• Do-Over on the Writing Requirement

    by  • February 25, 2011 • copyright

    Such a short decision, and so many things to think about.

    We last visited Vergara Hermosilla v. The Coca-Cola Company after a motion for preliminary injunction had been granted in Vergara’s favor. Vergara did a Spanish translation of lyrics for a video for Coca-Cola, but there was a misunderstanding and/or screw up which meant that there was no contract in place that gave Coca-Cola the right to use the lyrics (at least that’s how it was decided on preliminary injunction). The root of the dispute was over credit for the work, and the court entered a mild-mannered order requiring Coca-Cola to give Vergara credit.

    Now we have the court’s decision on summary judgment, with what looks a lot like an about-face.  Let’s refresh the facts.  After a phone conversation about the terms of the deal after the work had already been completed, Vergara wrote this email:

    But because I am a man of my word and honor, that is not moved by economic motives, my only request is that my credits are respected as producer and adapter of the Spanish version (that every time the name of any composer of this version appears, my name appears as adapter), and obviously, the credits for the production that are detailed in the invoice sent for this production, which I have detailed below.

    For the adaptation, you may consider it a work for hire with no economic compensation to that respect. I believe what’s legal is a dollar.

    I hope that this leaves clear what my work was and what my good intentions were from the beginning.

    Jose Puig, VP of Marketing at Universal Music Latin America (who was doing the work for Coca-Cola) responded:

    You can count on the credits on the track.

    However, Puig then sent a draft agreement that didn’t provide for credit to Vergara, so Vergara rejected what he characterized as Puig’s “proposal.”

    The first time around Coca-Cola had argued that the work was a work made for hire, but the court found there was no writing as required by section 101(2) of the Copyright Act. This time around, Coca-Cola argued that there was a writing for purposes of assignment of copyright as required by section 204 of the Copyright Act – same correspondence, just different statutory section.

    This time the argument was a winner. Vergara’s email was the offer, Puig’s “you can count on the credits” the acceptance, they had the essential terms in place, and nothing mattered after that.

    The court notes that “findings made at the preliminary injunction stage are often based on incomplete evidence.” What changed? It was Puig’s email response saying “You can count on the credits on the track,” the acceptance of the contract.  This email wasn’t mentioned in the preliminary injunction decision.

    I’m not sure I buy it, though. The court cited Judge Kozinski’s famous statement about the writing requirement of Section 204: “It doesn’t have to be the Magna Charta; a line-line pro forma statement will do.”  But did Judge Kozinski mean even where the words used are “work for hire,” where there is a different statutory section for that writing requirement?

    Perhaps it doesn’t make a difference at the end of the day whether the writing was for purposes of agreeing it was a work made for hire rather than an assignment. Here are the two statutory sections:

    Assignment: 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.

    Work made for hire: A work [is a work made for hire] . . . if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.

    I think it might matter.  Was an exchange of emails “a written instrument signed by them”?

    Vergara Hermosilla v. The Coca-Cola Company, No. 10-21418 (S.D. Fla. Feb. 23, 2011).

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