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BRIEF OF AMICI CURIAE THE NATIONAL WRITERS UNION
AND LITERARY MANAGERS AND DRAMATURGS OF THE
AMERICAS, INC. IN SUPPORT OF REVERSAL
The National Writers Union (the "NWU") and Literary Managers and Dramaturgs of the Americas, Inc. ("LMDA") respectfully submit this brief amici curiae in support of a reversal of the District Court's ultimate order and judgment in the above-captioned case.
INTERESTS OF THE AMICI
The NWU is the trade union for freelance writers of all genres, including journalists, book authors, poets, copywriters, academic authors, cartoonists, and technical and business writers. With locals and organizing committees throughout the United States, the NWU is committed to improving the economic and working conditions of all freelance writers.
The NWU's activities have included, but have not been limited to (a) developing and advocating basic standards for fair practice in publishing, telecommunications and other industries, (b) assisting writers in the negotiation and enforcement of contracts with publishers in virtually all major media, (c) testifying before the United States Senate and serving on government advisory committees with respect to copyright reform and intellectual property issues, and (d) administering the Publishing Rights Clearinghouse, which licenses the electronic republication of writers' works and collects royalties from computer database companies.
LMDA is this country's only professional association of dramaturgs and theatrical literary managers. LMDA members work at most of the major non-commercial theaters in the United States and Canada. Through its annual conferences, its various membership committees, and its newsletters, books, and other publications, LMDA promotes the work of its members and facilitates study and debate on the nature and function of dramaturgy and literary management in American theater.
LMDA and the NWU, by virtue of their individual members, who collectively comprise over 5000 writers and theater professionals, have a direct and substantial interest in the outcome of this appeal, especially as it relates to the cherished and constitutionally-recognized right of the creators of copyrightable material to participate in the financial and other rewards derived from their creative work.
For example, the interests of many of the NWU's members and at least some of LMDA's members could be substantially and directly impaired by an affirmance of the District Court's holding that a writer who expressly has been asked to add substantial copyrightable material to a work, and who does write such non-de minimis material, may later be denied any and all co-authorship rights, on the basis of his or her inability to prove that his or her collaborator subjectively understood or intended that he or she would have such rights.
Moreover, both the NWU and LMDA, on behalf of their members, are vehemently opposed to the argument, made by the appellees (the "Larson Heirs") in their brief filed November 10, 1997, that a writer who adds substantial copyrightable material to a work which is expressly agreed to be presented in a specific and limited venue (in this case, a not-for-profit theater production expressly designated to be at "79 East 4th Street"), and who repeatedly refuses to sign copyright licenses or assignments, nevertheless can be deemed to have granted an implied and unfettered license to sell or otherwise market his or her material in any venue or media, including, in this case, Broadway and national and international stage productions, motion pictures, cast albums, books, concert versions, merchandising, television and radio programs, electronic media, foreign language performances, revival performances, and other forms of commercial exploitation.
LMDA and the NWU believe that a finding of such a license would be untenable in any event, but would be especially untenable where, as in the case of Dr. Thomson, the alleged licensor has received no royalties or payment whatsoever in connection with the marketing of his or her copyrighted work. Such a finding would be especially damaging to NWU members, many of whom depend upon the right to market their work (and receive needed income) for uses beyond first publication.
Similarly, the NWU and LMDA are strongly opposed to the Larson Heirs' alternative position that "Thomson has no rights" (Br. 47) -- an argument which, were it to be accepted, would make a nullity of established "work for hire" doctrine, and would have profound consequences for freelance artists, writers, photographers, designers, and creators everywhere.
LMDA, based upon the professional involvement of its members in the theater community in particular, additionally wishes to reassure the Court that, contrary to the arguments briefed by the Larson Heirs, a reversal of the District Court's decision would not result in any dangerous expansion of the rights of dramaturgs at the expense of the collaborative process. In the first instance, most dramaturgs work on play scripts as employees of the producing theater company, and even absent an employment agreement waiving ownership of copyrights, in the ordinary course they would not have any copyright interests, under the work-for-hire doctrine. Secondly, LMDA acknowledges that in most instances, dramaturgs do not add substantial copyrightable material to plays.
