Ownership, Authorship and Transfer

Initial Ownership of Copyright Interests

Owning the object is not owning the copyright

Pope v. Curl, 2 Atk. 342 (1741) (Ch. U.K.)

The ownership of any particular physical embodiment of a work, even if it is the original and only copy, has no bearing on the question of who owns the copyright in the work. This long-standing principle of copyright law goes all the way back to a 1741 case decided in the English Court of Chancery, Pope v. Curl, 2 Atk. 342 (1741) (Ch. U.K.).

Alexander Pope was a famous and profitable author in an age when professional authorship was considered unworthy of a gentleman. In pursuit of fame and profit, Pope very much wanted to publish his correspondence, but as a gentleman he needed a pretext to do so in order to avoid the charge of vanity. At Pope’s behest, his friend and correspondent Jonathan Swift (also a famous author) sent an edited collection of their letters to a publisher in Dublin, Ireland to have them printed. Dublin was beyond the reach of English copyright law, or indeed any copyright law at the time. When the disreputable London bookseller, Edmund Curl, republished the same volume of correspondence (as it seemed Pope hoped he would), Pope sued to protect his honor and reputation as an author. See Mark Rose, Authors In Court: Scenes From The Theater Of Copyright, 11-35 (2016).

Curl defended the suit, in part, on the basis that the letters, once sold and delivered were the property of the receiver, not the author. Lord Hardwicke noted Curl’s argument and rejected it, saying:

It has been objected, that where a man writes a letter, it is in the nature of a gift to the receiver.

But I am of opinion it is only a special property in the receiver; possibly the property in the paper may belong to him; but this does not give a licence to any person whatsoever to publish them to the world, for at most the receiver has only a joint property with the writer.

Pope v. Curl established for the first time the fundamental distinction between ownership of a particular copy of a copyrighted work and the ownership of the copyrighted work. The principle is reflected in Section 202 of the Copyright Act.

17 U.S. Code § 202. Ownership of copyright as distinct from ownership of material object

Ownership of a copyright, or of any of the exclusive rights under a copyright, is distinct from ownership of any material object in which the work is embodied. Transfer of ownership of any material object, including the copy or phonorecord in which the work is first fixed, does not of itself convey any rights in the copyrighted work embodied in the object; nor, in the absence of an agreement, does transfer of ownership of a copyright or of any exclusive rights under a copyright convey property rights in any material object.

Authorship and ownership are inextricably entwined

The concepts of ownership and authorship are inextricably entwined under the Copyright Act of 1976. Copyright ownership vests, at the moment of creation, initially in the author or authors of the work. Under Section 201 of the Act, the creator of a work is, at least presumptively, its author and owner of the copyright.

17 U.S. Code § 201. Ownership of copyright

(a) Initial Ownership.--Copyright in a work protected under this title vests initially in the author or authors of the work. The authors of a joint work are co-owners of copyright in the work.

Section 201(b) complicates that picture somewhat by introducing the concept of a work made for hire (see below), but putting that question to one side, we can proceed on the assumption that authors are owners. The next natural question is of course, how do we determine who is the author?

The Supreme Court implicitly addressed this question in Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884). The issue in Burrow-Giles was whether a staged photograph of Oscar Wilde qualified for copyright protection at all, but in answering that question, the Court also elaborated how one might go about determining who is the author. The Court relied on an English case about the ownership of a photo of the Australian cricket team. In Nottage v. Jackson, 11 Q.B.D. 627 (1883), the court had to choose between recognizing as author either the photographer or the enterprise that arranged for the photograph to be taken and sold. In Burrow-Giles (at 60-61), the Court quotes various members of the House of Lords in Nottage v. Jackson with approval:

Brett, M.R., said, in regard to who was the author: “The nearest I can come to, is that it is the person who effectively is as near as he can be, the cause of the picture which is produced, that is, the person who has superintended the arrangement, who has actually formed the picture by putting the persons in position, and arranging the place where the people are to be — the man who is the effective cause of that.”

Lord Justice Cotton said: “In my opinion, ‘author’ involves originating, making, producing, as the inventive or master mind, the thing which is to be protected, whether it be a drawing, or a painting, or a photograph;” and Lord Justice Bowen says that photography is to be treated for the purposes of the act as an art, and the author is the man who really represents, creates, or gives effect to the idea, fancy, or imagination.

Coauthors are Joint Owners of the Work

In Burrow-Giles, the question of whether the work contained enough authorship to be copyrightable also settled the question of who should be seen as the author of the work. There was only one photographer and really no other obvious candidate, except perhaps the subject of the photo himself, Oscar Wilde. The attribution of authorship becomes quite complex where the work in question was produced by some form of collective effort.

As Section 201 (quoted above) states: “The authors of a joint work are co-owners of copyright in the work.” A joint work is defined as follows:

17 U.S. Code § 101

A “joint work” is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.

The authors of a joint work are co-owners of the copyright in the work. Courts interpreting the 1909 Copyright Act held that each owns a share of an undivided whole or is entitled to undivided ownership or interest in the entire work, despite any differences in each author’s contribution.

Does the division of the copyright interest into multiple interests mean that these interests must be equal? In Sweet Music, Inc. v. Melrose Music Corp., 189 F. Supp. 655 (S.D. Cal. 1960) the assignee of one of the co-authors requested a three-quarter share in a song’s renewal copyright, on the basis that he had written “half the words and all the music.” The court did not agree and split the ownership 50-50. Some have argued that joint authors’ undivided shares need not be equal in terms of their right to remuneration in the face of unequal contributions. But the case law generally assumes an even split. See Benjamin E. Jaffe, Rebutting the Equality Principle: Adapting the Co-Tenancy Law Model to Enhance the Remedies Available to Joint Copyright Owners, 32 Cardozo Law Review 1549 (2011).

The implications of joint-ownership are profound. As co-owners of the copyright, joint authors are treated as tenants in common. Tenancy in common is a common law property concept. If A and B own real property as tenants in common, each has the right to possess the entire property and neither has the right to exclude the other. In copyright law, each co-tenant has the right to use or license some third party to use the work, and each co-tenant can convey nonexclusive rights to the joint work without the consent of his or her coauthor, subject to a duty to account to the other co-owners for any profit.

Who qualifies as a joint author?

The Copyright Act does not use the terms “joint author” or “co-author,” but the terms are used interchangeably in the relevant case law to describe the authors of a joint work. To meet the definition of a joint work under Section 101, the relevant co-authors must have “the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.”

This deceptively simple sentence raises a number of difficult questions:

• What degree of contribution is required for someone to qualify as an author? Indeed, how should contribution be measured: aesthetic merit, control, audience appeal, …?

• Does each author need to make the same level of contribution? Are contributions assessed relative to other authors of the work, or only on some absolute scale?

• Do the contributions of each person claiming to be a co-author need to be something that could have been separately copyrighted?

• How specific must the putative authors’ “intention that their contributions be merged” be? I.e., does each co-author need to have a shared vision of the ultimate creation, or is it enough that they make their separate contributions in the expectation that those contributions will be subsumed into a larger work?

• When exactly do the potential co-authors need to form the relevant intention? Can they form it at different times?

• How do we distinguish between separate works, derivative works, and sub-works that are “inseparable or interdependent parts of a unitary whole?”

Before delving into the case law, it is useful to think about what kinds of joint authorship cases end up in court. In most coauthorships, the parties agree in advance on both the nature of their collaboration and their respective ownership shares. Such arrangements rarely require judicial interpretation. Disputes that reach court typically arise when no formal agreement was made, or the parties disagree about what that agreement was. In these cases, courts must infer a “common design” or shared intent to create a joint work from the parties’ conduct. This task is complicated when the parties fundamentally disagree about their actual intentions during the collaboration. In such disputes, coauthorship status is determined ex post, much like contract formation under the objective theory of contract, where actions—not stated intentions—control. The absence of a prior ownership agreement forces courts to rely heavily on objective evidence of cooperative behavior, often giving little weight to contemporaneous subjective statements about intent. For more, see Shyamkrishna Balganesh, Unplanned Coauthorship, 100 Virginia Law Review 1683, 1695-1696 (2014).

Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 2000)

Circuit Judge Kleinfeld

In 1991, Warner Brothers contracted with Spike Lee and his production companies to make the movie Malcolm X, to be based on the book, The Autobiography of Malcolm X. Lee co-wrote the screenplay, directed, and co-produced the movie, which starred Denzel Washington as Malcolm X. Washington asked Jefri Aalmuhammed to assist him in his preparation for the starring role because Aalmuhammed knew a great deal about Malcolm X and Islam. Aalmuhammed, a devout Muslim, was particularly knowledgeable about the life of Malcolm X, having previously written, directed, and produced a documentary film about Malcolm X.

Aalmuhammed joined Washington on the movie set. The movie was filmed in the New York metropolitan area and Egypt. Aalmuhammed presented evidence that his involvement in making the movie was very extensive. He reviewed the shooting script for Spike Lee and Denzel Washington and suggested extensive script revisions. Some of his script revisions were included in the released version of the film; others were filmed but not included in the released version. Most of the revisions Aalmuhammed made were to ensure the religious and historical accuracy and authenticity of scenes depicting Malcolm X’s religious conversion and pilgrimage to Mecca.

Aalmuhammed submitted evidence that he directed Denzel Washington and other actors while on the set, created at least two entire scenes with new characters, translated Arabic into English for subtitles, supplied his own voice for voice-overs, selected the proper prayers and religious practices for the characters, and edited parts of the movie during post production. Washington testified in his deposition that Aalmuhammed’s contribution to the movie was “great” because he “helped to rewrite, to make more authentic.” Once production ended, Aalmuhammed met with numerous Islamic organizations to persuade them that the movie was an accurate depiction of Malcolm X’s life.

Aalmuhammed never had a written contract with Warner Brothers, Lee, or Lee’s production companies, but he expected Lee to compensate him for his work. He did not intend to work and bear his expenses in New York and Egypt gratuitously. Aalmuhammed ultimately received a check for $25,000 from Lee, which he cashed, and a check for $100,000 from Washington, which he did not cash.

During the summer before Malcolm X’s November 1992 release, Aalmuhammed asked for a writing credit as a co-writer of the film, but was turned down. When the film was released, it credited Aalmuhammed only as an “Islamic Technical Consultant,” far down the list. In November 1995, Aalmuhammed applied for a copyright with the U.S. Copyright Office, claiming he was a co-creator, co-writer, and co-director of the movie. The Copyright Office issued him a “Certificate of Registration,” but advised him in a letter that his “claims conflict with previous registrations” of the film.

On November 17, 1995, Aalmuhammed filed a complaint against Spike Lee, his production companies, and Warner Brothers.

Aalmuhammed claimed that the movie Malcolm X was a “joint work” of which he was an author, thus making him a co-owner of the copyright. He sought a declaratory judgment to that effect, and an accounting for profits. He is not claiming copyright merely in what he wrote or contributed, but rather in the whole work, as a co-author of a “joint work.” The district court granted defendants summary judgment against Mr. Aalmuhammed’s copyright claims. We review de novo.

Aalmuhammed argues that he established a genuine issue of fact as to whether he was an author of a “joint work,” Malcolm X. The Copyright Act does not define “author,” but it does define “joint work”:

A “joint work” is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.

