In “Co-Author Issues in Book Contracts,” I explored some of the issues related to this topic as related to a specific instance of a book agreement.   However, a case out of the Seventh Circuit Court of Appeals has added additional dimension to the“joint authors topic and that case and the issues it deals with are the subject of the within article.  The term “authors” is not however limited to writers.  The term can apply to all co-creators, as indicated in the case discussed in this article.

        The said case presents a number of principles that should be front and center in the minds of all parties.

The first issue is of course that all transactions should be embodied in the form of a valid, thorough, written and signed agreement before the work is commenced.

The second issue is that it is virtually impossible and certainly infinitely more difficult to try to “retrofit” a transaction, to try and make a deal, once there is money on the table.

        In Gaiman et. al. vs. McFarlane et. al.,  these were the facts in summary version:  The defendant McFarlane was a writer and illustrator and publisher of comic books.  Plaintiff was a writer and was engaged by the defendant to write the scripts for some of the comic books which McFarlane then illustrated and had illustrated.  There was no written agreement between the parties for the services of Gaiman.

        The comic books as to which Gaiman wrote scripts were a huge success, generating not only comic book sales but derivative works such as books, trading cards, posters, statuettes and the like and the accompanying merchandising revenue.  McFarlane paid Gaiman substantial amounts of money for his work.  However, the mere payment for work does not, in itself, operate as any sort of transfer of exclusive rights to the said work since in order to transfer exclusive rights, there must be a valid writing.  [17 USC section 204 (a).]  (Read “The Fundamental Principle Under The United States Copyright Law.” This is so important that it is on virtually every page of my site.)

        There was, of course, the inevitable dispute about rights ownership and the money that goes along with rights ownership and there were some negotiations between the parties about reaching an agreement but those negotiations did not result in a satisfactory conclusion and thus there was the litigation.  If Gaiman’s claim were upheld by the Court, meaning that he was a joint author and co-owner of the rights in and to the characters, each co-owner has a right to exploit the joint copyright but has a further obligation to account to the joint author for that joint author’s share of the total income, presumably 50% in the case of 2 joint authors.  [Read “In Bed Together: The Problems of Collaboration.”]

        The trial court found that Gaiman was a co-owner of the characters as to which he wrote the said scripts and ordered he to be listed as such as well as ordering an accounting from McFarlane to Gaiman.  (Other relief ordered is beyond the scope of this article)

        In simple form, the overall issues on appeal had to do with whether or not McFarlane was the owner of all rights to the work of Gaiman under the work made for hire theory, whether the contributions of Gaiman were even protectable by copyright.  If there was no work made for hire relationship and if the contributions of Gaiman were protectable by copyright, then it would follow that Gaiman had co-author rights to his contributions to the characters as to which he wrote scripts.  [I will not deal in this article with the issues related to the statute of limitations since I want to focus only on the joint author issues.]

Work Made For Hire Issues

        One of the issues on appeal was whether or not the services of Gaiman belonged to McFarlane as a work made for hire.  (Read the several articles on my site dealing with work made for hire agreements.   Click on “Articles For Writers and Publishers.”)  The Court analyzed the copyright statute dealing with this topic.  If Gaiman was an employee acting in the course and scope of his employment within the meaning of the statute, as interpreted by the Supreme Court in Community For Creative Non-Violence vs. Reid, [490 U.S. 730 (1989)], then no written agreement would have been necessary.  The Court concluded that Gaiman was not an employee.

        Thus, in order to satisfy the second kind of work made for hire set forth in the statute, that relating to an independent contractor, the Court discussed that the work had to fall within the enumerated categories, had to be specially ordered and commissioned and had to be in the form of a writing expressly stating that the agreement was a work made for hire agreement.  As there was no written agreement, this second aspect of work made for hire agreement failed as well.

        Thus the Court concluded that the relationship between plaintiff and defendant was not a work made for hire and thus defendant was not the sole and exclusive author and owner of all rights in and to the work of plaintiff under that legal theory.

Copyrightability of the Characters

        McFarlane argued that the contributions of Gaiman did not rise to the level of being protectable by copyright (except as to the character “Angela” as to which McFarlane conceded on this and the joint author issues discussed below) and thus that Gaiman had no claims to any rights in and to such contributions.  McFarlane contended that the characters became copyrightable only after McFarlane worked on them doing his illustrations but that as submitted by Gaiman, they were not copyrightable.

