Joint Copyright - The Appeal in Martin and Another v Kogan

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Jane Lambert

Court of Appeal (Lords Justices Floyd, Henderson and Jackson) Martin and another v Kogan [2019] EWCA Civ 1645

Readers can judge from the video that Florence Foster Jenkins was about as good at singing as William McGonagall was at poetry or, indeed, I am at ballet. In 2016 a film was made about her life which grossed receipts of US$44.3 million.  The screenplay was credited to one Nicholas Martin but his partner, Julia Kogan, claimed to be a joint author.  Mr Martin brought proceedings against Ms Kogan for a declaration that he was sole author of the work and owner of the copyright subsisting in it. She counterclaimed for a declaration that she was a joint author and copyright owner and sought damages for infringement of her copyright.  The action and counterclaim came on for trial before His Honour Judge Hacon in Martin and another Kogan and others [2017] EWHC 2927 (IPEC) (22 Nov 2017),  His Honour found for Mr Martin and I wrote a case note on his judgment (see What constitutes Joint Copyright? Martin v Kogan 29 Dec 2017). With the permission of Lord Justice Henderson, Ms Kogan appealed against that judgment.

Grounds of Appeal
Ms Kogan appealed on seven grounds which the Court of Appeal summarized at paragraph [75] of its judgment:

"Ground 1 attacks the judge’s conclusion on the first short cut, by asserting that changes made by one of the authors once the collaboration has ended do not prevent the second author from claiming to be a joint author of the work as a whole. Ground 2 asserts that the judge failed to apply EU law on “the author’s own intellectual creation”, by failing to consider whether the input concerned expressive and creative choices, and failing to consider that isolated sentences or even parts of sentences may convey originality. Grounds 3 and 4 focus on the judge’s assessment of Ms Kogan’s textual contributions to The Rehearsal Scene, The Scene in the Lift and the Further Rehearsal Scenes, asserting that he ignored the true nature and extent of Ms Kogan’s contribution, ignored key documents and ignored key passages of cross-examination. Ground 5 asserts that the judge’s assessment of Ms Kogan’s non-textual contribution was flawed, in particular his assessment of the Lily Pons Scene and The Bell Song, The McMoon Audition Scene and the scene at Melotone (Homophone) Records where Florence takes charge of the action herself. Ground 6 asserts that the judge erred by failing to take account of Ms Kogan’s largely unchallenged evidence detailing her full contribution to the writing of the screenplay. Finally, ground 7 attacks the judge’s conclusion on the film companies’ defence of acquiescence/estoppel."

The Parties' Arguments
The appeal came on before Lords Justices Floyd, Henderson and Jackson on 2 May 2019 and recordings of the proceedings can be seen on YouTube (see Part 1 and Part 2).  The sound quality of those videos is not brilliant but the effort of listening to them is more than repaid by a better understanding of the case and the relevant law.

The Judgment
On 9 Oct 2019 the Court of Appeal allowed Ms Kogan's appeal and ordered a retrial at paragraph [145] (see Kogan v Martin and others [2019] EWCA Civ 1645 (9 Oct 2019)).  The reasoning of the Court was as follows:

"The judge has adopted an erroneous approach to the evidence, failed to make important findings of primary fact, failed to take account of material matters and applied incorrect legal standards to the assessment of the sufficiency of Ms Kogan’s contributions. In those circumstances, and with reluctance, we see no escape from the conclusion that there must be a retrial. The increase in costs to the parties is  of course regrettable, but we can see no sensible alternative."

Case Management
It seems to have been the Jords Justices' view that Judge Hacon fell into error as a result of his decisions at the case management conference ("CMC"),  The CMC is crucial to the efficient functioning of the IPEC. Paragraph 4.6 (b) of the Intellectual Property Enterprise Court Guide ("the Guide") requires a claimant to apply for a CMC within 14 days after all defendants who intend to file and serve a defence have done so and if the claimant fails to do so the defendant should do so instead.  

According to CPR 63.23 (1), the purpose of the CMC is to identify the issues and to decide whether to make an order for witness statements or other directions in accordance with paragraph 29.1 of the Part 63 Practice Direction. At the CMC the enterprise judge gives directions along the lines of the specimen order in Annex B of the Guide. Scheduled to the order is a list of issues and much of the body of the minute is taken up with directions for the determination of those issues. The Court of Appeal noted that CPR 63.23 (2) precludes a party from submitting material in addition to that ordered under CPR63.23 (1) save in exceptional circumstances.