“When interpreting a statute, we look first to the language.” The statutory language establishes that for a work to be a “joint work” there must be (1) a copyrightable work, (2) two or more “authors,” and (3) the authors must intend their contributions be merged into inseparable or interdependent parts of a unitary whole. A joint work in this circuit requires each author to make an independently copyrightable contribution to the disputed work.⁹

Malcolm X is a copyrightable work, and it is undisputed that the movie was intended by everyone involved with it to be a unitary whole. It is also undisputed that Aalmuhammed made substantial and valuable contributions to the movie, including technical help, such as speaking Arabic to the persons in charge of the mosque in Egypt, scholarly and creative help, such as teaching the actors how to pray properly as Muslims, and script changes to add verisimilitude to the religious aspects of the movie. Speaking Arabic to persons in charge of the mosque, however, does not result in a copyrightable contribution to the motion picture. Coaching of actors, to be copyrightable, must be turned into an expression in a form subject to copyright. The same may be said for many of Aalmuhammed’s other activities. Aalmuhammed has, however, submitted evidence that he rewrote several specific passages of dialogue that appeared in Malcolm X, and that he wrote scenes relating to Malcolm X’s Hajj pilgrimage that were enacted in the movie. If Aalmuhammed’s evidence is accepted, as it must be on summary judgment, these items would have been independently copyrightable. Aalmuhammed, therefore, has presented a genuine issue of fact as to whether he made a copyrightable contribution. All persons involved intended that Aalmuhammed’s contributions would be merged into interdependent parts of the movie as a unitary whole. Aalmuhammed maintains that he has shown a genuine issue of fact for each element of a “joint work.”

But there is another element to a “joint work.” A “joint work” includes “two or more authors.” Aalmuhammed established that he contributed substantially to the film, but not that he was one of its “authors.” We hold that authorship is required under the statutory definition of a joint work, and that authorship is not the same thing as making a valuable and copyrightable contribution. We recognize that a contributor of an expression may be deemed to be the “author” of that expression for purposes of determining whether it is independently copyrightable. The issue we deal with is a different and larger one: is the contributor an author of the joint work within the meaning of 17 U.S.C. § 101.

By statutory definition, a “joint work” requires “two or more authors.” The word “author” is taken from the traditional activity of one person sitting at a desk with a pen and writing something for publication. It is relatively easy to apply the word “author” to a novel. It is also easy to apply the word to two people who work together in a fairly traditional pen-and-ink way, like, perhaps, Gilbert and Sullivan. In the song, “I Am the Very Model of a Modern Major General,” Gilbert’s words and Sullivan’s tune are inseparable, and anyone who has heard the song knows that it owes its existence to both men, Sir William Gilbert and Sir Arthur Sullivan, as its creative originator. But as the number of contributors grows and the work itself becomes less the product of one or two individuals who create it without much help, the word is harder to apply.

Who, in the absence of contract, can be considered an author of a movie? The word is traditionally used to mean the originator or the person who causes something to come into being, or even the first cause, as when Chaucer refers to the “Author of Nature.” For a movie, that might be the producer who raises the money. Eisenstein thought the author of a movie was the editor. The “auteur” theory suggests that it might be the director, at least if the director is able to impose his artistic judgments on the film. Traditionally, by analogy to books, the author was regarded as the person who writes the screenplay, but often a movie reflects the work of many screenwriters. [Richard Grenier, Capturing the Culture] suggests that the person with creative control tends to be the person in whose name the money is raised, perhaps a star, perhaps the director, perhaps the producer, with control gravitating to the star as the financial investment in scenes already shot grows.

Where the visual aspect of the movie is especially important, the chief cinematographer might be regarded as the author. And for, say, a Disney animated movie like “The Jungle Book,” it might perhaps be the animators and the composers of the music.

The Supreme Court dealt with the problem of defining “author” in new media in Burrow-Giles Lithographic Co. v. Sarony. The question there was, who is the author of a photograph: the person who sets it up and snaps the shutter, or the person who makes the lithograph from it. Oscar Wilde, the person whose picture was at issue, doubtless offered some creative advice as well. The Court decided that the photographer was the author, quoting various English authorities: “the person who has superintended the arrangement, who has actually formed the picture by putting the persons in position, and arranging the place where the people are to be—the man who is the effective cause of that”; “‘author’ involves originating, making, producing, as the inventive or master mind, the thing which is to be protected”; “the man who really represents, creates, or gives effect to the idea, fancy, or imagination.” The Court said that an “author,” in the sense that the Founding Fathers used the term in the Constitution, was “‘he to whom anything owes its origin; originator; maker; one who completes a work of science or literature.’”

Answering a different question, what is a copyrightable “work,” as opposed to who is the “author,” the Supreme Court held in Feist Publications that “some minimal level of creativity” or “originality” suffices. But that measure of a “work” would be too broad and indeterminate to be useful if applied to determine who are “authors” of a movie. So many people might qualify as an “author” if the question were limited to whether they made a substantial creative contribution that that test would not distinguish one from another. Everyone from the producer and director to casting director, costumer, hairstylist, and “best boy” gets listed in the movie credits because all of their creative contributions really do matter. It is striking in Malcolm X how much the person who controlled the hue of the lighting contributed, yet no one would use the word “author” to denote that individual’s relationship to the movie. A creative contribution does not suffice to establish authorship of the movie.

Burrow-Giles, in defining “author,” requires more than a minimal creative or original contribution to the work. Burrow-Giles is still good law, and was recently reaffirmed in Feist Publications. Burrow-Giles and Feist Publications answer two distinct questions; who is an author, and what is a copyrightable work. Burrow-Giles defines author as the person to whom the work owes its origin and who superintended the whole work, the “master mind.” In a movie this definition, in the absence of a contract to the contrary, would generally limit authorship to someone at the top of the screen credits, sometimes the producer, sometimes the director, possibly the star, or the screenwriter—someone who has artistic control. After all, in Burrow-Giles the lithographer made a substantial copyrightable creative contribution, and so did the person who posed, Oscar Wilde, but the Court held that the photographer was the author.

The Second and Seventh Circuits have likewise concluded that contribution of independently copyrightable material to a work intended to be an inseparable whole will not suffice to establish authorship of a joint work.²⁴

Although the Second and Seventh Circuits do not base their decisions on the word “authors” in the statute, the practical results they reach are consistent with ours. These circuits have held that a person claiming to be an author of a joint work must prove that both parties intended each other to be joint authors. In determining whether the parties have the intent to be joint authors, the Second Circuit looks at who has decision making authority, how the parties bill themselves, and other evidence.

In Thomson v. Larson, an off-Broadway playwright had created a modern version of La Boheme, and had been adamant throughout its creation on being the sole author. He hired a drama professor for “dramaturgical assistance and research,” agreeing to credit her as “dramaturg” but not author, but saying nothing about “joint work” or copyright. The playwright tragically died immediately after the final dress rehearsal, just before his play became the tremendous Broadway hit, Rent. The dramaturg then sued his estate for a declaratory judgment that she was an author of Rent as a “joint work,” and for an accounting. The Second Circuit noted that the dramaturg had no decision making authority, had neither sought nor was billed as a co-author, and that the defendant entered into contracts as the sole author. On this reasoning, the Second Circuit held that there was no intent to be joint authors by the putative parties and therefore it was not a joint work.

Considering Burrow-Giles, the recent cases on joint works³³ (especially the thoughtful opinion in Thomson v. Larson), and the Gilbert and Sullivan example, several factors suggest themselves as among the criteria for joint authorship, in the absence of contract.

First, an author “superintends” the work by exercising control. This will likely be a person “who has actually formed the picture by putting the persons in position, and arranging the place where the people are to be-the man who is the effective cause of that,” or “the inventive or master mind” who “creates, or gives effect to the idea.” Second, putative coauthors make objective manifestations of a shared intent to be coauthors, as by denoting the authorship of The Pirates of Penzance as “Gilbert and Sullivan.” We say objective manifestations because, were the mutual intent to be determined by subjective intent, it could become an instrument of fraud, were one coauthor to hide from the other an intention to take sole credit for the work. Third, the audience appeal of the work turns on both contributions and “the share of each in its success cannot be appraised.”⁴⁰

Control in many cases will be the most important factor. The best objective manifestation of a shared intent, of course, is a contract saying that the parties intend to be or not to be co-authors. In the absence of a contract, the inquiry must of necessity focus on the facts. The factors articulated in this decision and the Second and Seventh Circuit decisions cannot be reduced to a rigid formula, because the creative relationships to which they apply vary too much. Different people do creative work together in different ways, and even among the same people working together the relationship may change over time as the work proceeds.

Aalmuhammed did not at any time have superintendence of the work. Warner Brothers and Spike Lee controlled it. Aalmuhammed was not the person “who has actually formed the picture by putting the persons in position, and arranging the place ....” Spike Lee was, so far as we can tell from the record. Aalmuhammed, like Larson’s dramaturg, could make extremely helpful recommendations, but Spike Lee was not bound to accept any of them, and the work would not benefit in the slightest unless Spike Lee chose to accept them. Aalmuhammed lacked control over the work, and absence of control is strong evidence of the absence of co-authorship.

Also, neither Aalmuhammed, nor Spike Lee, nor Warner Brothers, made any objective manifestations of an intent to be coauthors. Warner Brothers required Spike Lee to sign a “work for hire” agreement, so that even Lee would not be a co-author and co-owner with Warner Brothers. It would be illogical to conclude that Warner Brothers, while not wanting to permit Lee to own the copyright, intended to share ownership with individuals like Aalmuhammed who worked under Lee’s control, especially ones who at the time had made known no claim to the role of co-author. No one, including Aalmuhammed, made any indication to anyone prior to litigation that Aalmuhammed was intended to be a co-author and co-owner.

Aalmuhammed offered no evidence that he was the “inventive or master mind” of the movie. He was the author of another less widely known documentary about Malcolm X, but was not the master of this one. What Aalmuhammed’s evidence showed, and all it showed, was that, subject to Spike Lee’s authority to accept them, he made very valuable contributions to the movie. That is not enough for co-authorship of a joint work.

The Constitution establishes the social policy that our construction of the statutory term “authors” carries out. The Founding Fathers gave Congress the power to give authors copyrights in order “to promote the progress of Science and useful arts.” Progress would be retarded rather than promoted, if an author could not consult with others and adopt their useful suggestions without sacrificing sole ownership of the work. Too open a definition of author would compel authors to insulate themselves and maintain ignorance of the contributions others might make. Spike Lee could not consult a scholarly Muslim to make a movie about a religious conversion to Islam, and the arts would be the poorer for that.

The broader construction that Aalmuhammed proposes would extend joint authorship to many overreaching contributors, like the dramaturg in Thomson, and deny sole authors “exclusive authorship status simply because another person rendered some form of assistance.” Claimjumping by research assistants, editors, and former spouses, lovers and friends would endanger authors who talked with people about what they were doing, if creative copyrightable contribution were all that authorship required.

