Ivan Hoffman, B.A., J.D.

        If you’ve read any number of my articles, you should note a common theme: most of the cases and situations about which I write could have easily been avoided (along with all or nearly all of the costs and fees and risk and uncertainty) if the parties had just simply written it down!  I am constantly, constantly amazed at how much money and time is wasted on attorneys fees and court costs and project delays because parties did not write it down.

        I have heard all the excuses for not doing so.  Some of my favorites are:

“We don’t need an agreement, we’re [brothers, sisters, friends, husband, wife…you fill it in].”

“I can’t afford an attorney.”

Or at the top of the list: “It’s just a small project and not worth it.” (to which the reply is: How do you know?  How does anyone know? And if you know, why bother?)

        Failing to write things down is a virtually sure indication that at some point, someone’s going to get into a dispute about the project.  I’ve been practicing law for over 3 and ½ decades and my assessment is that when there’s more than $1.82 at stake, people run to lawyers.  Contracts are never the source of the problem and contracts do not break up relationships. Contracts are just easy targets.  My experience tells me that the things that break up relationships are the “I thought you said…” stuff that comes from no contracts or poorly written ones.  The way, in my experience, to preserve relationships is to…let me think…Oh! Yeah!...write it down!

        But parties end up getting into very expensive pissing matches over what could easily have been solved with some negotiations.  I have been at both the negotiation table and the litigation table and have found that the former is infinitely less expensive than the latter.  And, Oh! yes, did I mention that the best way to stay out of the latter is by writing it down?

        In Janky vs. Lake County Convention and Visitors Bureau, the Court starts off with the following language so as to set the tone for the silliness that the parties engaged in:

This over-litigated case, involving a song by a doo-wop group, comes to us with 18 district court orders and memorandum opinions spread over a combined 239 pages. The district court’s 46-page docket contains a staggering 371 entries. And the briefs of the parties on appeal are a bit unfocused to say the least. But although it’s a tough job, someone has to do it, so with shoulder to the wheel, we forge on.
        These were the facts in summary form:

        The Lake County Convention and Visitors Bureau commissioned a song to laud the county’s attractions.  Cheryl Janky claimed she was the sole author of the song and never gave permission to the County to use the song.  However, the County claimed that it received permission from the composition’s co-author, Henry Farag.  Thus the issue was squarely presented: were Farag and Janky joint authors?  “Joint authors” is a copyright term [Read “In Bed Together: The Problems of Collaboration,” “Co-Author Issues in Book Contracts,” and “Joint Authors Under the Copyright Law.”] and if the parties were joint authors, then each joint author had an equal right to license non-exclusive rights in the composition.  Each joint author has an obligation to account to the other for any proceeds each received.

        As indicated in the above articles, joint authorship depends on the intention of the parties to become joint authors.  Absent, let me think… Oh! Yeah!... writing it down, the intention of the parties has to be inferred from the facts and circumstances and leaves the status of the parties, the composition, any money derived from the composition and all related matters to be decided by a court.  My said 3 ½ decades of experience tells me that you never, ever want to leave decisions about what you intend to anyone else to decide including but not limited to a court, a jury or anyone else.  So the best way to avoid leaving your legal fate up to others is to….write it down.

        In any event, Janky initially wrote the composition and copyrighted it in her sole name but when she showed it to Farag, Farag and Janky made some revisions.  After the revisions, Janky copyrighted the revised version in the joint names of she and Farag, listing the composition as a “joint work” even though she testified that she believed Farag only contributed 10% of the composition.  She later said that the later registration was a mistake and later still, filed yet another copyright claiming sole authorship of the composition.  Farag of course disputed the issues about his contribution and claimed that his contribution was greater and that he in fact was a joint author.   Hmmm…maybe the parties could have resolved this by writing it down.

        Some points here to note:

            1. For the purpose of ownership and ability to license, it matters not at all how much each joint author contributed if the intention was to be joint authors.  If they are joint authors, they are joint authors.  The law presumes that each is an equal contributor but this is subject to proof or to having written it down.

            2. Interestingly, at the time the composition was written, Janky and Farag were in a musical group called  “Stormy Weather.”  The Court record is silent as to the nature of that “group” as being a corporation, limited liability company or partnership.   Absent having written it down, the law presumes that the group is a partnership with each partner owning an equal share of the assets of the partnership.  Read “Recording Artists’ Rights to Group Names.”  That could mean that, irrespective of the joint author issues, one could argue that as to anything done by the partnership including this composition, which the group later recorded, all parties in the group would be equal owners.

        Finally, when the County continued to use the composition and the recording and video, Janky filed suit.  Although the record is silent as to the costs she incurred in terms of legal fees, discovery costs, filing fees, delay, loss of income, animosity etc. etc. we can assume these costs to be substantial.  And all this over a composition that had no apparent commercial value other than as a promotional vehicle for Lake County, Indiana!

The Court’s Discussion

        The Court discussed the law in regard to joint authorship, stating:

But when does a song qualify as a “joint work”? Section 101 of the Copyright Act defines a joint work as “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. In Erickson, we determined that this language requires (1) intent to create a joint work; and (2) contribution of independently copyrightable material.4 Erickson, 13 F.3d at 1068, 1071. With respect to the first element, we explained that the intent prong does not have to do with the collaborators’ intent to recognize each other as coauthors for purposes of copyright law; the focus is on the parties’ intent to work together in the creation of a single product, not on the legal consequences of that collaboration. See id. At 1068-69. We also noted that “ ‘billing’ or ‘credit’ may be evidence of intent to create a joint work.” Id. at 1072 (internal quotation marks omitted). As to the second element, we rejected Professor Nimmer’s “de minimis” test, which posits that a joint work exists whenever there is “more than a de minimis contribution by each author.” Id. at 1070. The standard we embraced requires more than that: a contribution that is independently copyrightable. Measured against this standard, we held that the putative joint author of a play was not a joint author where his contributions were limited to “[i]deas, refinements, and suggestions.” Id. at 1072. “[S]tanding alone,” we said, these contributions were“not the subject of copyright.” Id.
        The Court then analyzed the evidence including but not limited to the statements and conduct of Janky (before she changed her mind) and concluded that very clearly, Farag and Janky intended their work to be merged into a single unified whole.  The Court also found that Farag’s contributions were well beyond “de minimus” and were significant parts of the final composition.

        Germane to the issues in this article about writing it down to avoid any trier of fact making decisions for you, there was a dissent filed with the decision.  The dissenting justice said that the case should be sent back for factual determinations (the Court of Appeal ruled that a summary judgment should be entered for Lake County) as to whether there was or was not a joint work.  Thus the issue: not only is it unwise to have any other party decide what you meant, but often reasonable minds can differ as to what you meant so then you have more than one party making that decision.

        It seems self-evident to simply…write it down.

Copyright © 2010 Ivan Hoffman.  All Rights Reserved.


This article is not legal advice and is not intended as legal advice.  This article is intended to provide only general, non-specific legal information.  This article is not intended to cover all the issues related to the topic discussed.  The specific facts that apply to your matter may make the outcome different than would be anticipated by you.  This article is based on United States law.  You should consult with an attorney familiar with the issues and the laws of your country.  This article does not create any attorney client relationship and is not a solicitation.


No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.



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