 New York Law Journal, Volume 218, No. 62.
3 945 F.2d 500 (2d Cir. 1991).