        The Court stated:

McFarlane makes two arguments for why Gaiman does not have copyright in Medieval Spawn (the name that McFarlane settled on for Olden Days Spawn) or Cogliostro. The first is that all that Gaiman contributed was the idea for the characters, and ideas are not copyrightable, only expression is and the expression was due to McFarlane’s drawing of the characters. It is true that people who contribute merely nonexpressive elements to a work are not copyright owners. As we said in Seshadri v. Kasraian, supra, 130 F.3d at 803, “the assistance that a research assistant or secretary or draftsman or helpfully commenting colleague provides in the preparation of a scholarly paper does not entitle the helper to claim the status of a joint author.” There has to be some original expression contributed by anyone who claims to be a co-author, and the rule (we’ll consider an exception momentarily) is that his contribution must be independently copyrightable. E.g., Erickson v. Trinity Theatre, Inc., supra, 13 F.3d at 1071; Aalmuhammedv. Lee, supra, 202 F.3d at 1231; 1 William F. Patry, Copyright Law and Practice 362-65 (1994). Had someone merely remarked to McFarlane one day, “you need a medieval Spawn” or “you need an old guy to move the story forward,” and McFarlane had carried it from there, and if later a copyeditor had made some helpful editorial changes, neither the suggester nor the editor would be a joint owner. Cf. Erickson v. Trinity Theatre, Inc., supra, 13 F.3d at 1064, 1071-72. Otherwise almost every expressive work would be a jointly authored work, and copyright would explode. [emphases added]

But where two or more people set out to create a character jointly in such mixed media as comic books and motion pictures and succeed in creating a copyrightable character, it would be paradoxical if though the result of their joint labors had more than enough originality and creativity to be copyrightable, no one could claim copyright. That would be peeling the onion until it disappeared. 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.

        The Court went on:
The contents of a comic book are typically the joint work of four artists—the writer, the penciler who creates the art work (McFarlane), the inker (also McFarlane, in the case of Spawn No. 9, but it would often be a different person from the penciler) who makes a black and white plate of the art work, and the colorist who colors it. The finished product is copyrightable, yet one can imagine cases in which none of the separate contributions of the four collaborating artists
would be.  The writer might have contributed merely a stock character (not copyrightable, as we’re about to see) that achieved the distinctiveness required for copyrightability only by the combined contributions of the penciler, the
inker, and the colorist, with each contributing too little to have by his contribution alone carried the stock character over the line into copyright land. [emphasis added]
        The Court further stated:
McFarlane’s second argument against the copyrightability of Medieval Spawn and Cogliostro appeals to the confusingly named doctrine of “scènes à faire” (literally “scenes for action,” a theatrical term meaning the climactic scene in a play or opera, which is not the legal meaning). Related to the fundamental idea-expression dichotomy that we’ve already mentioned, the doctrine teaches that “a copyright owner can’t prove infringement by pointing to features of his work that are found in the defendant’s work as well but that are so rudimentary, commonplace, standard, or unavoidable that they do not serve to distinguish one work within a class of works from another.” Bucklew v. Hawkins, Ash, Baptie & Co., 329 F.3d 923, 929 (7th Cir. 2003); see also Reed-Union Corp. v. Turtle Wax, Inc., 77 F.3d 909, 913-14 (7th Cir. 1996); Atari, Inc. v. North American Philips Consumer Electronics Corp., 672 F.2d 607, 616-17 (7th Cir. 1982); Williams v. Crichton, 84 F.3d 581, 587-89 (2d Cir. 1996). If standard features could be used to prove infringement, not only would there be great confusion because it would be hard to know whether the alleged infringer had copied the feature from a copyrighted work or from the public domain, but the net of liability would be cast too wide; authors would find it impossible to write without obtaining a myriad of copyright permissions.
        (Read “Scenes A Faire Under Copyright Law” for a further explanation of this doctrine.)