Aalmuhammed also argues that issuance of a copyright registration certificate to him establishes a prima facie case for ownership. A prima facie case could not in any event prevent summary judgment in the presence of all the evidence rebutting his claim of ownership. The presumptive validity of the certificate may be rebutted and defeated on summary judgment. The Copyright Office stated in its response to Aalmuhammed’s application for copyright (during the pendency of this litigation) that his claims “conflict with previous registration claims,” and therefore the Copyright Office had “several questions” for him. One of the questions dealt with the “intent” of “other authors,” i.e., Warner Brothers. The evidence discussed above establishes without genuine issue that the answers to these questions were that Warner Brothers did not intend to share ownership with Aalmuhammed.

Because the record before the district court established no genuine issue of fact as to Aalmuhammed’s co-authorship of Malcolm X as a joint work, the district court correctly granted summary judgment dismissing his claims for declaratory judgment and an accounting resting on co-authorship.

[The judgment of the district court was affirmed as it pertains to this extract.]

Notes and questions

(1) Why didn’t Aalmuhammed cash the $100,000 check from Denzel Washington?

(2) If Aalmuhammed made “substantial and valuable contributions” to the film, why wasn’t he a coauthor?

(3) What matters more, whether the parties subjectively intended to be coauthors or whether their words and actions would have objectively indicated such an intention?

(4) Do you think the presumption that joint authors share equally in the work affects how willing courts are to recognize claims of coauthorship?

(5) If coauthorship is simply one type of authorship, it makes sense that anyone claiming the status of author must add something recognizable as original expression to the joint work. Many circuits, including the Ninth Circuit in Aalmuhammed, hold that a putative co-author must go further and make an independently copyrightable contribution to the joint work. In Gaiman v. McFarlane, 360 F.3d 644 (7th Cir. 2004), the Seventh Circuit suggested that this rule should not apply in situations where no single contribution meets the standard, but the work would be copyrightable if attributed to a single author. In Gaiman v. McFarlane the court said:

The decisions that say, rightly in the generality of cases, that each contributor to a joint work must make a contribution that if it stood alone would be copyrightable weren’t thinking of the case in which it couldn’t stand alone because of the nature of the particular creative process that had produced it.”

Gaiman’s proposed exception was for many years not taken up elsewhere, but the Sixth Circuit has now adopted it. In Estate of George Bernard Worrell, Jr. v. Thang, Inc., No. 25-1863 (6th Cir. 2026), the estate of Parliament-Funkadelic’s keyboardist sought a declaration of co-ownership in the group’s recordings. Reversing the district court, the Sixth Circuit declined the strictest reading of Childress, holding that a putative co-author need not show that his contributions were independently copyrightable, only that he contributed substantial original expression. The Childress standard, the court said, “might be well-suited to simple situations like song lyrics, books, or paintings, but it crumples under the pressure of mixed and collaborative media.” The court also separated two things often run together: what matters is the intent to be a co-author, judged objectively, not the intent to be a co-owner. Note that “copyrightable contribution” in this context refers to the need to identify original expression, not that such expression be fixed.

(6) In the United Kingdom joint works are limited to instances “in which the contribution of each author is not distinct from that of the other authors.” Copyright Designs and Patents Act, 20 1988, c. 48, § 10 (UK). In other words, the U.K. position is that a joint work must be “inseparable” and not just “interdependent.” As the Copyright Office Compendium (3d) explains at 505.1:

A contribution to a joint work is considered “inseparable” if the work contains a single form of authorship, such as a novel or painting, and it is considered “interdependent” if the work contains multiple forms of authorship, such as motion picture, opera, or the music and lyrics of a song. (Citing Senate Report at 103-104).

Why would the United States and the United Kingdom have a different conception of what constitutes a joint work? Which is preferable?

Other joint authorship cases

One of the cases cited in Aalmuhammed is Childress v. Taylor, 945 F.2d 500 (2d Cir. 1991), a leading Second Circuit case establishing the modern joint authorship framework. The dispute involved a play about the comedian Jackie “Moms” Mabley. Taylor, the producer and conceiver of the project, hired playwright Childress to write the script, supplying research materials and making suggestions. When relations soured, Taylor claimed joint authorship. The court held that Taylor was not a co-author because (1) she had not contributed independently copyrightable expression to the final script—her contributions were mostly ideas, themes, and factual material—and (2) there was no evidence of mutual intent to be co-authors. Importantly, the court insisted on “objective manifestations” of intent, rejecting subjective after-the-fact claims. The decision set a high threshold for joint authorship, ensuring that mere contribution of ideas, even if essential to the work’s development, does not equate to authorship without both original expression and a shared, contemporaneous intent to merge contributions into a joint work.

The court also cites Erickson v. Trinity Theatre, Inc., 13 F.3d 1061 (7th Cir. 1994), a case in which the Seventh Circuit considered whether actors’ improvisational contributions to plays made them joint authors. The Erickson court adopted a two-pronged test: a putative co-author must (1) contribute independently copyrightable expression and (2) show mutual intent to be co-authors. The court stressed that mere ideas, suggestions, or unfixed improvisations do not constitute copyrightable expression under the Copyright Act’s fixation requirement. Applying this rule, the court found that while the actors’ improvisations influenced the final plays, the playwright retained control, decided what material to include, and fixed the final scripts in tangible form. There was no objective evidence of shared authorship intent. The decision echoes Aalmuhammed’s emphasis on control as a “gatekeeping” factor, noting that without such a limit, collaborative works could be encumbered by numerous authors with tiny but unquantifiable stakes—potentially discouraging future collaborations.

Another case cited in Aalmuhammed is Thomson v. Larson, 147 F.3d 195 (2d Cir. 1998). In that case, the Second Circuit held that a dramaturg who contributed significant editing, feedback, and suggestions to the hit musical Rent was not a joint author. The court applied the Childress v. Taylor two-part test: (1) each party must make an independently copyrightable contribution, and (2) the parties must intend, at the time the work is created, that their contributions be merged into a joint work. The court found that while the dramaturg’s contributions might have been valuable, they did not rise to the level of independently copyrightable expression. Moreover, there was no objective evidence that Jonathan Larson, the playwright who was by then deceased, intended to share authorship credit—he maintained sole control over the final script, never credited Thomson as an author, and repeatedly referred to Rent as “his” show. The decision reinforces the principle that editorial or advisory input, however creative, does not by itself make someone a co-author absent original expression and mutual intent.

Joint works: questions of timing and derivative works

Weissmann v. Freeman, 868 F.2d 1313 (2d Cir. 1989)

Circuit Judge Cardamone

This appeal presents the paradigm of the problems that arise when a long relationship between accomplished professor and brilliant assistant comes to an end. [Dr. Heidi S. Weissmann, a nuclear medicine specialist, sued her former mentor, Dr. Leonard M. Freeman, after he removed her name from a 1985 article she authored, “Hepatobiliary Imaging,” (referred to as P-1) and circulated it under his own name for a lecture. The work, prepared for the Radiological Society of North America’s syllabus, incorporated elements from their earlier joint research but also contained new material Weissmann created alone.]

[The parties had collaborated from 1977 to 1985 on research and publications about IDA imaging, but Weissmann claimed sole authorship of P-1.] Although P-1 appears to restate the central propositions asserted in the prior [joint] works, Weissmann’s exhibits includes the following new elements: (1) a new selection of photo illustrations and associated captions; (2) references to four recent reports in the pertinent literature; (3) new textual additions; and (4) reorganization of previous material. Appellee conceded at trial that this material in P-1 was created solely by appellant.

In the summer of 1987 Dr. Freeman was invited to give a review course on nuclear medicine at Mount Sinai. He prepared P-1 to use in giving the course by deleting Dr. Weissmann’s name from P-1 and replacing it with his own, and by adding three words to the title. Fifty copies of the article were made. Before the date set for the course, appellant obtained one of the copies, and through counsel requested that her revised article not be circulated, and that all those who had received copies be informed that she claimed sole authorship of it. The article was removed from the packet of course materials. Dr. Freeman delivered his lecture without the use of his version of P-1.

After a four-day bench trial, Judge Pollack in a written decision concluded that Dr. Freeman’s use of P-1 did not violate the copyright law. In support of its determination that Freeman had not infringed any legally cognizable rights that appellant may have had in P-1, the district court found that appellee was a joint author, and therefore a co-owner of any copyright Weissmann acquired in the article. The trial court also determined that P-1’s new matter was too trivial to qualify for protection as a derivative work under the copyright statute.

Here the district court determined that the entire series of the parties’ works on the subject of radionuclide imaging — including the work alleged to have been infringed — constituted a single evolutionary joint work. It discussed the conceded joint authorship in the preexisting works. Without making any specific findings respecting P-1 itself, the court found that Dr. Freeman was a co-owner of P-1 and that P-1 was a joint work. The trial court made this surprising finding despite Dr. Freeman’s concession that he had no hand in P-1’s preparation. The finding was made based on the district court’s mistaken view that joint authorship of the prior existing works automatically makes the two joint authors co-owners of the derivative work. Such a ruling stands copyright law on its head. It flies in the face of the Copyright Act which affords protection to each work at the moment of its creation. Thus, § 101 provides for those works prepared over time that “the portion of it that has been fixed at any particular time constitutes the work as of that time, and where the work has been prepared in different versions, each version constitutes a separate work.”

Of greater significance is that the trial court’s view would convert all derivative works based upon jointly authored works into joint works, regardless of whether there had been any joint labor on the subsequent version. If such were the law, it would eviscerate the independent copyright protection that attaches to a derivative work that is wholly independent of the protection afforded the preexisting work. See § 103(b). Hence, it was a plain error for the district court to rule, as a matter of law, that Dr. Freeman’s joint authorship of the prior works made him a joint author with appellant in the derivative work.

The district court also made a finding of fact that Dr. Freeman was a joint author with Dr. Weissmann of P-1. Section 201(a) of the Act provides: “Copyright in a work protected under [the Copyright Act] vests initially in the author or co-authors of the work.” Section 101 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.” In a joint work each author automatically acquires an undivided ownership in the entire work including any portion of it. Thus, an action for infringement between joint owners will not lie because an individual cannot infringe his own copyright. The only duty joint owners have with respect to their joint work is to account for profits from its use.

A review of the meaning of §§ 101 and 103(b) and of their legislative history reveals two basic criteria that must be satisfied before one is a joint author of a derivative work. First, each putative author must have “contributed” to the work. Second, each must intend to contribute to a joint work at the time his or her alleged contribution is made. Because § 103(b) extends independent protection to derivative works, an intent to contribute or an actual contribution to previous works does not serve as proof of ownership in the derivative work. See House Report at 120. We consider these two criteria.

The statute envisions that each author contribute to a joint work. “Under the [§ 101] definition a work would not be ‘joint’ unless its authors collaborated among themselves or unless each of the authors knew, at the time the work was being written, that his contribution would be integrated as an ‘inseparable’ or ‘interdependent’ part of a ‘unitary whole.’” Supplementary Report of the Register of Copyrights on the General Revision of the U.S. Copyright Law: 1965 Revision Bill, 89th Cong., 1st Sess., Copyright Law Revision Part 6, at 65 (House Comm. Print 1965), reprinted in 1 Copyright Law Revision (1964-1965).