With respect to those rare instances in which dramaturgs may co-write to a degree which would qualify them as co-authors under the Copyright Act, it is both dangerous and absurd to assert, as the Larson Heirs and the District Court implicitly do, that because they are functioning in part as dramaturgs, they cannot also be co-authors. LMDA believes that surely the determination of legal rights in such a case must rest on a functional analysis, and not upon nomenclature or billing. This must be so particularly where, as here, the nomenclature is (1) so little understood, and (2) attached to a profession which is still, in this country, in the early stages of its evolution.
Further, in determining what Thomson contributed to the development of the book and lyrics of Rent, LMDA believes that it is neither sufficient nor advisable to attempt to make an analogy
between what "editors" generally may do in the book publishing business and what "dramaturgs" generally may do in the theater. LMDA knows of no study comparing the standards and practices of the book publishing industry with those of the theater, and in any event, such a study, even if it existed, would have no cognizable bearing upon what Thomson and Larson actually did together in developing and writing Rent. LMDA therefore finds the attempt by the Larson Heirs to minimize Thomson's contributions, by refering to them as those of an "editor," to be an insult to both editors and dramaturgs, shedding heat but no light on the issues which are to be determined by this Court.
Ultimately, LMDA believes that the solution to any problem of unintended statutory co-authorship in the theater is a transparently simple one: deal with it by contract. Theatrical producers and playwrights apparently are capable of handling copyright matters in rights agreements between themselves, so it is difficult to imagine why either should have any difficulty in similarly dealing with copyright issues in written agreements with any other party who is participating substantially in the creation of the subject matter of that copyright, i.e., the play. That the other party may or may not be called a "dramaturg" should not matter.
Furthermore, just as it is not required of any principal playwright, or person "billed" as playwright, that he or she understand the bundle of rights constituting copyright in order for him or her to be entitled to such rights under the
Copyright Act, it similarly should not be required of a statutory co-author, as the District Court mistakenly held it should, that he or she must be collaborating with a person who has an understanding of co-authorship rights, in order for those rights to exist.
That the circumstances underlying the dispute in the present case are so extraordinary does not require an extraordinary solution. A simple solution exists: the statute means what it says, and one ignores it, by not negotiating with true collaborators, at one's peril. It is difficult for the NWU and LMDA to agree with the District Court in its supplanting of the clear statutory scheme, as further articulated so many times by this and other Courts, with a test so vague and uncertain of application, and, in so doing, to deprive a class of worthy artists -- collaborators who write or otherwise create substantial copyrightable material -- of their rights under the Copyright Act.
ARGUMENT
Numerous facts and legal arguments in favor of reversal of the District Court's decision are set forth comprehensively in appellant Thomson's main brief and reply brief. Rather than repeat all of these points, the amici will attempt to focus upon additional arguments which relate to the larger impact which the appellate decision in this case could have upon the creative community, not only in the theater, but as a whole.
POINT I
NON-EMPLOYEE CREATORS OF NON-DE MINIMIS
COPYRIGHTABLE MATERIAL WHO DO NOT ASSIGN
THEIR RIGHTS MUST BE ALLOWED TO PARTICIPATE
IN THE REWARDS FROM THE MARKETING OF THEIR WORK
A. The Constitution and the Copyright Act
Both Require a Finding in Favor of the
Rights of Creators Who Are Not Employees
and Who Do Not Transfer Their Property
The Copyright Act states as follows: "Copyright in a work protected under this title vests initially in the author or authors. The authors of a joint work are co-owners of the copyright in the work." 17 U.S.C. § 201(a). This is a modern-day expression of a basic right recognized in our Constitution, which gave Congress the power "To promote the Progress of Science and the useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." U.S. Const. art. I, § 8, cl. 8.
In other words, the entire premise of copyright law is that the arts are to be promoted by ensuring that creators, all of whom are defined collectively as "authors," have the right to enjoy the rewards derived from their work. It is noteworthy that with the exception of work-for-hire provisions, which indisputably have no application to facts of the case before this Court, both Congress and the drafters of our Constitution recognized that copyrights belong in the first instance only to creators. "The creator of the property is the owner, unless he is an employee... or the parties have agreed in a writing signed by both that the person who commissioned the creation of the property is the owner." Schiller & Schmidt, Inc. v. Nordisco Corp., 969 F.2d 410, 413 (7th Cir. 1992).
