Guest Post: Martin v Kogan: Court of Appeal clarifies joint authorship test

The much anticipated judgment of Kogan v Martin [2019] EWCA Civ 1645 was recently handed down by the Court of Appeal (CA) which revisits the thorny issue of joint authorship of copyright works. Alexandra Mezulanik, a research assistant at UCL IBIL, kindly provides this detailed guest post on the case: 

Background facts and the IPEC decision

Readers may recall the first-instance IPEC decision, Martin v Kogan [2017] EWHC 2927, which came before HHJ Hacon (reported here). The core dispute concerned the authorship of the screenplay of the film “Florence Foster Jenkins” about the eponymous American socialite who believed herself to be a talented operatic singer but, in truth, was the polar opposite.   

Each side relied upon conflicting accounts of how the screenplay was created. Script-writer, Nicholas Martin, claimed sole authorship of the work. He did not dispute that Ms Kogan – an opera singer with a raft of other creative projects under her belt – had introduced him to the FFJ story, but was adamant that he alone wrote the script. His case was that Ms Kogan was just an encouraging sounding-board and proof-reader, who also provided minor suggestions and background information based upon her musical expertise.

In contrast, Ms Kogan counterclaimed joint authorship with Mr Martin. Although she was frank that she had no input in certain scenes and that Mr Martin was “the main writer and contributed considerably more”, her case was one of creative collaboration and “bouncing ideas off each other at speed”.

Gomez does not court the limelight
and is adamant that he works alone.

The nature of the interaction between the two in the creation of the screenplay was clouded, or perhaps fuelled, by their romantic relationship which coincided with the first three drafts of the play but ended before the final version.

In the first instance, the judge declared Mr Martin to be the sole author and owner of the copyright in the screenplay. He based this on a novel theory which drew a distinction between the primary skills required to create a copyright work and ancillary secondary skills [J/44]-[J/51]. The fact that Mr Martin was the “ultimate arbiter” was relevant, “sometimes highly relevant” though not decisive [J/29];[J/54(9)]. Ms Kogan appealed the IPEC decision [76].

The Appeal

Mabel muses that she prefers
T.S. Eliot’s collection of whimsical
poems which formed the basis for Cats…

This CA decision is packed full of pragmatic guidance on the law of joint authorship in the UK. [This writer salutes the judicial collaboration jointly undertaken by IP-heavyweight Floyd LJ along with Henderson and Peter Jackson LJJ]. It confirms where to draw the line on pen-pushing and clarifies the skills which can be of the essence when considering a literary or dramatic work. Additionally, it underscores that judicial findings of fact must be based upon all of the evidence.

Joint authorship – the law (now succinctly summarised at [53])

The court considered the well-established elements of joint authorship under s.10(1) CDPA 1988 in turn: (1) collaboration; (2) authorship; (3) contribution and (4) non-distinctness of contribution, although the focus was on the first three.

1. Collaboration – there must be a common design [33]

Joint authorship only arises when the work is created as a result of a collaboration between contributors pursuant to a common design, meaning that derivative works do not qualify. “Common design” distinguishes between being a friend/critic (like Ezra Pound to T.S. Eliot’s The Waste Land) and a “collaborator”. It is essential to identify the true nature of the interaction between the contributors in relation to the work. The nature of the work is also important when looking at the skill integral to its creation.  

2. Creation and fixation are distinct – the question is not: “who wields the pen?”

Mabel pushes the pen but
Monty controls what goes on paper

It can never be enough simply to ask: “who did the writing?” In a welcome development, the CA backed the approach of Laddie J (“a judge with prolific expertise in the law of copyright”) in Cala Homes v Alfred McAlpine [1995] FSR 818 at p.835 over the narrower one of Lightman J in Robin Ray v Classic FM [1998] FSR 622 at [27]-[28]. The CA affirmed [41]:

It is the skill and effort involved in creating, selecting or gathering together the detailed concepts or emotions which the words have fixed in writing which is protected in the case of a literary or dramatic work, whether the work is one of sole or joint authorship. Too much focus on who pushed the pen is likely to detract attention from what it is that is protected, and thus from who the authors are.

3. The contribution of a joint author must be “authorial” [42]

This element is acutely sensitive to the nature of the work. In this case, the screenplay was a dramatic work where devising aspects like the characters, the plot and dramatic incidents could, in principle, amount to a contribution of an authorial kind.

The question of what is “enough” of a contribution should be judged by the “relatively undemanding” Infopaq test, i.e. whether the putative joint author has contributed elements which expressed their own intellectual creation by making free and expressive choices. The more restricted their choices are, the less likely they are to satisfy the test.

4. Non-distinctness of contribution

Joint authorship depends on the individual contributions being non-distinct. There is no further requirement that the authors must have subjectively intended to jointly author a work.

The Final Say [51]-[52]:

The contributions of two joint authors do not need to be equal. The fact that one contributor has the final say, or is the “ultimate arbiter”, does not preclude joint authorship.  It may however affect the relative share of the copyright to which each author is entitled or it may have an evidential bearing on whether there is a true collaboration – but this is not conclusive.  

What went wrong at first instance?

The CA held that although the judge had correctly recognised the need for a collaboration and a non-distinct contribution [58], he had wrongly elided these issues. This made some of his later reasoning difficult to follow [55], not least because he had required Ms Kogan to identify her distinct contributions.  

“If two people try to solve a crossword puzzle together, it may be easy to say who first uttered the correct answer to a clue, but more difficult to answer who contributed to it when the solution emerged from a prior discussion.” [57] “It is preferable simply to ask whether the joint author contributed a substantial part of the relevant creative skill which is protected by the copyright in the work” [69].