In enacting the definition of a joint work set forth in § 101, Congress endeavored to “make plain that copyright in a derivative work is independent of, and does not enlarge the scope of rights in, any pre-existing material incorporated in it. There was thus no need to spell this conclusion out in the definition of ‘joint work.’” House Report at 120. The legislative history clearly indicates that one cannot be deemed to be a joint author without actually collaborating in the work’s preparation. Critical therefore “is the intention, at the time the writing is done, that the parts be absorbed or combined into an integrated unit.” Id. That intention must be with respect to the work in which a copyright is claimed, not with respect to the prior works from which it is derived. See MCA, Inc. v. Wilson, 425 F.Supp. 443, 455 (S.D.N.Y.1976) (owner of underlying work obtains no property rights in derivative work), aff’d, 677 F.2d 180 (2d Cir.1981).

In the case at hand, because Dr. Freeman conceded that he had not participated in drafting the new matter included in P-1, it follows as a logical corollary, therefore, that he acquired no interest in or right to use P-1 beyond those rights which he had as co-author in the prior joint material incorporated into P-1. Even though one co-author has the right to revise a joint work in order to create an individual derivative work, the other co-author acquires no property rights in the newly created work prepared without his involvement.

The second point upon which inquiry is focused is Dr. Weissmann’s intent. The district court made no express finding on this critical issue. It simply stated in conclusory fashion that because the parties had intended P-1’s predecessors to be used jointly as a “stock piece” to accompany their review lectures, they had somehow impliedly agreed that all future works on the subject of radioactive analogs of IDA, including P-1, would also be a joint work.

In order for a work to be deemed a joint work, the parties must evince “the intention that their contributions be merged,” § 101 (emphasis added), “at the time the writing is done,” House Report at 120, not at some later date. The law on this point is set forth in Edward B. Marks Music Corp. v. Jerry Vogel Music Co., 140 F.2d 266 (2d Cir.1944) (L. Hand, J.). There it was observed that a finding of joint authorship requires that each author intend his or her contribution, at the time that it is created, to become part of a unitary work to which another will make or already has made a contribution. Or, as Judge Hand stated it, “when both plan an undivided whole ..., their separate interests will be as inextricably involved, as are the threads out of which they have woven the seamless fabric of the work.” Id. at 267; see also Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., (“Melancholy Baby”), 161 F.2d 406, 409 (2d Cir.1946).

Marks was a case in which one individual had written the lyrics for a song and another had written the music. Neither party knew the other, but both were aware that their individual efforts would not stand alone. In holding that the resulting song was a joint work, the critical fact was that both parties were equally aware that their individual authorship efforts would have to be combined in order to create the final integrated product — a commercially viable song. See Marks, 140 F.2d at 267. From this, the rule has evolved that an author who intends to create a joint work must clearly demonstrate his or her intent in that regard. Although such an intent may, as in Marks, be inferred from the circumstances surrounding the creation of the work, in the absence of such a showing, the work is presumed to be the product of an individual author and is the sole property of its creator.

In the present case, Drs. Weissmann and Freeman collaborated in the preparation and publication of the works from which P-1 was derived. Yet, there is no evidence that they intended their joint product to be forever indivisible like the finite whole of the completed single song in Marks. The facts point to a contrary conclusion. Scientific research is a quest for new discoveries and the preexisting joint works by definition were continually evolving. Dr. Weissmann believed she had a new and better approach and decided to author her research alone. Section 103(b) of the Copyright Act gives her that right when it extends independent protection to derivative works. The joint authorship of the underlying work does not confer any property right in the new work, save those rights which the co-author (here Dr. Freeman) of the previous works retains in the material used as part of the compilation of the derivative work. The district court opinion reveals a fundamental misunderstanding of these principles. This misconception is reflected in its discussion of Dr. Weissmann’s intent to merge her efforts with Dr. Freeman based only on P-1’s predecessors, and not on P-1 itself.

The remainder of discussion of joint authorship concerns the substantial and uncontroverted evidence that Dr. Weissmann intended P-1 to be her own individual work. As a preliminary matter, it is important to note that of the 88 articles, abstracts, and book chapters listed on her curriculum vitae, 71 credit Dr. Freeman as a co-author. Appellant’s having deviated from that pattern in submitting P-1 for publication as a chapter in the Radiological Society of North America’s book under the name “Heidi S. Weissmann” is persuasive proof of the fact that she intended this particular piece to represent her own individual authorship. Appellant’s use of her own by-line on P-1 constitutes prima facie proof that this work was not intended to be joint. Appellee failed to produce any evidence to rebut appellant’s showing. In fact, Dr. Freeman lectured at the same meeting at which P-1 was first presented, and made no objection to the omission of his name from it.

Again, had the trial court separately considered P-1, it would have concluded that appellant’s article was the only work with respect to which it was repeatedly conceded that appellee had played no role. Yet, the trial judge found that “plaintiff did almost all of the writing” for the works listed on her resume of which Freeman was a “co-author” and that she routinely “submitted drafts to Dr. Freeman before publication.” It also found that “she would always make sure to leave a copy of a manuscript on his desk if he was not in town or busy with other commitments; she did not always get comments back, but often she did.” Hence, it is significant on the issue of appellant’s intent that P-1 was one of those few works that was not submitted for Dr. Freeman’s review and on which she did not receive his comments. These facts — found by the district court — strongly evidence appellant’s intent that P-1 be solely her own work.

The district court found that Freeman’s participation in the preparation of P-1 was “strikingly illustrated” by Weissmann’s inclusion in P-1 of a section entitled “False-Positive Studies for Acute Cholecystitis” which Dr. Freeman had independently composed for a 1984 Harvard review course. The incorporation of this material into P-1 is irrelevant to the question of whether or not the parties intended P-1 to be a joint work. Appellant correctly points out that the inclusion of the “False Positive” section is not proof of any intention on Dr. Freeman’s part to make a contribution to P-1 because, prior to 1985, he could not have formed an intent to contribute his efforts to her then nonexistent work.

In sum, the evidence presented at trial fully supports appellant’s contention that the work alleged to have been infringed was solely the product of her authorship efforts. Although her work derived from preexisting jointly authored material, appellee played no role in P-1’s creation. As a non-contributing party to P-1, Dr. Freeman’s intent regarding his contributions to the underlying preexisting work is not relevant to claimed joint authorship of P-1. The district court’s conclusion that P-1 was a joint work because the entire series of the parties’ articles on IDA, including P-1, was one evolutionary joint work disregards the copyright protection accorded derivative works, independent of the preexisting works under § 103(b). As a consequence of its plain error of law in this regard, the district court’s finding of fact that Freeman’s co-authorship of the preexisting works also made him a joint author of P-1 is clearly erroneous.

[The court also found that P-1 qualified for protection as a derivative work, noting that Section 101 of the Copyright Act defines a derivative work (in part) as “[a] work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship....” The court said: “Thus, it is clear that “the manner of expression, the author’s analysis or interpretation of events, the way he structures his material and marshals facts, his choice of words, and the emphasis he gives to particular developments” are protected under the copyright laws.” The court rejected the district court’s conclusion that the changes made to P-1 were not sufficient.]

For the reasons stated, we hold that P-1 was an individually-authored, copyrightable, derivative work created by appellant. Accordingly, we reverse the judgment of the district court and remand the case to it with directions that judgment be entered in favor of appellant Weissmann.

Circuit Judge Pierce, concurring

I agree that we must reverse and remand because Dr. Freeman failed to rebut appellant’s claim (evidenced by her registration of P-1 as a derivative work) that she did not intend the new material to be “merged” with the prior joint work. Appellant’s certificate of registration served as “prima facie evidence of the validity of the copyright and of the facts stated in the certificate.” 17 U.S.C. § 410(c) (1982). For Dr. Freeman to claim that his use was not an infringement, but rather that the work was “joint,” was a defense much like any other under the Copyright Act. Therefore, it was incumbent upon Dr. Freeman to rebut appellant’s prima facie evidence that the work (P-1) was derivative, not joint. Appellee failed to meet his burden, however, for he failed to present sufficient evidence to demonstrate appellant’s intent to create a joint work.

The district court appears to have applied the opposite presumption. Rather than focusing on the appellant’s intent at the time of creating the derivative work, the court dwelt primarily on the parties’ long-standing and close professional relationship. From that, it seems to have presumed that P-1 — a by-product of that professional collaboration — was a “joint” work. That presumption, however, in effect placed the burden on the putative author to show that the work was derivative, rather than on the putative infringer to show that the work was joint. The district court’s approach was therefore at odds with the statutory scheme of burdens of proof, and must be reversed as a matter of law.

I differ, though, with Judge Cardamone’s reasoning in Part I. The fact that Dr. Freeman was not the author of any of the new material that went into P-1 did not, of itself, preclude that work from being “joint.” Of course, as Judge Cardamone notes, one cannot be found to be a joint author of a work without actually having contributed to that work. However, that does not mean that an author, to be a “joint” author, must have contributed to each incremental addition to the work. Thus, in this case, had Dr. Weissmann’s intent been otherwise — had she intended the work to be joint — Dr. Freeman could have been deemed a joint author simply by virtue of his contributions to the earlier work, into which Dr. Weissmann’s material would have been “merged.” See, e.g., Edward B. Marks Music Corp. v. Jerry Vogel Music Co., 140 F.2d 266, 267 (2d Cir.1944).

Further, I do not agree that the earlier incorporation of Dr. Freeman’s “False Positives” study into the evolving syllabus was irrelevant. Though not dispositive, the parties’ past willingness to have their works absorbed into the syllabus was relevant to the question of appellant’s intent when she reshaped the syllabus into P-1.

On balance, however, I agree with the court that the evidence relied upon by appellee was not sufficient to show that appellant intended to create a joint work. Therefore, I join the conclusion of the court, and would reverse and remand, with judgment to be entered for appellant.

Notes and questions

(1) In his concurring majority opinion, Judge Pierce asserted that “the fact that Dr. Freeman was not the author of any of the new material that went into [the 1985 paper] did not, of itself, preclude that work from being ‘joint.’” He argued that “Dr. Freeman could have been deemed a joint author simply by virtue of his contributions to the earlier work” if that had been the clear intention of the parties. Both judges cite to Edward B. Marks Music Corp. v. Jerry Vogel Music Co., who is right?

(2) In 2020, the average No. 1 hit on the Billboard Hot 100 singles chart had 5.5 credited writers, a significant increase from 2.1 writers in 1990. This increase owes a lot to the rise of Hip-hop and the blurring of the distinction between songwriting and production. In the music industry it is common practice that the writers of sampled songs are credited as songwriters of the new track. Is this practice consistent with the rules about joint authorship in copyright? If not, should copyright law, or the music industry, change?

(3) The issue of timing: in Shapiro v. Jerry Vogel Music Co., 221 F.2d 569 (2d Cir. 1955), the Second Circuit found that the intention required for joint authorship could be formulated post hoc. In The Twelfth Street Rag case (as it is commonly known), the musician Euday L. Bowman had composed an instrumental piano solo in 1914, and assigned his rights thereto to the Jenkins Music Company. In 1918 the Jenkins Company retained James S. Sumner to write a lyric for Bowman’s music, but Sumner’s contribution was not a work for hire. The court held that under these circumstances, the combined words and music constituted a joint work.