Copyrights thus are not designed for the benefit of theater producers, publishing houses, or media companies. They are designed for the purpose of seeing to it that creators have a means of making a living from their work. As the Supreme Court noted in Stewart v. Abend, 495 U.S. 207 (1990), "[t]he limited monopoly granted to the artist is intended to provide the necessary bargaining capital to garner a fair price for the value of the works passing into public use." Id. at 229, citing, e.g., Harper and Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 546 (1985) ("The rights conferred by copyright law are designed to assure contributors to the store of knowledge a fair return for their labors").
Unfortunately, however, in the case of an increasingly large number of creators, this is a goal which is unrealized. Most working writers who attempt to earn their living from licensing their copyrights earn less than $7000 per year from their writings. Most do not have paid health insurance or pensions. In real terms, the fees for use of their work in print have been declining for over 15 years, to the point where the writers' share is but a small fraction of what the consumer pays.
In the world of the theater, dramaturgs, as exemplified by appellant Lynn Thomson, who received only $2000 for her many months of work with the late Jonathan Larson, often are among the lowest paid creative professionals. This is despite the fact that their collaborative functions are expanding, and despite the fact that they are increasingly viewed as vital and necessary to the process of new play development.
In suggesting that the above situation is the proper context within which to view this case, the amici of course do not wish to imply that this or any court must guarantee a suitable income for all writers and artists. When a person creates substantial copyrightable material, however, regardless of whether that "author" is called a writer, painter, musician, lyricist, dramaturg, or some other appellation, so long as that "author" has not transferred his or her property to someone else, that "author" must have rights under the Copyright Act.
In the case here, it is notable, and dispositive, that the District Court found:
(1) that Larson expressly asked Thomson "to write," in a conversation during which, according to testimony credited by the Court, he asked her in essence to serve as a playwright;
(2) that Thomson and Larson "worked extremely intensely together" on a "radical transformation" of the script of the play;
(3) that she "did things that a book writer, had one been hired, would have done;"
(4) that she made a "major contribution" to a "new version" of the play;
(5) that her lyrics were "non-de minimis" and "copyrightable;"
(6) that her expressions of plot changes, thematic elements, structural components and character developments "may well be" copyrightable;
(7) that the previous studio production script "was not a produceable work;" and
(8) that Thomson "was a significant force in turning the studio production script into the hit that Rent became."
(A12-14; A23-26; E213)
Given these facts as found at a bench trial by the District Court, for the Larson Heirs to argue, as they do, that
"Thomson has no rights" (e.g., Br. 47), is to miss the entire point, as well as the letter, of the copyright law.
Given these facts, as Thomson explains in Points II and IV of her main brief, the only alternative to a finding that she has non-exclusive rights as a joint author of the "New Version" of Rent is a finding that she has exclusive rights as the sole author of the copyrightable material which she wrote. Yet because her additions and changes to Rent obviously were designed by both she and Larson to be inseparable from Larson's contributions, it is clear that the far more reasonable and lawful course would be to find that the New Version of Rent is a joint work, plainly defined by Congress 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." 17 U.S.C. § 101.
This was precisely the holding in the leading decision adopted by Congress when it formulated the above statutory definition, namely, this Court's controlling decision in Edward B. Marks Music Corp. v. Jerry Vogel Music Co., 140 F.2d 266 (2d. Cir. 1944). This Court in Marks correctly noted that unless
contributors to a work "both plan an undivided whole," then each author "retains power to forbid publication...." Id. at 267.(1)
Even the Larson Heirs acknowledge the validity of this point, noting, however, that Thomson "unquestionably" has "made such contributions with the intent that they form part of an 'undivided whole,'" such that under Marks, she has no "right to withdraw her alleged contributions...." (Br. 46-47 n.22) In making this assertion, the Larson Heirs implicitly acknowledge that the New Version of Rent is a joint work. As this Court held in Marks, where the parties intend "an undivided whole... in that case, unless they stipulate otherwise in advance, their separate interests will be as inextricably involved, as are the threads
out of which they have woven the seamless fabric of their work." 140 F. 2d at 267.
