Works are often produced with the creative input of more than one person. Each contributor’s legal right to the work is often unclear. This can quickly lead to disputes between contributors about the commercial exploitation of a work or whether a given contributor has a right to have the creation of the work attributed to them (in part). Ultimately, it can prevent the effective transfer of rights in the work, the proper commercial exploitation of the work, and the ability to defend the work from infringement.
For any contributor to claim copyright in a collaborative work, their contribution must be:
- Collaborative; and
- Indistinct from other contributions.
To be ‘original’, the creator’s intellectual effort will need to be sufficiently independent of the creator of any previous work.
Until recently, ‘originality’ was often described as requiring a minimal level of effort. However, recent overseas judgments have re-focused the legal test toward a requirement for original creative effort (UK Court of Appeal in Hyperion Records v Sawkins  and the High Court of Australia in IceTV v Nine Network ).
To be ‘substantial’, the contribution must be in the form of artistic labour and skill. There must usually be a direct responsibility for what actually appeared on paper, screen or the manufacturing floor (akin to penmanship or craftsmanship). It is generally not sufficient for a creative to contribute the title, concept, structure, key ideas, discussions, thoughts and opinions, or direction of the work. More is required to claim copyright ownership.
Contributions to a work are assessed based on quality, not quantity, of the contribution to the overall work. However, the proportion of a contribution to the work as a whole may be considered where it is readily and appropriately quantifiable (and for example, a contribution of 9% has been considered insufficient, while 33% is substantial). It is not necessary that all creatives contribute to the same extent.
Third, the work must be collaborative – it must be made in furtherance of some common design. That is not to say that all those involved must share an intention to collaborate, only that they share the vision of the developing design. There must be some shared understanding that the contributions will coalesce into a single body of work. Whether the work is a joint one is a question of fact, and not agreement between the collaborators.
Finally, the contribution must not be separable or distinct / distinguishable from the contribution of any other collaborator. Even where contributions “fit” together or are interdependent in some way, if they are distinct the work will not be considered a “joint” or collaborative one. In the event that the contributions are distinguishable, the work will be a “collective work”, but with each creative retaining a separate copyright in their own contribution or in separate parts of the work. Separately authored chapters in books are an example, so too is the packaging to a product. In the US, distinct elements may be considered part of a joint collaborative work where these are interdependent.
There is no collapse of the different copyright aspects of a multimedia work – copyright in music, dialogue, animation, film (etc.) are distinguishable and can be held separately.
The contributors do not own the copyright in a joint work together as one in common (in which case the last designer left standing would own copyright in the whole work). Instead, each contributor will own a proportion of the copyright. The joint work can only be licensed by consent of all owners, and the joint copyright owners can sue each other for exploiting the work without their consent.
Key Issues to Consider
Clearly, contributors to a collaborative joint work will benefit greatly by adopting an agreement stipulating:
- Whether the copyright is to be held in equal / unequal shares;
- How licensing will be controlled;
- How the work will be used;
- How each collaborator will be recognised and rewarded; and
- How will the work be protected. (to name a few)
Where it is possible that a contribution will be largely intellectual or managerial in nature, or that contributions could be distinguished from each other, then an agreement should be drafted to ensure that the intended persons are able to commercialise the final work – this may require the assignment of copyright to one or more contributors or suitable licence terms. Keep in mind, however, that where there is an agreement to pay the contributor for the design work requested or commissioned, or where it falls within an employee’s duties, that copyright may already be owned by the commissioning party or employer.
Take a few moments to consider the issues above whenever taking part in a collaborative effort to ensure that you obtain the ownership / use rights your desire, and your work is realised to its full commercial potential.
For more information on matters covered in this paper, please contact:
James Carnie, Partner
Phone: +64 9 306 8000
DDI: +64 9 306 8002
This Background Paper by its nature cannot be comprehensive and cannot be relied on by any client as advice. This Background Paper is provided to assist clients to identify legal issues on which they should seek legal advice. Please consult the professional staff of Clendons for advice specific to your situation.