It seems rather remarkable on these facts that the Second Circuit would allow the assignee of an ownership interest in a musical composition to add new elements to a pre-existing work and thereby create new ownership interests in the resulting “joint work,” and thus extinguishing any other ownership interests in the pre-existing work. In Batiste v. Island Records, Inc., 179 F.3d 217, 222 n.7 (5th Cir. 1999), the Fifth Circuit commented that “Congress overruled this doctrine in 1976 by adopting the current definition for “joint work,” which requires that each author intend the merger at the time the author prepares his or her contribution.” (emphasis added)). This doesn’t seem quite right either. In general, there is no reason why the intention to merge couldn’t arise after the author prepares her contribution, after all, the author can change her mind about other aspects of the work without necessarily creating a new version. Works generally have a certain amount of definitional plasticity until they are released to the public and not every change to a work creates a new derivative work layered on top of the old one. However, the Twelfth Street Rag case goes too far in holding that an assignee of the original author can form that intention. At the moment the work is transferred, it loses the plasticity that allows it to grow and morph into a joint work.

Ownership of Employee Works and Commissioned Works

The United States has long recognized employer ownership of works created by employees within the scope of their employment. Exactly where the boundary between the status of employee and independent contractor should be drawn is a fact specific question. Likewise, the equally important question of which activities are within the scope of employment.

17 U.S. Code § 201 - Ownership of copyright

(b) Works Made for Hire.— In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.

17 U.S. Code § 101

A “work made for hire” is—(1) a work prepared by an employee within the scope of his or her employment;

Under the 1976 Act, ‘work made for hire’ is defined as either “a work prepared by an employee within the scope of his or her employment” or as a work specially ordered or commissioned as discussed in more detail below.

Who is an employee?

Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989)

(1) a work prepared by an employee within the scope of his or her employment; or

(2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.

What is within the scope of employment?

Section 228 of the Restatement Second, Agency, states that an employee’s conduct is within the scope of employment “only if: (a) it is the kind he is employed to perform; (b) it occurs substantially within the authorized time and space limits; [and] (c) it is actuated, at least in part, by a purpose to serve the master.” Restatement Second, Agency § 228.

Non-Employee Works Made for Hire

Under the 1909 Copyright Act, the ownership of commissioned works was a question of contract law, but there was a general presumption that the copyright was intended to belong to a party who commissioned and paid for the work; conversely, an artist who created the work at his or her own expense was presumed to be the owner. This is no longer the case under the Copyright Act of 1976.

Work by an independent contractor can in some cases qualify as a “work made for hire” so long as it was created at the instance and expense of the commissioning party. However, by statute, only certain specific categories of specially ordered or commissioned works created by an independent contractor can qualify as “works made for hire.”

Under the 1976 Act, “work made for hire” is defined as either “a work prepared by an employee within the scope of his or her employment” or as a work specially ordered or commissioned if that work falls into one of the nine listed categories, and the parties expressly agree in a written instrument signed by them.

17 U.S. Code § 101

A “work made for hire” is—

(1) a work prepared by an employee within the scope of his or her employment; or

(2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a “supplementary work” is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an “instructional text” is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.

The nine categories are:

1. a contribution to a collective work,

2. as a part of a motion picture or other audiovisual work,

3. as a translation,

4. as a supplementary work,

5. as a compilation,

6. as an instructional text,

7. as a test,

8. as answer material for a test, or

9. as an atlas

It is important to understand that if a work falls outside these categories, or is not the subject of a written agreement signed by the author and the entity commissioning the work, then there will be no assignment by presumption or by implied or oral contract.

Notice that since photographs and architectural drawings are not included in the categories set forth in the work made for hire definition, they do not qualify as works made for hire. Consequently, regardless of contractual terms to the contrary, the work for hire doctrine is inapplicable to non-employee photographers or architects.

§ 101 hints at an interesting story. “In determining whether any work is eligible to be considered a work made for hire under paragraph (2), neither the amendment contained in section 1011(d) of the Intellectual Property and Communications Omnibus Reform Act of 1999, as enacted by section 1000(a)(9) of Public Law 106–113, nor the deletion of the words added by that amendment—(A) shall be considered or otherwise given any legal significance, or (B) shall be interpreted to indicate congressional approval or disapproval of, or acquiescence in, any judicial determination, by the courts or the Copyright Office. Paragraph (2) shall be interpreted as if both section 2(a)(1) of the Work Made For Hire and Copyright Corrections Act of 2000 and section 1011(d) of the Intellectual Property and Communications Omnibus Reform Act of 1999, as enacted by section 1000(a)(9) of Public Law 106–113, were never enacted, and without regard to any inaction or awareness by the Congress at any time of any judicial determinations.”

Transfer of Copyright Interests

Requirements for transfer

Copyrights are personal property. Like other forms of personal property, a copyright interest may be transferred in whole or in part by any means of conveyance or by operation of law and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession.

However, Section 204(a) of the Copyright Act provides that “a transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent.”

17 U.S. Code § 204 - Execution of transfers of copyright ownership

(a) A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent.

Note that Section 101 defines “transfer of copyright ownership” to include both assignments and exclusive licenses. So, unless the interest being conveyed is a non-exclusive license, the conveyance must comply with the Copyright Act’s writing requirement.

Also note that a grant of copyright, even if it purports to convey “all right, title and interest,” is generally construed not to assign any existing right to sue that has already arisen by virtue of some third party’s infringement prior to the assignment. However, such pre-existing causes of action may be assigned by expressly including them in the grant. See Oskar Systems, LLC v. Club Speed, Inc., 745 F. Supp. 2d 1155 (C.D. Cal. 2010).

Section 204(a) of the Copyright Act is not just the Copyright version of the Statute of Frauds. It is in fact more stringent than the common law Statute of Frauds; the writing must be intended as a memorandum of contract communicated to the other party, and the equitable defense of estoppel does not apply.

Failed transfers and implied licenses

Effects Assocs. v. Cohen, 908 F.2d 555 (9th Cir. 1990)

Effects Assocs. v. Cohen illustrates a number of important features of the law relating to ownership and transfer of copyright.

Effects Associates had created special-effects footage for certain scenes in a movie that Cohen produced. Although Cohen agreed to pay Effects Associates a fee for the footage, the parties did not discuss the ownership of the copyright to the special-effects footage. When Cohen subsequently refused to pay the fee in full, the ensuing lawsuit centered on whether Effects Associates had transferred ownership of the footage to Cohen.

Citing § 204, the court found that the lack of a written agreement to transfer any copyright meant that Effects Associates had only granted Cohen an implied license to use the footage in his movie.

A license was implied because

Effects created a work at defendant’s request and handed it over, intending that defendant copy and distribute it. To hold that Effects did not at the same time convey a license to use the footage in “The Stuff” would mean that plaintiff’s contribution to the film was “of minimal value,” a conclusion that can’t be squared with the fact that Cohen paid Effects almost $56,000 for this footage.

The court concluded that Cohen therefore had committed no copyright infringement but might nonetheless face liability for a breach of contract.

The short sequence of footage prepared at request of motion picture producer would probably have been assigned in total under the 1909 Act, but there was no transfer in this case because of the strict writing requirement in § 204. This lack of writing was not an obstacle to an implied nonexclusive license to incorporate the footage, and distribute it, as part of the film.

Fractured Ownership – Copyright Divisibility

The indivisibility of copyright ownership was a fundamental doctrine under the 1909 Copyright Act that treated copyright as a single, undivided “bundle” of rights that could not be fragmented and owned separately. Under this framework, only the copyright proprietor—the person or entity holding the complete bundle—possessed legal standing to sue for infringement. When a copyright owner granted someone less than the entire bundle, such as reproduction, performance, or publication rights, it was legally classified as a license rather than an assignment. Consequently, even exclusive licensees did not own any portion of the copyright and therefore could not initiate infringement lawsuits independently. This doctrine was designed partly to protect alleged infringers from facing multiple lawsuits from different partial right holders and to eliminate confusion about enforcement authority.

The practical implications of this doctrine proved increasingly problematic as copyright markets evolved. Even when licensees held exclusive rights to specific uses, such as book publishing, they could not pursue infringers without involving the copyright proprietor in any legal action. If the owner refused to participate or was unavailable, licensees had no legal remedy despite their exclusive arrangements. Additionally, licenses could not be registered or recorded as ownership interests, creating difficulties in protecting rights against subsequent transferees or creditors. This system severely limited commercial flexibility in an era when copyright markets increasingly relied on splitting rights across different media, territories, and timeframes.

By the 1960s and 1970s, the creative industries had fundamentally shifted toward fragmented exploitation models where authors and studios routinely sold or licensed rights by medium, territory, and duration. The indivisibility doctrine created legal awkwardness for these arrangements and gave unfair bargaining leverage to copyright proprietors, who could exploit their unique enforcement position to renegotiate terms or block enforcement actions even after granting exclusive licenses. The rigid framework simply could not accommodate the sophisticated licensing structures that had become standard business practice in publishing, entertainment, and other creative industries.

The 1976 Act abandoned the concept of indivisibility of copyright ownership. The owner of any of the exclusive rights under Section 106 is the Copyright owner for all relevant purposes. Most importantly, the owner of a single right under 106 can bring an action for the infringement of that right without the cooperation of the owners of the other 106 rights.

§ 201 (d) Transfer of Ownership.—

(1) The ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law, and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession.

(2) Any of the exclusive rights comprised in a copyright, including any subdivision of any of the rights specified by section 106, may be transferred as provided by clause (1) and owned separately. The owner of any particular exclusive right is entitled, to the extent of that right, to all of the protection and remedies accorded to the copyright owner by this title.

17 U.S. Code § 101. Definitions

A “transfer of copyright ownership” is an assignment, mortgage, exclusive license, or any other conveyance, alienation, or hypothecation of a copyright or of any of the exclusive rights comprised in a copyright, whether or not it is limited in time or place of effect, but not including a nonexclusive license.

Congress addressed these concerns comprehensively in the 1976 Copyright Act by explicitly abolishing the indivisibility doctrine and recognizing that copyright rights could be divided and owned separately. The new law established that any exclusive right under Section 106, or any subdivision of such rights, could be transferred and owned independently. It expanded the definition of “transfer of copyright ownership” to include both assignments and exclusive licenses as ownership interests for enforcement purposes, and crucially granted exclusive licensees standing to sue for infringement without requiring other rightsholders to join the action. Congress concluded that while divisibility might occasionally result in multiple lawsuits, this risk was far outweighed by the benefits of increased flexibility, clearer transactions, reduced disputes, and facilitated copyright markets, while also aligning copyright law more closely with other property law concepts where fractional ownership is routine.

The divisibility of copyright rights has some important implications. Given that Section 101 recognizes an exclusive license as a form of transfer of ownership, should exclusive licenses themselves be transferable and sub licensable by default? In Gardner v. Nike (9th Cir. 2002), the court held that this divisibility did not change the longstanding rule—carried over from the 1909 Act—that an exclusive licensee cannot assign or sublicense rights without the licensor’s consent, absent express contractual authorization. Reading § 201(d)(2)’s grant of “protection and remedies” narrowly, the court stressed policy concerns over licensors’ ability to control and monitor use, and affirmed that consent remains required for transfers of exclusive licenses. But note that Gardner only establishes a default rule, and however that default was set, a licensor would have the ability to expressly permit or forbid subsequent transfer and sublicensing.