The issues that Judge Hacon identified were:

"1. Whether the Defendant/Part 20 Claimant is a joint author of the final version of the Screenplay, as referred to in paragraph 17 of the Particulars of Claim.
2, Whether the Defendant/Part 20 Claimant is estopped or prevented by acquiescence, agreement or waiver from asserting or relying on any rights of sole or joint authorship."

By considering only Ms Kogan's contribution to the final version of the screenplay, the judge limited discussion of Ms Kogan's contribution to the earlier drafts from which the final version had evolved.  By so doing, His Honour had overlooked not only much of her statement of case but also her detailed witness statement on her contribution to the screenwriting project.

Court of Appeal's Findings of Fact
In view of their conclusion that the trial judge had failed to make important findings of fact, the Lords Justices added details that they considered to be important between paragraphs [5] and [15] of their judgment.  These included Mr Martin's career before he wrote the screenplay and Ms Kogan's literary and musical education and her literary, theatrical and musical achievements before she met Mr Martin.  The Lords Justices noted that it was Ms Kogan who had brought Jenkins's career to Mr Martin's attention though there was an unresolved conflict as to whether it was Ms Kogan or Mr Martin who first thought of writing a screenplay.  They also noted that Mr Martin wrote several drafts which he showed to various directors and potential investors. Fearing claims from Ms Kogan and another writer to the copyright in the work which would have made it difficult to finance the film, he offered her 15% of his revenues.  The trial judge made no finding as to whether that offer had ever been accepted. The Court of Appeal noted that Ms Kogan and Mr Martin separated though they remained on amicable terms until well into 2015.

The Relevant Law
The Court 's starting point at paragraph [30] was s.10 (1) of the Copyright, Designs and Patents Act 1988 ("the CDPA"):

"In this Part a "work of joint authorship" means 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."

It discerned the following elements from that subsection, namely collaboration, authorship, contribution and the non-distinctness of the contribution.

As regards collaboration, the Court referred to Mr Justice Keating's dicta in Levy v Rutley (1871) L.R. 6 C.P. 523:

"So, if two persons undertake jointly to write a play, agreeing in the general outline and design, and sharing the labour of working it out, each would be contributing to the whole production, and they might be said to be joint authors of it. But, to constitute joint authorship, there must be a common design".

The Lords Justices distinguished a collaborative work from a derivative work.  In the latter case, an author takes the work of another and adapts, embellishes or improved it.  The result may attract copyright, but it will be in a work of single authorship and not a collaboration. Any originality would lie in the adaptation, embellishment or improvement of the second author.  The extent of the contribution is not determinative. Criticism and suggestions for improvement of a work do not produce a work of joint authorship even if they prompt extensive changes to the work. For example, Ezra Pound suggested many changes to The Wasteland but that did not make him a joint author. On the other hand, the addition of a 4 bar riff to a song by a session artist was enough to produce a work of joint authorship in Hodgens v Beckingham [2003] EWCA Civ 143 because the song was intended to be a collaboration.  Although the contribution from a collaborator must result in the expression of an idea, the contribution does not have to be in writing.  An idea for a plot or a character can be enough so long as it finds expression in the resulting work.  Provided that the work containing the idea is eventually written down, it does not matter which of the collaborators does the writing.

In respect of authorship, the Lords Justices referred to s,9 (1) and s.10 (3) of the CDPA and defined a "work of joint authorship" as "a work produced by the collaboration of all the persons who created that work."  Their lordships noted that although copyright does not subsist in a work before fixation the work itself can exist before fixation.  They said at paragraph [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. Likewise, we do not think that an enquiry into who accepts responsibility for the form of expression in the work is a helpful concept, particularly in a collaborative work. The statutory test does not go any further than asking who contributed to the creation of the work."

As for the third element, the contribution must be an authorial one and what constitutes an authorial contribution will depend on the nature of the work. Their lordships noted that a screenplay is concerned with providing a plot and dialogue which enable the reader to visualize what is going to happen on the screen, and get a feeling for what the audience will experience. The author is directly concerned with such matters as the choice of characters and the incidents in the film which will bring out those characters, and display their emotions. The storyline and plot are also of direct concern to the author and are a part of what he or she creates. Those aspects of a screenplay can, in principle, amount to a contribution of an authorial kind.  Although the point does not seem to have been in contention either at trial or on appeal, the Lords Justices added that the contribution must satisfy the intellectual creation requirement in Case C-5/08 Infopaq International A/S v Danske Dagblades Forening EU:C:2009:465, [2009] ECDR 16, [2012] Bus LR 102, ECLI:EU:C:2009:465, [2009] EUECJ C-5/08, [2010] FSR 20, [2009] ECR I-6569 and subsequent cases.

