• The Power of Joint Authorship

    by  • November 30, 2011 • copyright

    There are many copyright cases where joint ownership of copyright is raised as a defense. Since a joint owner of a copyright is not an infringer but, at most, has a duty of accounting to the other joint owners, it’s one way to avoid infringement.  Often it’s a last-ditch defensive maneuver, claiming that the commissioning of a work, coming up with the idea, or some minor amount of editorial work amounts to joint authorship.

    In BSN Medical, Inc. v. Parker Medical Associates LLC we have a defendant with more foresight.  Defendant Bruce Parker created co-defendant Parker Medical Associates LLC (PMA).  While there, he created a product called “Ortho-Glass” for making splints.  PMA sold the splinting business to Smith & Nephew Casting, Inc. but retained a business making athletic equipment. Parker worked at Smith & Nephew until 2000, then in 2001 Smith & Nephew sold the business to plaintiff BSN Medical. Parker and PMA then re-entered the market for splint materials and were sued by BSN Medical largely for misappropriation of trade secret, but also unfair competition, false advertising (Rebecca Tushnet’s summary of that claim is here), and various other state law claims. And there’s a nugget of a copyright infringement case.

    A Smith & Nephew product manager, Tom Darcey, led the creation of a training booklet showing how to make splints. A person named Ken Hawkins and graphic designer Nancy Roth all worked on the manual. Roth’s contributions were all the graphics, the layout of the work, and creating illustrations.  Roth later became an employee of Smith & Nephew, but wasn’t at the time the manual was created. Smith & Nephew and BSN Medical also created the “OG Pocket Chart” based on the splinting manual.  When PMA re-entered the splinting market, it created its own “PMA Pocket Chart” that BSN Medical claims was copied from the OG Pocket Chart.

    Even if it was, that was only half the battle. PMA had used Nancy Roth to create the PMA Pocket Chart and the court held that she was a joint author of the original splint manual (only the split manual had a registered copyright, so the copyright infringement allegation was infringement of the manual). Noting that a joint work requires (1) an intent to form a single work and (2) contribution of independently copyrightable material from each collaborator in the work, the court held that Roth met those requirements:

    The court is satisfied that Darcey, Roth, and Hawkins all intended that their contributions be merged into inseparable or interdependent parts of a unitary whole. That is, they intended for their work to be merged to create the Splinting Manual. The court further finds that defendants have produced evidence of intent of co-authorship such that the court may conclude as a matter of law that Roth was a joint author of the Splinting Manual. Roth’s contributions included all graphics, the layout of the work, and illustrations. Roth has further attested that her contributions to the layout of the work included making final decisions on its overall layout, including the placement of images, graphics, and text and how the overall work would be visually appealing to the end user. Roth has further attested that she did not sign any agreement transferring her rights in the Splinting Manual to Smith & Nephew or any other company. These facts all tend towards a finding that Roth was a joint author of the Splinting Manual. Although it is true that Roth was not given any billing or individual credit in the Splinting Manual itself, this fact does not preclude a finding by the court that Roth was a joint author of the Splinting Manual for the purpose of copyright protection. Courts have stated that “billing” or “credit” is some evidence of intent to create a joint work, but billing or credit is not required in order to find that a work is a “joint work.”

    In response to the motion for summary judgment, plaintiff has offered no evidence that the other collaborators on the Splinting Manual did not intend Roth to be a joint author, or any other evidence that would tend to show that Roth was not considered to be a joint author of the Splinting Manual.

    Because Roth was a joint author, she could grant a license to PMA, which in this case was a non-exclusive, implied license. I’d love to know whether hiring Nancy Roth to create the PMA Pocket Chart was a strategic choice in order to avoid copyright infringement or just a fortunate turn of events.

    BSN Medical, Inc. v. Parker Medical Assoc. LLC, Civ. No. 3:09cv15 (W.D.N.C. Nov. 10, 2011).

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