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Prenups of the Copyright World? Issues to Consider in Joint Authorship & Copyright Co-Ownership Agreements

November 10, 2021

By Naomi Zener & Prudence Etkin

So, you think you want to collaborate with someone else (or more than one other person) on the creation of a potentially copyright protectable literary, artistic, dramatic, or musical work? You may think you’ve found the best and brightest people to work with, whose creativity vibes with yours. However, given the ambiguities in Canadian law regarding copyright co-ownership in works of joint authorship, it may be in your best interests to enter into a prenuptial agreement of sorts before you consummate your relationship and make beautiful works of joint authorship together.

The relevant sections of Canada’s Copyright Act (the “Act”) that speak to copyright ownership in works of joint authorship are Section 2 (definition of works of joint authorship), Section 9(1) (term of copyright in works of joint authorship), and Section 13(1) (author is the first owner of copyright). Section 2 provides that a work of “joint authorship" means a work is produced via the collaboration of two or more authors in which the contribution of one author is not distinct from the contribution of the other author(s). However, the Act itself does not define “co-authors”— even for complex works such as motion pictures — or what rights and obligations each co-author have towards each other and in the work of joint authorship.

In Canada, the legal principles of ownership in “joint tenancy” and “tenancy in common” are well established for real property, however the Act is silent on the nature of joint ownership in copyrighted works of joint authorship. However, a review of “joint tenancy” and “tenancy in common” provides insight into the manner and extent to which co-owners may own and exercise their copyright in works of joint authorship.

Copyright ownership in works of joint authorship is treated differently in the United Kingdom (“UK”) as compared to the United States (“US”). Under UK law, the copyright in works of joint authorship has generally been interpreted as being owned in joint tenancy, unless modified by a written agreement between the co-creators. There is a presumption that each creator owns an equal undivided interest in the copyright and the unanimous consent of the co-owners is required to exercise exclusive rights or assign the copyright in the work.[1] In estates law, the right of survivorship dictates the automatic assignment of a joint tenant’s interest to the surviving joint tenant(s) upon their death, presumably, the same would be true when copyright is deemed to be owned in joint tenancy.

Under US law, co-authors own a work as tenants in common unless they enter into a written agreement to modify this presumption.[2] Pursuant to a tenancy in common, each co-owner can commercially exploit the copyright without the unanimous consent of their co-owners. While a joint author may unilaterally use, license, or sue for infringement of the work[3] they nevertheless have a duty to account to the other co-owners of the copyrights for any profits received from the exploitation of the work.[4] In this context a co-owner can devise a bequest of their interest to their estate.

In Canada, Section 13.4 of the Act provides that owners may assign the whole or partial copyright to their works but the Act does not explicitly define the exact nature of co-creator’s copyrights in relation to the other authors, nor does it provide explicit guidelines with respect to consent from co-authors as a requirement for exploiting the work. In theory, Canadian courts may be left to determine whether a jointly authored work protected by copyright is owned in a joint tenancy or by a tenancy in common. Canadian jurisprudence has focused more on whether a work is one of joint authorship, rather than what the nature of a co-owner’s interest is in the copyright as joint author of the work.

Canadian courts have followed two main approaches to determine whether the preconditions required to constitute joint authorship have been met: the first, is the approach set forth in Neudorf v. Nettwerk Productions Ltd., 1999 CanLII 5293 (BC SC); and the second, is the approach articulated in Neugebauer v. Labieniec, 2009 FC 666.

Neugebauer followed the U.K. common law test adopted in Levy v. Rutley (1871), 19 W.R. 976, L.R. 6 C.P. 523, which requires the following: (1)  joint authorship will be  established by the facts and by the law, not an assessment of whether there was mutual intent to co-author the work; (2) the contributions of each author must be substantial, though they need not be equal; and (3) the contributions need not be “qualitatively and quantitatively” equivalent, but there must be “a joint labour in carrying out a common design.”[5] In Neudorf the court expanded  the joint authorship test by adding the element of mutual intention of the parties to act as joint authors. Canadian authorities have not fully resolved the role of “intention” in joint authorship. However, Canadian case law does provide authors (and their lawyers) with guiding considerations to help determine whether a work was created by joint authors.  These were reviewed in Seggie c. Roofdog Games Inc., 2015 QCCS 6462, and included the following:

  1. the provisions of the Act itself and consideration of the specific facts of the joint work at issue;
  2. whether there was substantial contribution by each of the co-authors in the making of the work;
  3. whether there was some degree of collaboration with a common design in mind between the joint authors;
  4. whether the contribution was more than ideas or suggestion (which it must be); and
  5. the intentions of the parties.