Not everyone agrees with the Ninth Circuit in Gardner. For example, the court in In re Golden Books Family Entertainment, Inc., 269 B.R. 311 (Bankr. D. Del. 2001) noted at 318:

It is difficult to understand why the Gardner court held that the phrase ‘protections and remedies’ confers on exclusive licensees the particular rights of copyright owners that are set forth in Section 501(b), but does not confer to exclusive licensees the rights of copyright owners, such as the right to freely assign, that are set forth in § 106.”

In Davis v. Blige, 505 F.3d 90, 99 n.10 (2d Cir. 2007), the Second Circuit said that “the differences between an ‘exclusive’ license and an assignment or transfer of copyright ownership interest have diminished to the point that the terms are nearly synonymous.” Does this track with the Ninth Circuit’s opinion in Gardner v. Nike?

Termination of Transfers Under the 1909 Act

Stewart v. Abend, 495 U.S. 207 (1990)

Justice O’Connor delivered the opinion of the Court.

The author of a pre-existing work may assign to another the right to use it in a derivative work. In this case the author of a pre-existing work agreed to assign the rights in his renewal copyright term to the owner of a derivative work, but died before the commencement of the renewal period. The question presented is whether the owner of the derivative work infringed the rights of the successor owner of the pre-existing work by continued distribution and publication of the derivative work during the renewal term of the pre-existing work.

Cornell Woolrich authored the story “It Had to Be Murder,” which was first published in February 1942 in Dime Detective Magazine. The magazine’s publisher, Popular Publications, Inc., obtained the rights to magazine publication of the story and Woolrich retained all other rights. Popular Publications obtained a blanket copyright for the issue of Dime Detective Magazine in which “It Had to Be Murder” was published.

The Copyright Act of 1909 (1909 Act) provided authors a 28-year initial term of copyright protection plus a 28-year renewal term. See 17 U.S.C. § 24 (1976 ed.). In 1945, Woolrich agreed to assign the rights to make motion picture versions of six of his stories, including “It Had to Be Murder,” to B. G. De Sylva Productions for $9,250. He also agreed to renew the copyrights in the stories at the appropriate time and to assign the same motion picture rights to De Sylva Productions for the 28-year renewal term. In 1953, actor Jimmy Stewart and director Alfred Hitchcock formed a production company, Patron, Inc., which obtained the motion picture rights in “It Had to Be Murder” from De Sylva’s successors in interest for $10,000.

In 1954, Patron, Inc., along with Paramount Pictures, produced and distributed “Rear Window,” the motion picture version of Woolrich’s story “It Had to Be Murder.” Woolrich died in 1968 before he could obtain the rights in the renewal term for petitioners as promised and without a surviving spouse or child. He left his property to a trust administered by his executor, Chase Manhattan Bank, for the benefit of Columbia University. On December 29, 1969, Chase Manhattan Bank renewed the copyright in the “It Had to Be Murder” story pursuant to 17 U.S.C. § 24 (1976 ed.). Chase Manhattan assigned the renewal rights to respondent Abend for $650 plus 10% of all proceeds from exploitation of the story.

“Rear Window” was broadcast on the ABC television network in 1971. Respondent then notified petitioners Hitchcock (now represented by co-trustees of his will), Stewart, and MCA Inc., the owners of the “Rear Window” motion picture and renewal rights in the motion picture, that he owned the renewal rights in the copyright and that their distribution of the motion picture without his permission infringed his copyright in the story. Hitchcock, Stewart, and MCA nonetheless entered into a second license with ABC to rebroadcast the motion picture. In 1974, respondent filed suit against these same petitioners, and others, in the United States District Court for the Southern District of New York, alleging copyright infringement. Respondent dismissed his complaint in return for $25,000.

Three years later, the United States Court of Appeals for the Second Circuit decided Rohauer v. Killiam Shows, Inc., 551 F. 2d 484 (1977), in which it held that the owner of the copyright in a derivative work may continue to use the existing derivative work according to the original grant from the author of the pre-existing work even if the grant of rights in the pre-existing work lapsed. Several years later, apparently in reliance on Rohauer, petitioners re-released the motion picture in a variety of media, including new 35 and 16 millimeter prints for theatrical exhibition in the United States, videocassettes, and videodiscs. They also publicly exhibited the motion picture in theaters, over cable television, and through videodisc and videocassette rentals and sales.

Respondent then brought the instant suit in the United States District Court for the Central District of California against Hitchcock, Stewart, MCA, and Universal Film Exchanges, a subsidiary of MCA and the distributor of the motion picture. Respondent’s complaint alleges that the re-release of the motion picture infringes his copyright in the story because petitioners’ right to use the story during the renewal term lapsed when Woolrich died before he could register for the renewal term and transfer his renewal rights to them. Respondent also contends that petitioners have interfered with his rights in the renewal term of the story in other ways. He alleges that he sought to contract with Home Box Office (HBO) to produce a play and television version of the story, but that petitioners wrote to him and HBO stating that neither he nor HBO could use either the title, “Rear Window” or “It Had to Be Murder.” Respondent also alleges that petitioners further interfered with the renewal copyright in the story by attempting to sell the right to make a television sequel and that the re-release of the original motion picture itself interfered with his ability to produce other derivative works.

Petitioners would have us read into the Copyright Act a limitation on the statutorily created rights of the owner of an underlying work. They argue in essence that the rights of the owner of the copyright in the derivative use of the pre-existing work are extinguished once it is incorporated into the derivative work, assuming the author of the pre-existing work has agreed to assign his renewal rights. Because we find no support for such a curtailment of rights in either the 1909 Act or the 1976 Act, or in the legislative history of either, we affirm the judgment of the Court of Appeals.

Petitioners and amicus Register of Copyrights assert, as the Court of Appeals assumed, that § 23 of the 1909 Act, 17 U.S.C. § 24 (1976 ed.), and the case law interpreting that provision, directly control the disposition of this case. Respondent counters that the provisions of the 1976 Act control, but that the 1976 Act re-enacted § 24 in § 304 and, therefore, the language and judicial interpretation of § 24 are relevant to our consideration of this case. Under either theory, we must look to the language of and case law interpreting § 24.

The right of renewal found in § 24 provides authors a second opportunity to obtain remuneration for their works. Section 24 provides:

“[T]he author of [a copyrighted] work, if still living, or the widow, widower, or children of the author, if the author be not living, or if such author, widow, widower, or children be not living, then the author’s executors, or in the absence of a will, his next of kin shall be entitled to a renewal and extension of the copyright in such work for a further term of twenty-eight years when application for such renewal and extension shall have been made to the copyright office and duly registered therein within one year prior to the expiration of the original term of copyright.” 17 U.S. C. § 24 (1976 ed.)

Since the earliest copyright statute in this country, the copyright term of ownership has been split between on original term and a renewal term. Originally, the renewal was intended merely to serve as an extension of the original term; at the end of the original term, the renewal could be effected and claimed by the author, if living, or by the author’s executors, administrators, or assigns. See Copyright Act of May 31, 1790, ch. XV, § 1, 1 Stat. 124. In 1831, Congress altered the provision so that the author could assign his contingent interest in the renewal term, but could not, through his assignment, divest the rights of his widow or children in the renewal term. See Copyright Act of February 3, 1831, ch. XVI, 4 Stat. 436. The 1831 renewal provisions created “an entirely new policy, completely dissevering the title, breaking up the continuance . . . and vesting an absolutely new title eo nomine in the persons designated.” White-Smith Music Publishing Co. v. Goff, 187 F. 247, 250 (CA1 1911). In this way, Congress attempted to give the author a second chance to control and benefit from his work. Congress also intended to secure to the author’s family the opportunity to exploit the work if the author died before he could register for the renewal term. The evident purpose of the renewal provision is to provide for the family of the author after his death. Since the author cannot assign his family’s renewal rights, it takes the form of a compulsory bequest of the copyright to the designated persons.

In its debates leading up to the Copyright Act of 1909, Congress elaborated upon the policy underlying a system comprised of an original term and a completely separate renewal term. The renewal term permits the author, originally in a poor bargaining position, to renegotiate the terms of the grant once the value of the work has been tested. “Unlike real property and other forms of personal property, [a copyright] is by its very nature incapable of accurate monetary evaluation prior to its exploitation.” Nimmer on Copyright § 9.02 (1989) (hereinafter Nimmer).

“If the work proves to be a great success and lives beyond the term of twenty-eight years, . . . it should be the exclusive right of the author to take the renewal term, and the law should be framed . . . so that [the author] could not be deprived of that right.” House Report at 14. With these purposes in mind, Congress enacted the renewal provision of the Copyright Act of 1909, 17 U.S.C. § 24 (1976 ed.). With respect to works in their original or renewal term as of January 1, 1978, Congress retained the two-term system of copyright protection in the 1976 Act. See 17 U.S.C. §§ 304(a) and (b) (1988 ed.) (incorporating language of 17 U.S.C. § 24 (1976 ed.)).

Applying these principles in Miller Music Corp. v. Charles N. Daniels, Inc., 362 U.S. 373 (1960), this Court held that when an author dies before the renewal period arrives, his executor is entitled to the renewal rights, even though the author previously assigned his renewal rights to another party. “An assignment by an author of his renewal rights made before the original copyright expires is valid against the world, if the author is alive at the commencement of the renewal period. Fred Fisher Co. v. M. Witmark & Sons, 318 U.S. 643, so holds.” Id., at 375. If the author dies before that time, the “next of kin obtain the renewal copyright free of any claim founded upon an assignment made by the author in his lifetime. These results follow not because the author’s assignment is invalid but because he had only an expectancy to assign; and his death, prior to the renewal period, terminates his interest in the renewal which by § 24 vests in the named classes.” Ibid.

The legislative history of the 1909 Act echoes this view, … the renewal provisions were intended to give the author a second chance to obtain fair remuneration for his creative efforts and to provide the author’s family a “new estate” if the author died before the renewal period arrived.

An author holds a bundle of exclusive rights in the copyrighted work, among them the right to copy and the right to incorporate the work into derivative works. By assigning the renewal copyright in the work without limitation, as in Miller Music, the author assigns all of these rights. After Miller Music, if the author dies before the commencement of the renewal period, the assignee holds nothing. If the assignee of all of the renewal rights holds nothing upon the death of the assignor before arrival of the renewal period, then, a fortiori, the assignee of a portion of the renewal rights, e.g., the right to produce a derivative work, must also hold nothing. Therefore, if the author dies before the renewal period, then the assignee may continue to use the original work only if the author’s successor transfers the renewal rights to the assignee. This is the rule adopted by the Court of Appeals below and advocated by the Register of Copyrights. Application of this rule to this case should end the inquiry. Woolrich died before the commencement of the renewal period in the story, and, therefore, petitioners hold only an unfulfilled expectancy. Petitioners have been “deprived of nothing. Like all purchasers of contingent interests, [they took] subject to the possibility that the contingency may not occur.” Miller Music at 378.