Although the District Court in Thomson, by contrast, held that statutory joint authorship cannot be found without proof that Larson intended to share rights in the work (A20), there is no judicial precedent, statutory provision, or citation of legislative history which could support such a holding, and there are numerous decisions and other authorities to the contrary. Rather than repeat the citations provided by Thomson, we respectfully refer the Court to Point I of her main brief and Point II of her reply brief.
In any event, the Larson Heirs' contention that "Thomson has no rights" far exceeds any statement or holding of the District Court, and it is contrary even to the decisions which they cite in their brief. See, e.g., Effects Associates, Inc. v. Cohen, 908 F.2d 555, 558 (9th Cir. 1990) ("Absent an express transfer of ownership, a contributor who is not an employee retains ownership of his copyright").
The Larson Heirs' "no rights" argument, were it to be followed, also would make a nullity of the work for hire doctrine, as enunciated in Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989). If non-employee contributors who are commissioned to contribute copyrightable material have "no rights" at the outset, then the law's requirement of a written "work for hire" provision transferring such rights would have to be regarded as both superfluous and wrong. The Larson Heirs thus urge a disruption of a body of law which, as the Supreme Court stated, has "profound significance for freelance creators -- including artists, writers, photographers, designers, [and] composers...." Id. at 737. Accordingly, the NWU and LMDA, on behalf of its members, and in the interests of freelance creators everywhere, respectfully urge this Court to emphatically reject the Larson Heirs' argument.
B. Neither the Amici Nor Thomson Are In
Any Way Attacking Larson or His Wishes
The Larson Heirs repeatedly assert that Thomson's
position in this case is an attack on Larson, but as the District
Court pointed out, addressing the Larson Heirs' counsel, this
argument is "a straw man":
[T]o get as excited as you do about syndicating Jonathan Larson as this great talent is to my mind very much a straw man, because nobody is suggesting otherwise, least of all Lynn Thomson. I must say that to you.
(T702-03)
Indeed, given the fact, as recognized by the District Court, that it is "clear" that Larson intended for Thomson to be compensated for her writing (T700), it is apparent, as well as ironic, that Thomson's position is the one more consonant with Larson's wishes. Moreover, because the District Court's holding that Rent is not a joint work, if upheld, could only lead to a determination that Thomson has exclusive rights to enjoin the use of her own writings, a result which Larson obviously never intended (and which Thomson has never sought), the Larson Heirs in effect are arguing for an outcome which is not only contrary to Larson's intentions, but potentially harmful to the "unitary whole" on which he labored for seven years.
C. Under Childress and Other Applicable
Law, the Absence of Contractual Terms
Providing for Co-Authorship is Irrelevant
The Larson Heirs place much emphasis on the fact that none of the written contracts in this case include any provision that either Larson or Thomson would be co-authors. (Br. 1, 3, 8, 11, 15, 19, 21, 30-31, 35-36, 43, 48) This ignores the law, re-confirmed in Childress v. Taylor, 945 F.2d 500 (2d. Cir. 1991), that contractual provisions are totally unnecessary for the creation of statutory joint works.
In its holding that each putative co-author must make a copyrightable contribution, this Court in Childress stated that "[i]t seems more consistent with the spirit of copyright law to oblige all joint authors to make copyrightable contributions, leaving those with non-copyrightable contributions to protect their rights through contract." Id. at 507. If it were true, as the Larson Heirs insinuate, that even writers of copyrightable
material must have contracts in order to preserve their rights, the above statement in Childress would be rendered nonsensical.
The complete absence of any contractual requirements for the establishment of joint authorship is further highlighted by the multiple failed attempts of certain members of Congress to impose such a requirement. The Register of Copyrights strongly objected to Senate Bill S.2330, for example, stressing that "[t]he [Copyright] Office would not support the introduction of a new presumption that two or more works are separate unless the parties agree otherwise in a separate written instrument signed prior to the commencement of any work that they are intended to be joint works." (Plaintiff's Ex. GGGG -- Appendix to Reid Respondent's Brief in Opposition). The Copyright Office observed that "it seems clearly against the author's interest to create an added hurdle to treatment as a joint work." (Id.)
The non-existence of any written contract stating that Thomson and Larson are co-authors is thus irrelevant to the determination of the issue raised in this appeal.