        The Court found that the particular character that was the subject of this claim was a

character that has a specific name and a specific appearance. Cogliostro’s age, obviously phony title (“Count”), what he knows and says, his name, and his faintly Mosaic facial features combine to create a distinctive character. No more is required for a character copyright.
        The Court stated:
Although Gaiman’s verbal description of Cogliostro may well have been of a stock character, once he was drawn and named and given speech he became sufficiently distinctive to be copyrightable. Gaiman’s contribution may not have been copyrightable by itself, but his contribution had expressive content without which Cogliostro wouldn’t have been a character at all, but merely a drawing. The expressive work that is the comic-book character Count Nicholas
Cogliostro was the joint work of Gaiman and McFarlane—their contributions strike us as quite equal—and both are entitled to ownership of the copyright.
        (Read “The Protection of Fictional Characters” for a further explanation of these issues.)

Joint Author Issues

        Gaiman was not contending that he was the sole owner of exclusive rights in and to his work subject to any unwritten license on the part of McFarlane (read “A Legal Nightmare: The Unwritten License” and “A Legal Nightmare: The Unwritten License-Further Issues.”)  Gaiman instead contended that, by virtue of his writing of the scripts including as the same described the characters that were then illustrated by McFarlane, that Gaiman was a joint author and thus an equal owner of all rights in and to the characters created by those scripts combined with the illustrations created by McFarlane.

        As stated by the Court:

In his script for Spawn No. 9, [one of the comic books] Gaiman introduced three new characters—Medieval Spawn (as he was later called by McFarlane—Gaiman had not named it and in the issue he is just referred to as a Spawn, with no further identifier), Angela (no last name), and Count Nicholas Cogliostro. Gaiman described, named, and wrote the dialogue for them, but McFarlane drew them. Gaiman contends that he and McFarlane are joint owners of the copyrights on the three characters by reason of their respective contributions to joint (indivisible) work.
        Section 101 of the United States copyright law says:
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.
        Section 201 of the same law says:
The authors of a joint work are co-owners of copyright in the work.
        These 2 sections, taken together, mean that unless each author’s contribution is distinct, discrete and separately distinguishable within the collaborative work (i.e. they each write separate chapters, for example), the law has to examine what the intention of the authors was.  However, often that intention is not clearly stated, as in this case, and thus it is up to the court to decide what the authors intended.  Thus, unless the authors specifically express (hopefully in some form of written collaboration agreement, again not in this instance) that they intend to keep their contributions separate, then if their contributions are indistinguishable one from the other, the law may deem them to be joint owners of the whole.

        The Court found that since there was no work made for hire relationship and that the work of Gaiman was copyrightable, as a result Gaiman and McFarlane were joint authors on all the characters.


        As indicated above, this case presents two significant issues that all parties should consider.

        The first issue is of course that all transactions should be embodied in the form of a valid, thorough, written and signed agreement before the work is commenced.

        The second issue is that it is virtually impossible and certainly infinitely more difficult to try to “retrofit” a transaction, to try and make a deal, once there is money on the table.

        In over 30 years of practicing law, I have found that it is not contracts that break up relationships.  Contracts are merely easy targets.  The things that break up relationships are the “I thought you said” stuff that comes from no contracts (as here) or vague and uncertain ones.  It is in all parties interests to have a thorough, written and signed agreement.  The results of not having such contracts is that the parties spend thousands, maybe tens of thousands of dollars in legal fees, lost time, aggravation and related matters trying to straighten out what could have been straightened out much less expensively before hand.

        Help me is almost always cheaper than fix me.  Dealing with these small matters before they become large matters is both simpler and, as indicated, almost always cheaper.  And relationships can be preserved instead of destroyed.

        Keep in mind that in the business of intellectual property rights, legally appropriate contracts are not add-ons to your business, something you do if you have any money left over; legally appropriate contracts are your business.  Without a thorough and valid contract, what you have is nothing but an illusion and a house of cards.  It only appears you are in business but in reality, you are not since given a controversy between you and the other party, the house of cards can collapse and you risk losing your rights and the money that goes along with those rights.   Further, you may put yourself in a lose-lose situation:  if your project is a failure, you lose.  But if your project is a success, you may find that the other party, not you, ends up making all the money or you may open yourself up for more claims than you can even imagine and in which event, you lose because you pay all your profits to lawyers and/or damages to the offended parties.

        What kind of a way is that to run a business?

Copyright © 2004 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.  You should not rely on this article in any manner whatsoever and you should not draw any conclusions of any sort from this article.  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 laws but the laws of other countries may be different.  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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