With regard to the fourth element, the Court observed that if the contribution of each author were distinct from the other, then there would be no need for joint authorship because each author could rely on such copyright as may subsist in his or her distinct part. Where their respective contributions are fused into a whole, that is no longer possible.

Their lordships added that the fact that one of the contributors had the final say was not fatal to a claim for joint authorship and that the contributions of the authors do not have to be equal.

They summarized the law on joint copyright at paragraph [53] as follows:

"1. A work of joint authorship is a work produced by the collaboration of all the people who created it.
2. There will be a collaboration where those people undertake jointly to create the work with a common design as to its general outline, and where they share the labour of working it out. The first task for the court in such a case is to determine the nature of the co-operation between the putative joint authors which resulted in the creation of the work.
3. Derivative works do not qualify. Works where one of the putative authors only provides editorial corrections or critique, but where there is no wider collaboration, do not qualify. Ad hoc suggestions of phrases or ideas where there is no wider collaboration do not qualify.
4. In determining whether there is a collaboration to create a literary or artistic work it is never enough to ask "who did the writing?". Authors can collaborate to create a work in many different ways. For example there may be joint authorship if one person creates the plot and the other writes the words, or if either or both of these types of labour is shared.
5. Joint authors must be authors, in the sense that they must have contributed a significant amount of the skill which went into the creation of the work. Again, it is not correct to focus exclusively on who fixed the work in writing. The statutory concept of an author includes all those who created, selected or gathered together the detailed concepts or emotions which the words have fixed in writing.
6. Contributions which are not "authorial" in the above sense do not count. What counts as an authorial contribution is acutely sensitive to the nature of the copyright work in question.
7. The question of what is enough of a contribution is to be judged by the Infopaq test, i.e. whether the putative joint author has contributed elements which expressed that person's own intellectual creation. The essence of that term is that the person in question must have exercised free and expressive choices. The more restrictive the choices the less likely it will be that they satisfy the test.
8. The contribution of a putative joint author must not be distinct."
9. There is no further requirement that the authors must have subjectively intended to create a work of joint authorship.
10. The fact that one of the authors has the final say on what goes into the work may have some relevance to whether there is a collaboration, but is not conclusive. The author with the final say must be given credit in deciding on the relative proportions of ownership, for the extra work involved in making those choices.
11. It follows that the respective shares of joint authors are not required to be equal, but can reflect, pro rata, the relative amounts of their contributions."

Ground 1: The First Short Cut
It will be recalled that one of the issues in the schedule to case management directions was:

"Whether the Defendant/Part 20 Claimant is a joint author of the final version of the Screenplay, as referred to in paragraph 17 of the Particulars of Claim."

Judge Hacon appears to have regarded "the final version of a Screenplay" as a derivative rather than a collaborative work even though the point had not been pleaded or even raised in Mr Martin's skeleton argument.  As it was clear from the CMC transcript that the case proceeded on the agreed footing that Ms Kogan could succeed in her action for infringement of copyright if she proved contributions into earlier drafts, it had been unfair not to have allowed her to rely on that argument at trial.  

Ground 6:  The Judge's Treatment of the Evidence
Possibly because of his decision on the issues to be tried, the judge appears to have given very little weight to Ms Kogan's witness statement on her contribution to the Jenkins project which was largely unchallenged. He dismissed it as "vague and rambling" relying on Mr Justice Legatt's dicta in  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 9f memory. The Court of Appeal described such reliance as a "serious error" at paragraph [88] and thought that there was considerable substance in that ground of appeal.  The Lords Justices were mindful that findings of fact by lower courts must not be disturbed except in very limited circumstances. Their problem was different. Because the judge had expressly declined to have regard to the witness evidence which he heard, they were left without the benefit of what they considered to be essential findings of primary fact, which they were in no position to make for themselves.