That is not to suggest, however, that written contracts with or among collaborators are not advisable. To the contrary, LMDA in particular would like to point out to the Court that although its members are saddened by the tragedy that has made Thomson's lawsuit necessary, one of the salutary effects of her widely reported assertion of her rights has been in opening up discussions among playwrights and dramaturgs to clarify their respective understandings, and in underscoring the advisability of reaching agreements and committing such agreements to writing. A reversal of the District Court's ultimate ruling against Thomson, far from signaling any decline in the close collaborative relationship between and among dramaturgs, playwrights and producers, instead would foster a continuation of that process of clarification, which benefits not only dramaturgs, but every party involved in the endeavor to bring a work to the stage.
D. The Notion that the Terms "Dramaturg" and
"Author" Are Mutually Exclusive, or that the
Terms "Editor" and "Dramaturg" Are Synonymous,
Is Wrong and Totally Contrary to the Evidence
Both the District Court and the Larson Heirs, in stating that Larson was referred to as the "author," and, as if by contrast, that Thomson was referred to as the "dramaturg" (A26, Br. 27), apparently have been operating upon a false premise that the terms "dramaturg" and "author" are mutually exclusive. Such
a premise is totally contrary to the evidence, however, including the testimony of experts from both sides of this case.
Dr. Susan Jonas of the New York State Council On the Arts, testified for example, without contravention, as follows:
When and if the playwright invites a dramaturg to collaborate in the creation of new material..., the dramaturg who accepts that invitation acts as a full-fledged co-creator, contributing his or her own creative work to that of the principal author.
From my comprehensive survey of the field (in [the college textbook which I co-edited], Dramaturgy in American Theater...), and from my own professional experience, I know that the actual provision of creative solutions by dramaturgs, while not considered the norm in dramaturgical practice, often does occur.
* * *
It is no wonder that such could be the case, since often a dramaturg brings decades of professional experience to a playwriting collaboration. In many cases..., the dramaturg's breadth of knowledge and experience far exceeds that of the playwright, who often is a novice. Where a "co-author" is needed, the dramaturg is a likely choice, particularly in a non-profit system of new play development (such as that of NYTW, in which Rent was developed), which encourages collaboration, rather than solitary playwriting by one "star" author.
* * *
[T]he fact that Thomson was credited as "dramaturg" and did not receive equal billing with Larson in Rent's programs does not signify at all that she did not co-write the play. First of all... it is known that dramaturgs can and sometimes do co-write plays. Second, credits in the theater are frequently misleading or inaccurate.(E283-85; E289)
Professor Mark John Bly, Chairman of the Playwriting Department of the Yale School of Drama, similarly testified, again without contravention, that dramaturgs sometimes participate in the "authorship" of plays, and that any attempt to define them as "editors" not only would be mistaken, but would tend to stifle the evolution of a valuable, emerging
profession which, in the United States, is in an "embryonic" stage:
[I]t would be totally inaccurate to say that the term, "dramaturg," is synonymous with the term, "editor." The editorial function is only one of several which dramaturgs can and do perform.
* * *
I can state unequivocally that the function of the dramaturg can and often does include that of co-writer. As noted by Joel Schechter, the Chairman of the Theater Arts Department of San Francisco State University, for whom I once worked when he was the Editor of Theater magazine: "Collective authorship of plays is not uncommon, but is frequently unacknowledged. Broadway 'play doctors' who... writ[e] scenes credited to someone else have their non-commercial counterparts in the profession of dramaturgs."
* * *
For the above and other reasons, any attempt to codify the role of the dramaturg, and especially to define dramaturgs as "editors," would be inaccurate, premature, and counterproductive. The dramaturg's function in the theater, at least in the United States, is in an embryonic stage. Rather than stifle the evolution of the dramaturgical "embryo," it would be far wiser in my opinion to envision a time, in the not too distant future, when Darwin's closing words of wonder in The Origin of the Species may apply to the dramaturg's profession: "...from so simple a beginning, endless forms most beautiful and most wonderful have been, and are being evolved."
(E27-29)
As explained below, the above-quoted testimony of Dr. Jonas and Professor Bly was supported by the testimony of both of the expert witnesses for the Larson Heirs.