Given the foregoing, the nature of co-ownership in jointly authored works in Canada may depend on the specific context and circumstances. What we can glean from Canadian jurisprudence and the Act is that a co-owner of copyright in a jointly authored work may assign their interest to another party, who is not a co-author of the work. However, they cannot independently publish, reproduce, transfer, license, or otherwise use that work without the consent of all other co-owners. As such, a co-owner would also have to account to the other co-owner(s) for any profits resulting from exploitation of the work. Practically speaking, anyone acquiring a copyright interest would want an accompanying waiver of moral rights with the copyright assignment, in order to be free to modify the work and not associate the work with the original author thereof. They would also no longer have to be concerned with any damage to the reputation of the creator of the work where moral rights have been waived. At the end of the day there is no jurisprudence that explicitly addresses the applicability of either tenancy-in-common or joint tenancy in a copyrighted work of joint authorship. Canadian legal scholars have speculated on the possible outcomes in the absence of an agreement and have noted the practical challenges associated with co-ownership of copyrights.

In light of the complexities surrounding the nature of copyright co-ownership in works of joint authorship in Canada, it is important and valuable for the co-authors to enter into a collaboration and copyright co-ownership agreement to ensure there’s no confusion as to how each co-author owns their respective copyright interest in the co-authored work. When drafting such an agreement, below are some considerations to undertake:  

  1. What are the responsibilities and obligations of each co-author?
  2. What is the delivery schedule?
  3. How will the co-authors be credited (position, size, placement, prominence, duration, order, etc.)? Are there name recognition issues?
  4. Who holds editorial control, especially where one co-author is more knowledgeable on the subject matter of the work versus the other co-authors?
  5. Will copyright ownership be determined based on each co-author’s respective contribution, or will the copyright be held equally between co-authors?
  6. Do co-authors want to be able to separately exploit their copyright interest or do they want to make decisions on a majority or unanimous basis?
  7. What limits, if any, will be placed on a co-owner’s ability to exploit their copyright ownership interest?
  8. How do co-authors choose to address each co-author’s moral rights? If their ownership interest is transferred, should their moral rights be waived as a requirement of the agreement?
  9. How will revenues and profits for copyright exploitation be accounted for, and should audit rights provisions with equal access to books and records by co-owners be provided?
  10. How can derivative works be made (including prequels, sequels, and translations) by the co-owners?

In the event that creators are overtaken by the creative spirit, and they hop in with both feet to create a magnum opus without having first entered into a collaboration and co-ownership agreement, fear not!  An agreement can always be entered into once the work has been created, think of it as a post-nuptial agreement, which ensures that each co-author’s interests are aligned and protected. At the end of the day, before getting creative together — and instead of shooting first and asking questions later, co-authors are well-advised to first memorialize their collaborative intent in a joint authorship and copyright co-ownership agreement to protect their respective interests, something we would be more than happy to assist with.

 


[1] CDPA, s 16(2), s 173(2); Powell v Head (1879) 12 Ch D 686. However, courts have the discretion assign joint authors shares pro rata to their individual contributions, see Martin & Anor v Kogan [2021] EWHC 24.

[2] C.C.A.V., 846 F.2d at 1498; See also: Childress v. Taylor, 945 F.2d at 505 (citing H.R. REP. No. 1476, at 120 (1976)

[4] Oddo v. Ries, 743 D.2d 630,633 (9th cir.1984)

[5] Neugebauer v Labieniec, 2009 FC 666, aff’d 2010 FCA 229

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Author(s):

Naomi Zener Naomi Zener
B.A., J.D., LL.M.
Counsel
416.364.1650  email Naomi Zener
Prudence Etkin Prudence Etkin
B.A., M.A., B.C.L./J.D.
Associate
416.957.6202  email Prudence Etkin