Joint Authorship for Photographs – A Step Backward

Posted on 12/20/2000
In Intellectual Property



by Robert W. Clarida

While the headlines have been filled with Napster news and predictions of dire consequences for the entertainment industry, a little-heralded case in the Central District of California has resulted in a decision which could prove equally fateful for professional photographers. Brod v. General Publishing Group, Inc., No. CV 98-9520 (DUP), decided February 1 and currently on appeal to the Ninth Circuit, awarded summary judgment to defendant publishers in a claim involving the unauthorized use of plaintiff’s photographs in a picture book called “The Golden Age of Televisions.”  There was no dispute that plaintiff Garry Brod created the photographs, that that they were not works for hire, and that defendant published them without Brod’s permission. The surprisingly successful defense, however, was that the photos were joint works, created both by the photographer and his collaborator, Phillip Collins.

When Collins approached Brod in 1991 with the idea of doing a book about vintage television sets, the two had collaborated on several prior projects, including a book about vintage clocks.  Without benefit of a written agreement, and largely at Collins’ expense, the parties traveled to Texas where Brod shot numerous photos of a television collection. Brod subsequently turned the transparencies over to Collins with the understanding that Collins intended to use the photographs in a book. Collins alleges that the parties had an oral agreement that Collins would publish the book, and that Brod would receive 35% of the proceeds. Brod denies such an agreement, and contends that he only left the transparencies with Collins so the latter could make a “mock up” of the book to present to publishers. Brod further contends that Collins acknowledged Brod’s sole ownership of copyright in the pictures on several occasions.

In any event, Collins placed the book with a publisher in 1997, ultimately using 88 of Brod’s Texas photographs without further consulting him.  Brod brought an infringement action, and Collins responded with a summary judgment motion claiming joint authorship.  Under the Copyright Act, a joint author may make a non-exclusive use of the work without the consent of his or her collaborator, subject only to a duty to account for a fair share of the proceeds.

The elements of joint authorship in the Ninth Circuit, as in the Second Circuit, are that each joint author must make a copyrightable contribution to the joint work, and that each must intend his or her contribution to be merged into a “unitary whole.”  The court found that Collins established both elements beyond any triable issue of fact. As to copyrightbility, the court recognized that Brod, not Collins, actually operated the camera, but that Collins nonetheless contributed copyrightable elements of authorship to the photographs, such as selecting the televisions to be photographed, selecting and positioning props, choosing camera angles, and checking the results through the viewfinder before Brod took the pictures.  Following Lindsay v. RMS Titanic, 52 U.S.P.Q.2d 1609 (S.D.N.Y. 1999), in which a film director was held to be the author of underwater film footage shot by crew members, the court held that Collins’ contributions were original, copyrightable elements of photographic authorship, despite Brod’s allegation — presumably taken as true — that he “arranged the position of every element that appeared in the final image.”

As to intent, the court found that the parties intended their contributions to merge into a unitary whole, as required by the Copyright Act and the Ninth Circuit.  The court noted that a more specific intent has been required in the Second Circuit under Childress v. Taylor, 945 F.2d 500 (2d Cir. 1991), but found Childress inapplicable both because it has not been expressly adopted in the Ninth Circuit and because the parties here both made substantial contributions to the final work, unlike in Childress.  Even if Childress were to apply, the court observed, the evidence viewed in the light most favorable to Brod indicated that the parties intended to be joint authors, despite the fact that Collins acknowledged Brod to be the copyright owner and accorded him sole credit as photographer.

It may be wondered whether Collins’ contribution of non-copyrightable ideas and financing were at least as important in the court’s result as his aesthetic contributions to the photographs. If so, photographers and others in the graphic professions may soon find that the art directors and ad agencies for whom they work are unintended and unwelcome co-authors of everything they create. Under the guise of joint authorship, the court in Brod may have partially undone the tightening of the work-for-hire doctrine written into the 1976 Copyright Act, and returned artists to the 1909 Act’s “instance and expense” test, in which the commissioning party was presumed to own a commissioned work.  The Ninth Circuit will have an opportunity to examine these issues as the case proceeds on appeal.

© 2000  Cowan, Liebowitz & Latman, P.C.

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This the information provided in this article should not be construed as legal advice or legal opinion on any specific facts or circumstances. The contents are intended for general information purposes only, and you are urged to consult with a lawyer concerning your own situation and any specific legal questions you may have.