What constitutes Joint Copyright? Martin v Kogan

Florence Foster Jenkins

Author George Grantham Bain

Jane Lambert

HH Judge Hacon Martin  and Another v Kogan  [2017] EWHC 2927 (IPEC) (22 Nov 2017)

Florence Foster Jenkins was described by Stephen Pile as "the world's worst opera singer." In 2016 a film was made about her life starring Meryl Street as the singer and Hugh Grant her husband. The film was very popular.  Streep was nominated for an Oscar for her performance.  The movie grossed receipts of US$44.3 million by 16 Oct 2016 according to Wikipedia.

The screenplay was credited to Nicholas Martin who is a film and TV script writer.  While he was writing the script Mr Martin was living with Julia Kogan who is an opera singer.  There was no dispute hat they had discussed the project during that time.   Ms Kogan claimed to have contributed to the script to the extent that she was entitled to be regarded as a joint author.  

Mr Martin and his company sued Ms Kogan for a declaration that he was the sole author of the work while she counterclaimed for a declaration that she is joint author and entitled to relief for infringement of her copyright. She also added the production and financing companies as Part 20 defendants. They raised defences of acquiescence and estoppel.  The action and counterclaim came on before His Honour Judge Hacon who tried the action on the 10 and 11 Oct and delivered judgment on 22 Nov 2017.

 The questions that the court had to decide were summarized by His Honour at paragraph [8]  of his judgment:

"(1)   What was the nature and extent of Ms Kogan's contribution to the writing of the Screenplay?
(2)    Did that contribution make the Screenplay a 'work of joint authorship' within the meaning of s.10(1) of the Copyright, Designs and Patents Act 1988 ("the Act") and qualify Ms Kogan to be joint author with Mr Martin?
(3)   Did any act or statement by Ms Kogan, or lack of the same, provide the Part 20 Defendants with a defence of acquiescence or estoppel?"

A work of joint authorship is defined by s.10 (1) of the Copyright Designs and Patents Act 1988 ("the CDPA") as "a work produced by the collaboration of two or more authors in which the contribution of each author is not distinct from that of the other author or authors."  At paragraph [14] of his judgment, Judge Hacon said:

"[14]  The words of the subsection provide two express requirements for joint authorship. First, the work must have been produced by the collaboration of two or more authors. Second, the contribution of each author must not be distinct from that of the other author or authors. That would be the case, for example, where the contributions in question are distinct literary works published in a single compilation. It was not in dispute in the present case that the second criterion was satisfied.
[15] It was also common ground that s.10(1) contains an implied third requirement. Where a person has contributed to the creation of a work in collaboration with another, he or she must have made a sufficient contribution to qualify as a joint author. This has been explained and rationalised on the basis that a joint author is ipso facto an author within the meaning of s.9 (1) of the Act and therefore must have contributed a significant part of the skill and labour protected by the copyright (see Fylde Microsystems Ltd v Key Radio Systems Ltd [1998] FSR 449, at 455)."

His Honour held at paragraph [26] that the screen play was written after the final breakdown of the personal relationship between Mr Martin and Ms Kogan which was after the end of their working together on the project. There was therefore no collaboration between Mr Martin and Ms Kogan in creating the screen play itself. It followed that Ms Kogan could not be a joint author of that work.

The judge's decision on that point effectively ended the matter but for the sake of completeness His Honour considered the merits of Ms Kogan's case on the assumption that her contributions to drafts of the screen play had to be taken into account.   After reviewing the authorities, Judge Hacon stated the following principles at paragraph [54]:

"(1) A party will be joint owner of the copyright in a work only if he or she (or in the case of a company, its employees) collaborated in the creation of the work. The collaboration must be by way of a common design, i.e. co-operative acts by the authors, at the time the copyright work in issue was created, which led to its creation.
(2) The contribution of each author must not be distinct from that of the other author or authors.
(3) Contributions by a putative joint author (including those done by way of collaboration) which formed no part of the creation of the work are to be disregarded in the assessment of joint authorship.
(4) No distinction is to be drawn between types of contribution that did form part of the creation of the work. In particular, there is no distinction which depends on the kind of skill involved in making the contribution.
(5) The contribution, assuming it is relevant to the assessment of joint authorship, must be sufficient. This depends on whether the contribution constitutes a substantial part of the whole of the work in issue.
(6) That will be the case if the contribution would be protected by copyright in the work. Thus, if the contribution alone were copied by an unlicensed third party and such copying would result in an infringement of the copyright, the contribution constitutes a substantial part of the whole.
(7) The test of substantiality in the context of joint authorship of copyright, as in the context of infringement, involves a qualitative as well as quantitative assessment.
(8) Suggestions from a putative joint author as to how the main author should exercise his or her skill – for instance by way of criticism or editing of a literary work – will not lead to joint authorship where the main author has the final decision as to the form and content of the work.
(9) It is thus relevant, but not decisive, whether an author is the ultimate arbiter as to the content of the work.
(10) If joint authorship is established, the court may apportion ownership of the copyright."

Since Mr Martin was presumed to be the author of the work by virtue of s.104 (2) (a) the burden of proving otherwise fell on Ms Kogan.  The judge considered the contributions offered by Ms Kogan and concluded at paragraph [82]:

 "In my view, the documentary and undisputed evidence supports Mr Martin's claim to have been the sole writer of the text of drafts one to three of the screenplay with only limited input from Ms Kogan. This consisted of musical expressions of a technical nature, already mentioned, together with some minor editing changes."

Judge Hacon thought it likely that Ms Kogan had been responsible for non-textual contributions to the first three drafts, made in the course of her discussions with Mr Martin but concluded at [85] that  "the textual and non-textual contributions made by Ms Kogan never rose above the level of providing useful jargon, along with helpful criticism and some minor plot suggestions. " Taken together these were not sufficient to qualify Ms Kogan as a joint author of the screen play, even had those contributions all been made in the course of a collaboration to create the screen play. It followed that Mr Martin had been the sole author of the work.

The defences of acquiescence and estoppel depended on Ms Kogan's failure to assert her claim until after the production and funding companies had invested heavily in the production and distribution of the film in the belief that Mr Martin was the sole author of the screen play.  It was unnecessary for the judge to decide the point as her counterclaim had failed but the judge observed at paragraph [91]:

"Ms Kogan's statements and behaviour towards the Part 20 Defendants, and indeed everyone else, were always consistent with, and I think took the form of, a representation that she believed that the Film should be produced and released. In my view, had she been joint author of the copyright in the Screenplay it would have been unconscionable for her rely on joint ownership of the copyright to restrict the public performance of the Film in any way. To that extent, in my view the defence of estoppel would have succeeded."

This case is worth reading for the following reasons.   

First, the judge restated at paragraph [18] that each draft of a work generates a separate copyright.  Relying on the judgment of Mr Justice Lightman in Ray v. Classic FM Plc  [1998] FSR 622, [1998] EWHC Patents 333, (1998) 21(5) IPD 21047, [1999] ITCLR 256, [1998] ECC 488 Judge Hacon said at paragraph [19] that a claimant in Ms Kogan's position could succeed (assuming that his or her contributions were sufficient to create a joint copyright)  not by seeking a declaration that he or she was entitled to a joint copyright in the final draft but by claiming a declaration that he or she was joint author of the earlier draft and that his or her copyright in that draft had been infringed by the incorporation of that draft into thar final draft. This is, of course, obiter but it is a very useful tip on how to analyse and present other joint copyright cases.

The second reason why this case is worth reading are the 10 principles on joint ownership which the judge gleaned from the case law that I have listed above.

The third reason for reading this case is the judge's analysis at paragraphs [59] to [60] of Mr Justice Legatt's observations at paragraph [15] of Gestmin SGPS SA v Credit Suisse (UK) Ltd and Another [2013] EWHC 3560 (Comm) (15 Nov 2013) and  Blue v Ashley (Rev 1) [2017] EWHC 1928 (Comm) (26 July 2017) on the fallibility of human memory.   Judge Hacon's conclusion at paragraph [61] that "the best approach for a judge is to place little if any reliance at all on witnesses' recollections of what was said in meetings and conversations and instead to base factual findings on inferences drawn from the documentary evidence and known or probable facts" makes very good sense.

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