The reason that our inquiry does not end here, and that we granted certiorari, is that the Court of Appeals for the Second Circuit reached a contrary result in Rohauer v. Killiam Shows, Inc., 551 F. 2d 484 (1977). Petitioners’ theory is drawn largely from Rohauer. The Court of Appeals in Rohauer attempted to craft a “proper reconciliation” between the owner of the pre-existing work, who held the right to the work pursuant to Miller Music, and the owner of the derivative work, who had a great deal to lose if the work could not be published or distributed. 551 F. 2d, at 490. Addressing a case factually similar to this case, the court concluded that even if the death of the author caused the renewal rights in the pre-existing work to revert to the statutory successor, the owner of the derivative work could continue to exploit that work. The court reasoned that the 1976 Act and the relevant precedents did not preclude such a result and that it was necessitated by a balancing of the equities:

“The equities lie preponderantly in favor of the proprietor of the derivative copyright. In contrast to the situation where an assignee or licensee has done nothing more than print, publicize and distribute a copyrighted story or novel, a person who with the consent of the author has created an opera or a motion picture film will often have made contributions literary, musical and economic, as great as or greater than the original author . . . The purchaser of derivative rights has no truly effective way to protect himself against the eventuality of the author’s death before the renewal period since there is no way of telling who will be the surviving widow, children or next of kin or the executor until that date arrives.” Id., at 493.

The Court of Appeals for the Second Circuit thereby shifted the focus from the right to use the pre-existing work in a derivative work to a right inhering in the created derivative work itself. By rendering the renewal right to use the original work irrelevant, the court created an exception to our ruling in Miller Music and, as petitioners concede, created an “intrusion” on the statutorily created rights of the owner of the pre-existing work in the renewal term.

Though petitioners do not, indeed could not, argue that its language expressly supports the theory they draw from Rohauer, they implicitly rely on § 6 of the 1909 Act, 17 U.S.C. § 7 (1976 ed.), which states that “dramatizations . . . of copyrighted works when produced with the consent of the proprietor of the copyright in such works . . . shall be regarded as new works subject to copyright under the provisions of this title.” Petitioners maintain that the creation of the “new,” i. e., derivative, work extinguishes any right the owner of rights in the pre-existing work might have had to sue for infringement that occurs during the renewal term.

We think that this conclusion is neither warranted by any express provision of the Copyright Act, nor by the rationale as to the scope of protection achieved in a derivative work. It is moreover contrary to the axiomatic copyright principle that a person may exploit only such copyrighted literary material as he either owns or is licensed to use. The aspects of a derivative work added by the derivative author are that author’s property, but the element drawn from the pre-existing work remains on grant from the owner of the pre-existing work. See Russell v. Price, 612 F. 2d 1123, 1128 (CA9 1979) (reaffirming “well-established doctrine that a derivative copyright protects only the new material contained in the derivative work, not the matter derived from the underlying work”). So long as the pre-existing work remains out of the public domain, its use is infringing if one who employs the work does not have a valid license or assignment for use of the pre-existing work. It is irrelevant whether the pre-existing work is inseparably intertwined with the derivative work. See Gilliam v. American Broadcasting Cos., 538 F. 2d 14, 20 (CA2 1976) (“Copyright in the underlying script survives intact despite the incorporation of that work into a derivative work”). Indeed, the plain language of § 7 supports the view that the full force of the copyright in the pre-existing work is preserved despite incorporation into the derivative work. See 17 U.S.C. § 7 (1976 ed.) (publication of the derivative work “shall not affect the force or validity of any subsisting copyright upon the matter employed”); see also 17 U.S.C. § 3 (1976 ed.) (copyright protection of a work extends to “all matter therein in which copyright is already subsisting, but without extending the duration or scope of such copyright”). This well-settled rule also was made explicit in the 1976 Act:

“The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the pre-existing material.” 17 U.S. C. § 103(b).

See also B. Ringer, Renewal of Copyright (1960), reprinted as Copyright Law Revision Study No. 31, prepared for the Senate Committee on the Judiciary, 86th Cong., 2d. Sess., 169-170 (1961) (“On the basis of judicial authority, legislative history, and the opinions of the commentators, . . . someone cannot avoid his obligations to the owner of a renewal copyright merely because he created and copyrighted a ‘new version’ under a license or assignment which terminated at the end of the first term”).

Properly conceding there is no explicit support for their theory in the 1909 Act, its legislative history, or the case law, petitioners contend, as did the court in Rohauer, that the termination provisions of the 1976 Act, while not controlling, support their theory of the case. For works existing in their original or renewal terms as of January 1, 1978, the 1976 Act added 19 years to the 1909 Act’s provision of 28 years of initial copyright protection and 28 years of renewal protection. See 17 U.S. C. §§ 304(a) and (b). For those works, the author has the power to terminate the grant of rights at the end of the renewal term and, therefore, to gain the benefit of that additional 19 years of protection. See § 304(c). In effect, the 1976 Act provides a third opportunity for the author to benefit from a work in its original or renewal term as of January 1, 1978. Congress, however, created one exception to the author’s right to terminate: The author may not, at the end of the renewal term, terminate the right to use a derivative work for which the owner of the derivative work has held valid rights in the original and renewal terms. See § 304(c)(6)(A). The author, however, may terminate the right to create new derivative works. Ibid. For example, if petitioners held a valid copyright in the story throughout the original and renewal terms, and the renewal term in “Rear Window” were about to expire, petitioners could continue to distribute the motion picture even if respondent terminated the grant of rights, but could not create a new motion picture version of the story. Both the court in Rohauer and petitioners infer from this exception to the right to terminate an intent by Congress to prevent authors of pre-existing works from blocking distribution of derivative works. In other words, because Congress decided not to permit authors to exercise a third opportunity to benefit from a work incorporated into a derivative work, the Act expresses a general policy of undermining the author’s second opportunity. We disagree.

The process of compromise between competing special interests leading to the enactment of the 1976 Act undermines any such attempt to draw an overarching policy out of § 304(c)(6)(A), which only prevents termination with respect to works in their original or renewal copyright terms as of January 1, 1978, and only at the end of the renewal period.

In fact, if the 1976 Act’s termination provisions provide any guidance at all in this case, they tilt against petitioners’ theory. The plain language of the termination provision itself indicates that Congress assumed that the owner of the pre-existing work possessed the right to sue for infringement even after incorporation of the pre-existing work in the derivative work.

“A derivative work prepared under authority of the grant before its termination may continue to be utilized under the terms of the grant after its termination, but this privilege does not extend to the preparation after the termination of other derivative works based upon the copyrighted work covered by the terminated grant.” § 304(c)(6)(A) (emphasis added).

Congress would not have stated explicitly in § 304(c)(6)(A) that, at the end of the renewal term, the owner of the rights in the pre-existing work may not terminate use rights in existing derivative works unless Congress had assumed that the owner continued to hold the right to sue for infringement even after incorporation of the pre-existing work into the derivative work. Cf. Mills Music, Inc. v. Snyder, 469 U.S. 153, 164 (1985) (§ 304(c)(6)(A) “carves out an exception from the reversion of rights that takes place when an author exercises his right to termination”).

Accordingly, we conclude that neither the 1909 Act nor the 1976 Act provides support for the theory set forth in Rohauer. And even if the theory found some support in the statute or the legislative history, the approach set forth in Rohauer is problematic. Petitioners characterize the result in Rohauer as a bright-line “rule.” The Court of Appeals in Rohauer, however, expressly implemented policy considerations as a means of reconciling what it viewed as the competing interests in that case. See 551 F. 2d, at 493-494. While the result in Rohauer might make some sense in some contexts, it makes no sense in others. In the case of a condensed book, for example, the contribution by the derivative author may be little, while the contribution by the original author is great. Yet, under the Rohauer “rule,” publication of the condensed book would not infringe the pre-existing work even though the derivative author has no license or valid grant of rights in the pre-existing work. See Brief for Committee for Literary Property Studies as Amicus Curiae 29-31; see also Brief for Songwriters Guild of America as Amicus Curiae 11-12 (policy reasons set forth in Rohauer make little sense when applied to musical compositions). Thus, even if the Rohauer “rule” made sense in terms of policy in that case, it makes little sense when it is applied across the derivative works spectrum. Indeed, in the view of the commentators, Rohauer did not announce a rule, but rather an interest-balancing approach.

Finally, petitioners urge us to consider the policies underlying the Copyright Act. They argue that the rule announced by the Court of Appeals will undermine one of the policies of the Act — the dissemination of creative works — by leading to many fewer works reaching the public. Amicus Columbia Pictures asserts that “[s]ome owners of underlying work renewal copyrights may refuse to negotiate, preferring instead to retire their copyrighted works, and all derivative works based thereon, from public use. Others may make demands — like respondent’s demand for 50% of petitioners’ future gross proceeds in excess of advertising expenses . . . — which are so exorbitant that a negotiated economic accommodation will be impossible.” Brief for Columbia Pictures et al. as Amici Curiae 21. These arguments are better addressed by Congress than the courts.

In any event, the complaint that respondent’s monetary request in this case is so high as to preclude agreement fails to acknowledge that an initially high asking price does not preclude bargaining. Presumably, respondent is asking for a share in the proceeds because he wants to profit from the distribution of the work, not because he seeks suppression of it.

With the Copyright Act of 1790, Congress provided an initial term of protection plus a renewal term that did not survive the author. In the Copyright Act of 1831, Congress devised a completely separate renewal term that survived the death of the author so as to create a “new estate” and to benefit the author’s family, and, with the passage of the 1909 Act, his executors. The 1976 Copyright Act provides a single, fixed term, but provides an inalienable termination right. See 17 U.S.C. §§ 203, 302. This evolution of the duration of copyright protection tellingly illustrates the difficulties Congress faces in attempting to “secure for limited Times to Authors . . . the exclusive Right to their respective Writings.” U.S. Const., Art. I, § 8, cl. 8. Absent an explicit statement of congressional intent that the rights in the renewal term of an owner of a pre-existing work are extinguished upon incorporation of his work into another work, it is not our role to alter the delicate balance Congress has labored to achieve.

[Justice O’Connor rejected the dissent’s arguments and Petitioner’s argument that even if their use of “It Had to Be Murder” was unauthorized, it was a fair use and, therefore, not infringing.]

For the foregoing reasons, the judgment of the Court of Appeals is affirmed, and the case is remanded for further proceedings consistent with this opinion.

It is so ordered.

Notes and questions

(1) Why should authors be able to renegotiate the terms of the grant once the value of the work has been tested? Surely it can’t be for the reason suggested in Nimmer that “Unlike real property and other forms of personal property, [a copyright] is by its very nature incapable of accurate monetary evaluation prior to its exploitation.” Aren’t all estimations of value for any kind of property based on expected market returns?

(2) “It Had To Be Murder” was published in 1942. In 1945 Woolrich assigned the movie rights, including renewal rights. In 1968 Woolrich died, leaving no heirs. In 1969 and 1970 the executor of Woolrich’s estate renewed the copyright. If Woolrich had lived another couple of years, his assignment of the renewal rights would have been effective. Why should so much turn on the date of the author’s death? Why is the author’s assignment of the renewal rights binding on the author if she lives, but not upon her heirs?