Expert Robert Brustein, Artistic Director of the American Repertory Theater, and former Dean of the Yale School of Drama, testified that:
(1) dramaturgs sometimes perform the role of playwrights and write scenes credited to others;
(2) a credit as "dramaturg" can include the possibility of "partial authorship;"
(3) dramaturgs are not synonymous with editors;
(4) the writing of language is "obviously part of the dramaturg's duties;"
(5) dramaturgs generally work under contract; and
(6) in the theater industry, "people who contribute contractually to a given work of theater can be considered coauthors."
(E225, E229-30, E239, E246, E262, E269-70)
Bernard Gersten, Executive Producer at Lincoln Center, the only other expert retained by the Larson Heirs, testified:
(1) that in the theater, there is no need for the term "co-author" to be used in order for a co-author relationship to exist; and
(2) that the accepted industry definition of "author" includes "each dramatist, collaborator, adapter, book writer, composer, lyricist, [and] novelist" whose material is used in a play.
(T134-40; T156-57)
In short, the argument that dramaturgs, regardless of how much they participate in the writing of a play, cannot be allowed to drink at the same drinking fountain as playwrights, is without support in either the record or the law. The fact that Thomson is a dramaturg, and was credited as a dramaturg, is irrelevant to the question of whether or not she is a co-author.
POINT II
A FINDING OF AN IMPLIED AND UNFETTERED
COPYRIGHT LICENSE IN A SITUATION SUCH AS
THE ONE IN THOMSON WOULD BE LEGALLY UNTENABLE
As an alternative to their unsupported argument that "Thomson has no rights," the Larson Heirs urge this Court to find that Thomson's writings "were impliedly or expressly licensed" by her "for use in RENT." (Br. 47)
The Larson Heirs would have this Court believe that although the District Court found that Thomson "agreed to provide her services in connection with the New York Theater Workshop production" (A11), and although Thomson's only contract regarding those services pertained expressly, specifically, and only to "the production of RENT to be performed at [the not-for-profit] New York Theater Workshop, 79 East 4th Street," she nevertheless "voluntarily contributed" her work and thereby granted an unfettered license for the sale or other marketing of her material in any venue or media (Br. 47 n.23), including, to repeat just two of many examples, a license to exploit her work in motion pictures and a cast album.
This is an argument which, were it ever accepted by this prestigious Court, would cause havoc and hardship with respect to the rights and income of freelance writers and creative artists across the United States, who depend upon the right to seek additional compensation by licensing their work for uses other than first publication. Fortunately, however, the Larson Heirs' argument is also one which is untenable under the law, such that they are unable to cite any applicable authority which would support it.
As held in Design Options, Inc. v. Bellepointe, Inc., 940 F. Supp. 86 (S.D.N.Y. 1996), a case cited by the Larson Heirs which does not support their claims, "an implied license to use a copyrighted work 'cannot arise out of the unilateral expectations of one party.' There must be objective conduct that would permit a reasonable person to conclude that 'an agreement had been reached.'" Id. at 92, quoting, Allen-Myland v. International Business Machines Corp., 746 F. Supp. 520 (E.D. Pa. 1990). In other words, "[t]he creation of an implied license, as in the creation of any implied contract, requires a meeting of the minds." Design Options, supra, quoting, N.A.D.A. Services Corp. v. Business Data of Virginia, Inc., 651 F. Supp. 44, 49 (E.D. Va. 1986); see, Rodgers v. Dunkirk Ice Cream Co., 1989 U.S. Dist. LEXIS 8035 (S.D.N.Y. 1989) (copyright license rescinded where no meeting of the minds was proven).
In the case here, there has been no showing of any evidence that Thomson intended to grant a copyright license for any use of her work. Although she thus far has not attempted to restrain any such use, this is solely because of her position, which the District Court found to be "in good faith" (A16), that her status is that of a statutory joint author, sharing only non-exclusive rights with Larson, who had licensed those rights to others. Tracking the language of the holding in Design Options, "[ i]n sum, [the Larson Heirs'] evidentiary arguments do not amount to a showing that [Thomson] understood that [she] was conveying a license to [the producers] to use [her material]." Id. at 93.
