Collaboration is a way of life for many content and technology creators, both individuals and companies. Co-authorship. Co-development. Co-ventures. The law, or at least some IP lawyers, tends to discourage one possible result such collaborations, namely the co-ownership of intellectual property. In the case of copyright, the fear of joint ownership may be unwarranted, or at least overstated.
A recent Google Search on “joint intellectual property” yielded the following among the top five results:
“Avoid jointly owned intellectual property”
“The Perils of Joint IP Ownership”
“IP – the problem of joint ownership”
These articles come from two large law firms and a large IP consultancy and I think they reflect the general wisdom: joint IP is problematic, perilous, and to be avoided. In fairness, two of the above articles were about patents only and could have been titled “Avoid jointly owned patents” and “Patents – the problem of joint ownership”. I am not a patent attorney and the blanket warnings contained in these articles may be appropriate for patents. But when it comes to copyright, joint authorship and joint ownership, if handled properly, can be beneficial and even necessary.
What is joint authorship/joint ownership?
Here’s the statutory definition of a “joint work” under U.S. copyright law:
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. (17 U.S.C. 101)
The Copyright Act provides further that “[t]he authors of a joint work are co-owners of copyright in the work”. (17 U.S.C. 201(a)).
OK, but what does this mean?
In their essence, joint authorship and joint ownership are about collaboration. As a simple example, Elton writes the music and Bernie writes the lyrics. The song is a collaboration, two pieces from two sources coming together in a new creation. Coders collaborate on software programs, apps, etc. They might work together on each piece or they can create modules separately and then combine them into an integrated whole. Or the work and the end product may be so collaborative that it’s difficult to describe or quantify who contributed what.
The point is that each is contributing something of substance (technically copyrightable on its own, so not just ideas or minimal amounts of content, code, etc.). Each is an author of the final product, the joint work. Absent a relationship (employment/work-for-hire) or an agreement to the contrary, they are joint owners of the copyright.
So what’s the problem?
Joint ownership of copyrights can be problematic in a few different ways.
1. They can be unintended, or at least not planned for, such as when one party believes that the other party’s contribution is work-for-hire when it is not. Or when one party mistakenly believes that the other party has contributed only ideas or a sub-minimal amount of content or code.
2. They can be confusing to third parties, particularly downstream licensees. If I want to license rights to a copyrighted work or get permission to use a work, do I need the agreement or permission of all joint authors or only one? [Answer: if it’s a non-exclusive license, one author/owner will do; if it’s an exclusive license, I need all authors/owners to consent.]
3. Absent an agreement to the contrary, joint copyright owners must share profits from exploitation of the work. Elton is free to license the song to an advertiser without Bernie’s consent, assuming that the license is not exclusive, but he must share the fee or royalties with Bernie.
Let’s stipulate that parties should never stumble into a joint copyright scenario. If a collaboration would result in joint ownership but that is not the intention of both parties, they should have an agreement that provides for sole ownership by one or the other. In an independent contractor agreement, that could be a work-for-hire provision (if it qualifies), or a comprehensive exclusive license or outright assignment of rights.
But what if the collaborators don’t intend or can’t agree on sole ownership by one of them. What if the collaboration won’t work or won’t happen if either insists on sole ownership? Is joint ownership so problematic that the parties should just forego the collaboration?
No, not where copyright is concerned. If a collaboration makes creative and economic sense, if it will produce something better and more valuable than what could be produced without the collaboration, don’t let the legal tail wag the dog. Try to negotiate a joint ownership agreement that will work for all parties and allow the collaboration to proceed.
Making joint ownership work
One of the beauties of copyright is that rights, including joint ownership rights, can be shaped or sliced and diced in infinite ways. For example, a default provision under copyright law, mentioned above, is that joint owners can enter into non-exclusive licenses with third parties without the consent of the other owner(s). If that’s not what the joint authors/owners desire, they can agree to a different arrangement. They can require consent on all or some non-exclusive licenses. Or they can divide rights, including licensing rights, along markets, formats, etc. They can agree to whatever split of profits they want. It doesn’t have to be 50/50. In short, they can make the terms of joint ownership fit the deal and their respective needs.
Generally speaking, sole copyright ownership is simpler and cleaner than joint ownership. But joint ownership is manageable if it’s recognized, negotiated, and documented. Joint copyright ownership should not be a barrier to a collaboration that makes artistic or business sense. It may even be the best option.