Ground 2: Wrong Legal Standard
Ms Kogan had submitted that Judge Hacon had wrongly imposed too high a threshold for determining what was a sufficient contribution to justify a finding of joint authorship. With one reservation on sufficiency that they addressed elsewhere, the Court of Appeal did not think that the judge had erred in stating the law.  However, it did think the judge had in mind a more demanding test for what he described as contributions of secondary skills, within which he included plot and characters.

Grounds 3 to 5:  Sufficiency of Ms Kogan's Contrubution
The Court considered Ms Kogan's textual and non-textual contributions. 

It was not disputed that she contributed technical information about music and performance that had found its way into the text.  For instance, there is a reference in Judge Hacon's judgment to the "squillo" upon which Mr Martin had been informed by Ms Kogan was: "… about getting the cavities in the forehead to resonate so that the sound will reach the back of the room with a certain ping."  The judge had not considered that such contributions to have been sufficient to entitle her to copyright in the screenplay but it was not clear why.   If he did not consider it to be sufficiently authorial he had been wrong to do so.  It should have been put into the scales together with the other evidence of contribution.

Similarly, there was evidence which the judge accepted that Ms Kogan had suggested several incidents from Jenkins's life that had found their way into the screenplay.  These included the introduction of the singer Lily Pons and the contrast between her rendition of an aria and Jenkins's, the rehearsal of an accompanist and making a record at a studio,  The judge did not consider that any of those incidents had been sufficient for the subsistence of joint copyright but it was not clear why.  The Court of Appeal considered that the judge's summary of the extent of Ms Kogan's contribution failed to take account of a number of significant matters, perhaps most significantly Ms Kogan's contribution to the shaping of FFJ's character, and the plot of the screenplay. It did not think that it was possible to dismiss any of her contributions as not being authorial in nature.

Ground 7: Acquiescence or Estoppel
The second issue in the schedule to the case management order was:

"Whether the Defendant/Part 20 Claimant is estopped or prevented by acquiescence, agreement or waiver from asserting or relying on any rights of sole or joint authorship."

The judge decided this issue in favour of the Part 20 defendants to the extent that he refused Ms  Martin an injunction to restrain the distribution of the film.  By the time the appeal was heard Ms Martin had dropped her objection to the film's distribution.  The issue was in all other respects largely academic.

At paragraph [142] the appeal judges said:

"Despite these conclusions, it would be open to us to dismiss the appeal if we were persuaded that the failure to take proper account of the matters we have referred to would not affect the outcome of the action. We do not think that course is open to us, however. 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. It would be wrong for us to go any further in the light of the disposition of the appeal which we will propose."

As Judge Hacon had failed to make findings of fact that would have enabled the Court to allow the appeal and substitute its own order, its only course was to order a new trial before a different judge in the IPEC" who should be a full-time circuit or High Court judge. Without wishing to tie that tribunal's hands the Lord Justices indicated that there should be an early case management conference before the new judge and suggested that he or she should bear the following points in mind:

"i) We see no necessity for new pleadings or written evidence.
ii) The new trial should be on the basis that Ms Kogan (a) may rely all on her contributions to the Screenplay, but (b) accepts that her contributions after third draft were limited.
iii) The list of issues to be determined at the new trial should expressly include (a) whether there was a collaboration between the parties, and (b) the nature of that collaboration.
iv) The new trial should be on the basis that the defence of acquiescence/estoppel succeeded to prevent Ms Kogan interfering with the public performance of the film, but the film companies are not prevented from arguing, if so advised, that the defence should prevent other monetary and non-monetary relief. We say nothing about how promising that argument would be.
v) Ms Kogan should not be able to take advantage of the new trial to resurrect her unpleaded legal answer to that defence."

This case will be read and cited not just for its analysis of s.10 (1) of the CDPA, its review of the authorities and its formulation of general principles on joint copyright, but also for highlighting the importance of case management and in particular getting the list of issues right. Though it is unfortunate for the parties who must now prepare for another trial unless they can settle this dispute through negotiation, it is hard not to feel some sympathy for the judge. It is easy to see how this case came off the track.  Case management directions are often agreed by the parties well before the CMC. Unless they are manifestly unreasonable there is no reason for the judge to interfere with them. It should be remembered that this is the first time since 1 Oct 2010 when the Arnold reforms came into force that such a difficulty has occurred.

Further Information
Anyone wishing to discuss this case note, joint copyright or IPEC procedure, in general, may call me on 020 7404 5252 during office hours or send me a message through my contact form.


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