Even if it were to be found that Thomson, by contracting with NYTW (before she knew that she would be a statutory co-author), granted a copyright license for the use of her work in the not-for-profit production at "79 East 4th Street," such a use "may not exceed the specific purpose for which permission was granted." Gilliam v. American Broadcasting Cos., Inc., 538 F.2d 14, 20 (2d Cir. 1976). Even in the situations where Broadway and other theater producers have been profiting from Thomson's material in arguably the same kind of media as the originally intended use, i.e. a stage production, but in a venue ten times as large and for a commercial rather than a non-profit purpose, this may well constitute infringement, because it "exceed[s] the specific purpose for which permission [allegedly] was granted." Gilliam, supra. It is clear that a specific purpose can be exceeded even where the medium remains the same. Oddo v. Ries, 743 F.2d 630, 632, 634 (9th Cir. 1984) (author/deliverer of book manuscript did not impliedly allow recipient to use contents in
any work derived from book manuscript, such that even publication of derivative book was infringement).
In Pinkham v. Sara Lee Corp., 983 F.2d 824 (8th Cir. 1992), to cite another example, where a plaintiff provided the defendants with printing film which they needed to publish and distribute a test market run of 13,000 copies of her book, the Court held that her "delivery of the film creates no inference of any authorization other than that of the initial test market." Id. at 832-33. The Court so held, despite the fact that the plaintiff was told in advance that "the deal could result in the sale of millions of copies of her book," and despite the fact that she "certainly [did] not dispute that she knew [that a larger print run and distribution] was a possibility or that she desired such an outcome." Id. at 827, 831. After the defendants printed and sold "approximately 300,000 additional copies of [the plaintiff's] book," the Court found that they had exceeded their license, and it upheld summary judgment for the plaintiff in her copyright infringement claim, notwithstanding the fact that the alleged infringement was in the same media as the licensed use. Id. at 826.
Accordingly, in the case here, even if it is argued that the not-for-profit NYTW production was merely a "test run" in hopeful anticipation of the extremely remote possibility that the play would move to Broadway (contrary to the evidence that neither NYTW nor Larson or Thomson expected such a move (e.g., T180-81; T578-79)), and even if it is argued that Thomson licensed the use of her material for that production with knowledge of that fact (again, without any evidence of this on the record), this in no way constitutes a copyright license for the exploitation of her material at any location other than NYTW.
The Larson Heirs' reliance upon the Ninth Circuit decision in Effects, supra, 908 F.2d 555, is misplaced. In that case, the Court's finding of a license was based upon (a) multiple express statements by the licensor, including the language of its copyright registration certificate, the sworn testimony of its President, and a written letter agreement, all in which the licensor unequivocally stated that the film footage in question could be used in the particular film distribution at issue, and (b) "the fact that [the licensee] paid [the licensor] almost $56,000 for this footage." Id. at 558 n.6, 559. The Court never found any license which would allow the licensee to use the footage in any other manner or media, or in any context not expressly agreed to by the licensor.
In the case here, Thomson never agreed to any license for use of her material other than arguably for the non-profit production at "79 East 4th Street." Moreover, she was paid only $2000 by NYTW, solely for her work with Larson in connection with the non-profit production (A11; E303), she was paid nothing for any right to market her copyrightable contributions, and she was paid nothing at all by Larson. (E303)
Any license argument in this case therefore is barred not only by the express limitations contained in the only contract which Thomson ever signed regarding her work with Larson, but also by the legal rule, as stated by Professor Nimmer, that "nonexclusive licenses are revocable absent consideration." M. & D. Nimmer, Nimmer On Copyright, § 10.02[B][5] (citing, Avtec Sys., Inc. v. Peiffer, 21 F.3d 568, 574 n.12 (4th Cir. 1994); I.A.E., Inc. v. Shaver, 74 F.3d 768, 772 (7th Cir. 1996); Johnson v. Jones, 885 F. Supp. 1008, 1012 n.6 (E.D. Mich. 1995)); Keane Dealer Services, Inc. v. Harts, 968 F. Supp 944, 947 (S.D.N.Y. 1997).
