17.9 COPYRIGHT INTERESTS—JOINT AUTHORS
(17 U.S.C. §§ 101, 201(a))
A copyright owner is entitled to exclude others from copying a joint work. A joint work is a work prepared by two or more authors. At the time of the joint work’s creation, a joint work must have two or more authors, and:
1. each author must have made a substantial and valuable contribution to the work;
2. each author must have intended that [his] [or] [her] contribution be merged into inseparable or interdependent parts of a unitary whole; and
3. each author must have contributed material to the joint work which could have been independently copyrighted.
Each author of a joint work shares an undivided interest in the entire joint work. A copyright owner in a joint work may enforce the right to exclude others in an action for copyright infringement.
In deciding whether parties intended their contributions to be merged [in element 2, above], you may consider whether the parties signed a written agreement stating that the copyright in the work is to be jointly owned. If there is no such agreement, you may consider whether:
a. [both] [each of the] parties exercised control over the work;
b. [both] [each of the] parties’ actions showed they shared the intent to be co-authors when they were creating the work, for instance by publicly stating that the work was their shared project; and
c. the audience-appeal of the work depends on the contribution of each party so that the share of each party’s contribution to the work’s success cannot be appraised.
In making a substantial and valuable contribution to a work, each author’s contribution to the joint work need not be equal.
A written agreement stating the copyright in the work is to be jointly owned may show that each author of a joint work intended that [his] [or] [her] contribution be merged into inseparable or interdependent parts of a unitary whole.
In contributing material to the joint work that could have been independently copyrighted, each author’s contribution should be entitled to copyright protection without the contributions by the other author[s].
Whether a work is a joint work, rendering a party a joint author, is often a question of fact for the jury to determine. See S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1087 (9th Cir.1989) (reversing summary judgment determination of joint authorship). But see Richlin v. Metro-Goldwyn-Mayer Pictures, Inc., 531 F.3d 962, 967-70 (9th Cir.2008) (affirming summary judgment determination of joint authorship); Aalmuhammed v. Lee, 202 F.3d 1227, 1236 (9th Cir.2000) (same). This instruction may also be inappropriate for use in a case involving joint authorship under the 1909 Copyright Act. See Richlin, 531 F.3d at 967 (explaining that 1909 Copyright Act did not expressly mention or define joint authorship but that joint authorship claims may be analyzed under the rubric of the 1976 Copyright Act because it incorporated common law principles that were well-established under the 1909 Act).
Although Aalmuhammed requires that a joint author be the work’s "master mind," 202 F.3d at 1234, the fact that the joint work concept contemplates two or more co-authors implies that a work may have more than one "master mind," as long as each makes an independently copyrightable contribution. Ashton-Tate Corp. v. Ross, 916 F.2d 516, 521 (9th Cir.1990). The fact that someone has contributed copyrightable material to a joint project does not mean that person is a sole author of that person’s copyright expression. Garcia v. Google, Inc., 786 F.3d 733, 742 (9th Cir.2015).
While either author of a joint work may enforce the right to exclude others, each author of a joint work also "has the independent right to use or license the copyright subject only to a duty to account for any profits he earns from the licensing or use of the copyright." Ashton-Tate Corp., 916 F.2d at 522 (9th Cir.1990). Accordingly, a joint copyright owner may not exclude other joint owners or persons who have a license from another joint owner.
For definitions relevant to this instruction, see 17 U.S.C. §§ 101 (defining "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"), 106 (listing exclusive rights of copyright), and 501 (copyright infringement). The initial ownership rights in a joint work under the 1976 Copyright Act are found at 17 U.S.C. § 201(a) ("authors of a joint work are coowners of the copyright"); see also Pye v. Mitchell, 574 F.2d 476, 480 (9th Cir.1978) (co-authors automatically hold undivided interest in the whole).
Elements reflected in this instruction are drawn from: Ashton-Tate Corp., 916 F.2d at 521 ("Even though this issue is not completely settled in the case law, our circuit holds that joint authorship requires each author to make an independently copyrightable contribution [to the joint work]."); S.O.S., 886 F.2d at 1087 ("[O]ne must supply more than mere direction or ideas: one must ‘translate [ ] an idea into a fixed, tangible expression entitled to copyright protection [to be a joint author.]’" (quoting Cmty. for Creative Non–Violence v. Reid, 490 U.S. 730, 737 (1989))); and Pye, 574 F.3d at 480.
The elements suggested in the paragraph supplementing the second element of the instruction are derived from Aalmuhammed, 202 F.3d at 1234-35 (noting the above as "several factors [that] suggest themselves as among the criteria for joint authorship, in the absence of contract"…control "in many cases is the most important factor"). See also Richlin, 531 F.3d at 968 (analyzing joint authorship under criteria set forth in Aalmuhammed).
A work can be jointly owned by assignment of an undivided interest, such as transfer of copyright from sole author to two or more transferees. This simply renders the work jointly owned, but does not make it a joint work, for which this instruction is appropriate. Oddo v. Ries, 743 F.2d 630, 633 (9th Cir.1984).