In assessing contribution, the judge’s distinction between primary and secondary skills was “positively unhelpful” since it “tends to imply that less weight is to be given to ideas than to written words, when both are essential components of the work” [65]. Citing scholarly criticism of the judge’s approach (Simone (2019), Copyright and Collective Authorship) the CA agreed that it was wrong to describe non-textual contributions (including character development, plot and dramatic incident) as a secondary skill. These aspects “can be of the essence of a literary or dramatic work” [67];[69].

The court also had interesting comments concerning the copyright works created from a series of drafts and unpleaded points. (For those interested, see [80];[22] and [83]-[85];[144] respectively.)

Minor/major scales: what was the nature of Ms Kogan’s contribution?

The talented Rupert can create
work with his eyes shut. 

Having ordered a retrial, the CA stopped short of determining whether Ms Kogan’s contributions were enough to warrant joint authorship, but the message seems reasonably clear. Having listed various examples of Ms Kogan’s creative input to the screenplay which “deserved to be put in the scales”, the court stated [142]:

We consider that it is entirely realistic to suppose that a reconsideration of all the evidence would show that Ms Kogan's contribution was indeed made as part of a collaboration and passed the quantitative threshold for joint authorship.

Such examples included introducing: comedic dialogue from a wide-ranging choice of what Ms Kogan called “musical psychobabble”; the drama of the Lily Pons character and the choice of the Bell Song; and the working idea that FFJ’s character was “into loveliness” in music.

An essential judicial function: When faced with conflicting but largely unchallenged evidence, the CA was persuaded by Ms Kogan’s claim that the judge had treated her evidence wrongly and unfairly, listing numerous inconsistencies [88]-[99]. As a result, he failed to make findings on key issues: was there a collaboration ([109]-[112]) and, if so, what was its precise nature ([103]; e.g. [126])?

The CA emphasised that judges must make “findings of fact based upon all of the evidence”.
Here, the parties’ actions at the outset were highly relevant to the question of collaboration.  It was also pertinent that the two were in a personal relationship and living together for much of the relevant time, so that written communications between the two did not paint as full a picture as might be the case, for example, for parties in a commercial relationship. The judge failed to resolve the parties’ conflicting cases, and potentially took certain comments from Ms Kogan out of context (such as her e-mail congratulating Mr Martin on finishing the second draft “from nothing but [his] own talent”) and assumed them to be objectively true, rather than potentially just affectionate encouragement and support. [Gomez detests being in the doghouse so agrees that he too is unlikely to say “Look what you have achieved with all my help”.]

Although deeply conscious that only rarely should an appellate court disturb a lower court’s findings of fact, the CA found that this appeal presented a different problem: the first instance decision lacked key findings of primary fact, which the CA was in no position to make. Moreover, contrary to the judge’s overall impression, the parties’ conflicting evidence could not be described as “honest differences of recollection” since his conclusion of sole authorship was tantamount to declaring that much of Ms Kogan’s evidence was “simply untrue” [70];[105]. The only option, though regrettable, was to allow the appeal and order a retrial [145]-[146];[103]-[105];[142].

Comment

Mabel ponders whether the pen is
mightier than the keyboard when
the making of the work is distinct f
rom its reduction to material form…

This appeal decision is a significant development for minor joint authors, whose contributions may have been unfairly ignored previously. It confirms that the test for joint authorship should not be stricter than sole authorship. This may sound obvious but the facts of a case can quickly complicate matters. The fact that a major author (who likely receives all the plaudits) has contributed more should not diminish the significance of another joint author’s contribution. It will be interesting to see how parties and indeed the courts grapple with such relationships, especially in a digital context.

Respectfully, the judge’s primary/secondary skills distinction almost seemed like an attempt to reduce the arts to a science.  Additionally, the judge’s qualification at [J/47] of viewing secondary skills in the light of “other contexts such as commercial success”, seemingly favours popular works and introduces a standard of worth – which the low threshold of originality does not warrant.

Stepping back from this particular case, had the appeal court confirmed ‘composition and selection of colour’ as merely secondary skills, how might this diminish the contribution of artistic works from visionaries like Van Gogh, Sorolla or Hockney? Would those works have the same impact without their iconic arrangement and choice of colours? How could such skills be inferior to those flagged as “primary” ones like the use of a brush?

The idea/expression dichotomy is not a binary concept and hinges on the level of detail arising from the facts of the case. Jacob J (as he then was) made this clear in Ibcos Computers v Barclays Finance [1994] FSR 269, finding it was a “question of degree”, and relied on the words of Judge Learned Hand that “nobody has been able to fix that boundary and nobody ever can” [34].

As for the “ultimate arbiter” – if there is concern of ‘control’ being exercised without appropriate recognition, then this might be best addressed via a contract spelling out the nature of the relationship between the putative authors.

Debates between fixation and creation, the ultimate arbiter and the challenges of a primary/secondary skills test come to light when considering contemporary art which has not been made by the hands of the progenitor of the idea such as Jeff Koons and Damien Hirst.

Finally, it is worth reminding readers that this is not a typical case, nor is it one of the CA being tempted to duplicate the trial judge’s role on appeal. In Fage v Chobani [2014] EWCA Civ 5, Lewison LJ made sage observations on a judge’s role within the hierarchy of the courts at [114]-[115] (covered by the original IPKat here). In particular, the trial judge’s function is: “to reach conclusions and give reasons to support his view, not to spell out every matter as if summing up to a jury. Nor need he deal at any length with matters that are not disputed. It is sufficient if what he says shows the basis on which he has acted.”