(3) Does the reasoning in Miller Music and Stewart v. Abend apply to terminations of transfers under the 1976 Act, or is it limited to the two-term duration structure of the 1909 Act and previous Copyright Acts?

Termination of Transfers under the 1976 Act

As Stewart v. Abend illustrates, copyright law has long attempted to give authors and their families opportunities to recapture rights in valuable works. The Copyright Act of 1976 built on this history by extending the duration of copyright and introducing a termination right for authors and their statutory successors, allowing them to opt out of their contractual agreements after a period of 35 years. The 1976 Act actually contains two termination provisions, one applying to transfers made before January 1, 1978 that convey an interest in the renewal term and the other applying to transfers made after January 1, 1978.

Post-1978 Grants

Under Section 203, the author or her statutory heirs can terminate a transfer made after January 1, 1978, at any point within a five-year window beginning, in most cases, 35 years after the initial transfer. However, if the grant covers the right of publication, the five-year period begins either at the end of 35 years from the date of publication of the work under the grant or at the end of 40 years from the date of execution of the grant, whichever term ends earlier. § 203(a)(3). In order to terminate, the terminating party must serve notice no less than 2 years and no more than 10 years from the termination date.

These termination rights cannot be waived: § 203(a)(5) provides that termination of the grant may be effected notwithstanding any agreement to the contrary, including an agreement to make a will or to make any future grant.

Example: If the grant was made on April 1, 2005 then it could be terminated anywhere between April 2, 2040 and April 1, 2045. Accordingly, the very first day that notice could be served would be April 2, 2030 and the last possible day notice could be served would be March 31, 2043.

One threshold point is easily missed. Section 203 terminates grants that the author actually executed; an author who never owned the copyright has made no grant, and so has nothing to terminate. In James v. UMG Recordings, Inc., 2026 WL 63225 (S.D.N.Y. Jan. 8, 2026), Cheryl James and Sandra Denton, the duo Salt-N-Pepa, served a § 203 notice in March 2022 on their early sound recordings and sued for a declaration that it was valid. Judge Cote dismissed the complaint. Their 1986 agreement was with Noise In The Attic Productions, a company owned by their producer, and it provided that the company should be “the sole and exclusive owner of any and all rights, title and/or interest in and to master recordings recorded hereunder, including but not limited to the worldwide sound copyrights therein and the renewal rights thereto.” The same day, the producer entered a distribution agreement with Next Plateau Records, to which the plaintiffs were not parties, and UMG is the successor to that label. The only copyright transfer, in other words, was one the artists had not made:

the statutory text in § 203 is clear: Plaintiffs can only terminate copyright transfers that they executed. They cannot terminate a copyright grant executed by NITA.

The court expressly did not reach the question whether the recordings were works made for hire, which § 203 excludes from termination altogether. It did record UMG’s argument that the “sole and exclusive owner” language made them “likely works made for hire,” and observed that such a classification would be consistent with registrations listing the label as “employer for hire.” Read that alongside the discussion of works made for hire earlier in this chapter, and consider what a registration certificate can and cannot establish about the status of a sound recording. The dismissal is on appeal to the Second Circuit, filed on 5 February 2026, and had not been decided when this edition went to press. The case is a useful illustration of how the termination right can be defeated at the threshold whenever the record company is treated as the owner from inception.

Pre-1978 Grants

The termination of transfers made before the effective date of the Copyright Act of 1976, i.e. January 1, 1978, is controlled by Section 304(c) and 304(d) of the Copyright Act. These provisions operate a little differently to Section 203, and to understand why requires a quick review of the way the term of copyright protection has changed over the years—issues that were central to the Court’s analysis in Stewart v. Abend.

The Historical Context: From the 1909 Act to the 1976 Act

Under the Copyright Act of 1909, copyright began when a work was registered and lasted for an initial term of 28 years; copyright could then be renewed for an additional 28 year term. Under the 1909 Act, the author was entitled to the renewal term even if she had transferred all of her rights initially. Section 24 of the Copyright Act of 1909 provided as follows:

Section 24 of the Copyright Act of 1909

“[T]he author of [a copyrighted] work, if still living, or the widow, widower, or children of the author, if the author be not living, or if such author, widow, widower, or children be not living, then the author’s executors, or in the absence of a will, his next of kin shall be entitled to a renewal and extension of the copyright in such work for a further term of twenty-eight years when application for such renewal and extension shall have been made to the copyright office and duly registered therein within one year prior to the expiration of the original term of copyright.”

The 1976 Act fundamentally changed the way the term of copyright protection was calculated. Under the 1976 Act, copyright vested from the moment a work is created (i.e. fixed in a material form) and lasted for a single term of the life of the author plus 50 years. In 1998 this term was extended, even for works that already existed, by another 20 years so that works created under the 1976 Act get a copyright term of the life of the author plus 70 years. To bridge the gap between the 1909 Act regime and the new life plus 50 regime, transitional provisions were enacted as part of the 1976 Act. Works created under the 1909 Act but whose terms had not expired by 1978 were entitled to a longer second term—an additional 19 years under the 1976 Act and then an additional 20 years under the Copyright Term Extension Act of 1998.

The Structure of Section 203 and Section 304

So the termination of transfer provisions in Section 203 and Section 304 have quite different objectives. Section 203 gives the author or her statutory heirs a nontransferable right to terminate 35 years after a grant, where the grant was executed by the author during the unitary term. Section 304 gives the author or her statutory heirs a nontransferable right to terminate a grant concerning the extensions to the renewal term, where the grant was executed by the author or statutory heir to the renewal term.

Section 304 allows the author or her statutory heirs to terminate the last 39 years of a grant made by the author prior to 1978. Termination can occur within a five-year window beginning at the end of the 56th year from the date of the copyright—usually the date of publication—and the author or her heirs must serve notice no less than 2 years and not more than 10 years before the termination date.

Example: Consider a book published on March 1, 1950 for which the author sold the motion picture rights on May 1, 1970. Assuming copyright was renewed for a second term in 1978, the grant could be terminated in the five-year window between March 2006 and March 2011. The corresponding earliest and latest notice dates would be March 2, 1996 and March 1, 2009.

Section 304(d) contains a special provision permitting the recapture of the 20 years added by the Sonny Bono Copyright Term Extension Act of 1998.

The termination right in § 304(c) reaches grants of the renewal term made before 1978. In the case that follows, the Fifth Circuit had to decide how far a recapture under that section travels: does terminating a 1963 assignment restore the author’s rights only in the United States, or everywhere in the world?

Vetter v. Resnik, 163 F.4th 951 (5th Cir. 2026)

A provision of this sort is needed because of the unequal bargaining position of authors, resulting from the impossibility of determining a work’s value until it has been exploited. Section 203 reflects a practical compromise that will further the objectives of the copyright law while recognizing the problems and legitimate needs of all interests involved.

Congress expressly limited the reach of what was gained by the terminating party through exercise of the termination right; specifically, the terminating party only recaptured the domestic rights (that is, the rights arising under title 17 to the United States Code) of the grant to the copyright in question. Left expressly intact and undisturbed were any of the rights the original grantee or its successors in interest had gained over the years from the copyright through other sources of law, notably the right to exploit the work abroad that would be governed by the copyright laws of foreign nations. Thus, the statute explains that termination “in no way affects rights” the grantee or its successors gained “under foreign laws.”

if the author dies before the commencement of the renewal period, the assignee holds nothing. If the assignee of all of the renewal rights holds nothing upon the death of the assignor before arrival of the renewal period, then, a fortiori, the assignee of a portion of the renewal rights, e.g., the right to produce a derivative work, must also hold nothing.

Notes and questions

(1) One copyright, or a bundle of national copyrights? The decision rests on a premise that a single copyright “arises” in the country of origin and is thereafter recognized and enforced abroad. This remarkable assumption is not defended in the decision, it is simply announced and assumed. The Fifth Circuit is simply and profoundly wrong on this point. A work generates a separate national copyright in each Berne state, each independent of the others, each governed by that state’s law, and each separately tradable. The Berne Convention creates no copyrights at all, rather it sets minimum standards that member states implement through domestic legislation. How does the single copyright premise dictate the answer in this case?

(2) The statutory text. How convincing is the court’s interpretation of Section 304(c)(6)(E) of the Copyright Act which provides that termination “in no way affects rights arising under any other Federal, State, or foreign laws”?

(3) Oversights. The court quotes Berne article 5(3) on national treatment. It does not address article 5(2), under which the enjoyment and exercise of rights are “independent of the existence of protection in the country of origin.” That is the provision most directly in tension with a single-copyright theory. Nor does the court engage 17 U.S.C. § 104(c), which provides that no right may be claimed “by virtue of, or in reliance upon” Berne. Resnik raised it; the court’s answer is that “Resnik only cites 17 U.S.C. § 104(c).” If Berne cannot create rights under United States law, on what theory does United States law create rights abroad?

(4) National treatment. Applying the single-copyright theory in the other direction would mean that if a work’s copyright arises in its country of origin, then the works of foreign authors arise under foreign law, and are not subject to the termination and renewal provisions of United States law at all. Foreign authors could not recapture their United States rights, while American authors could recapture theirs worldwide. That asymmetry is difficult to square with national treatment under Berne and TRIPS. For more, see Tyler Ochoa, A Volcanic Opinion in the Fifth Circuit Destabilizes International Copyright Law — Vetter v. Resnik, Technology & Marketing Law Blog, 29 January 2026, https://blog.ericgoldman.org/archives/2026/01/a-volcanic-opinion-in-the-fifth-circuit-destabilizes-international-copyright-law-vetter-v-resnik-guest-blog-post.htm.

Terminated Derivatives

One significant issue under the termination of transfers regime is what happens to authorized derivative works when the right to make a derivative work is terminated? This was a central concern in Stewart v. Abend, where the Court had to determine whether the owners of the “Rear Window” motion picture could continue to distribute their film after the renewal rights in the underlying story reverted to Abend.

For terminated post-1978 grants, Section 203(b)(1) provides as follows:

17 U.S. Code § 203(b)(1)

A derivative work prepared under authority of the grant before its termination may continue to be utilized under the terms of the grant after its termination, but this privilege does not extend to the preparation after the termination of other derivative works based upon the copyrighted work covered by the terminated grant.

For terminated pre-1978 grants Section 304(c)(6)(A) says exactly the same thing.

The case law interpreting this provision is sparse, but the language in the statute would seem to mean that a licensee could continue to exploit derivatives created under license before termination, but the licensee could not make new versions of those derivatives.

As Stewart v. Abend makes clear, however, these provisions only apply when there has been a valid termination under the statute. In that case, the Court rejected the argument that the creation of a derivative work somehow extinguished the underlying author’s rights. The Court emphasized that “the element drawn from the pre-existing work remains on grant from the owner of the pre-existing work,” and that the owner of the pre-existing work retains the right to sue for infringement if the derivative work is used without a valid license.

The Court’s reasoning highlights an important distinction: the derivative work privilege in Section 203(b)(1) and Section 304(c)(6)(A) only protects derivative works that were “prepared under authority of the grant” before termination. If the grant itself lapses or becomes invalid (as in Stewart v. Abend, where Woolrich’s death before the renewal period meant the assignment never became effective), then the derivative work was never properly authorized in the first place, and these protective provisions do not apply.