In the case here, we understand that although Thomson maintains that there was no license in the first place, she alternatively has made her revocation of any such license clear and in writing. Such a revocation is allowed not only by law, but by the terms of her contract with NYTW, which state that "[t]his agreement may be terminated by either party upon two weeks written notice." (E626)
In the only other case cited by the Larson Heirs on this point, Pamiloff v. Giant Records, Inc., 794 F. Supp. 933 (N.D. Calif. 1992), once again there was no finding of any implied license to use the material in question for any purpose not agreed to by the parties, and the implied license which the Court did find was granted in exchange for "royalty payments."
Id. at 934. For the reasons stated above, the Pamiloff holding therefore cannot have any application to the facts here.
CONCLUSION
Regardless of whether Thomson is declared a statutory co-author of the New Version of Rent -- a reasonable outcome which would entitle her to a portion of the authors' share of royalties with respect to the new material added to this derivative work -- or whether she is the sole author of her own copyrightable material and is thereby entitled to require any user of such material to pay her a license fee, she must, under the law of copyrights, have some rights in Rent, the work which, as even the District Court recognizes, she co-created with Larson. Any other result would be contrary to both the spirit and the letter of the Copyright Act.
The amici accordingly urge that this Court issue a judgment declaring Thomson to be a statutory co-author of the New Version of Rent, or in the alternative, declaring her to be the exclusive owner of the copyrights to the material which she added to Rent, and declaring that such copyrights have not been licensed for any other use than the non-profit, Off-Broadway use which was the only use originally intended.
Dated: New York, New York
December 17, 1997
Respectfully submitted,
CAVALLO & WOLFF
By: _______________________
Nancy E. Wolff (NW7805)
115 East 57th Street
New York, New York 10022
(212) 753-2224
Attorneys for Amici Curiae
The National Writers Union
and Literary Managers and
Dramaturgs of the Americas
Of Counsel:
Jordan Rossen
Peggy Marks
Footnotes:
1. It should be noted further that other than an argument of joint authorship between Thomson and Larson, there would be no defense to an infringement suit brought by Thomson. As discussed in Point II, infra, there can be no finding of a copyright license by Thomson. An infringement action also would not be time-barred, since the Copyright Act allows such suits to be brought within three years. 17 U.S.C. § 507(b). The doctrines of laches, ratification, and equitable estoppel also would not apply, because as the District Court found, Thomson thus far has believed "in good faith" that she is a statutory joint author (A16), and statutory joint authors have no right to bring such a suit when one of them has licensed the alleged use. M. & D. Nimmer, Nimmer On Copyright §§ 6.01-02, 6.10 (1997); Lottie Joplin Thomas Trust v. Crown Publishers, Inc., 592 F.2d 651, 655 n.4 (2d Cir. 1978) (delay excused where it previously had been "reasonable to assume" that litigation would not be worthwhile); Hampton v. Paramount Pictures Corp., 279 F.2d 100, 104-05 (9th Cir.) (mere "lack of action" does not amount to abandonment of copyrights -- 25-year delay allowed where infringement ongoing), cert. denied, 364 U.S. 882 (1960); Stewart v. Adidas A.G., 1997 U.S. Dist. LEXIS 1456 (S.D.N.Y. 1997) (for laches, delay must be "unreasonable and inexcusable" -- estoppel in New York requires finding that plaintiff "made a false representation or concealed material facts"); Living Media India Ltd. v. Parekh, 1994 U.S. Dist. LEXIS 2111 (S.D.N.Y. 1994) (laches not a defense so long as relief sought within 3-year limitation period). Furthermore, the doctrine of res judicata or "claim preclusion" would have no applicability to the Broadway producers, motion picture companies, book publishers, and/or record companies which presumably would be named as defendants, because none of them were defendants in the first action brought by Thomson for a declaration of joint authorship. Stone v. Williams, 970 F.2d 1043, 1054 (2d Cir. 1992), cert. denied, 508 U.S. 906 (1993); Jerry Vogel Music Co. v. Edward B. Marks Music Corp., 1985 U.S. Dist. LEXIS 14636 (S.D.N.Y. 1987) (Haight, J.) (infringement claim against licensee is not barred by previous resolution of related claims against licensor). Nor could such defendants assert a defense of "innocence" on the part of themselves or "apparent authority" on the part of Larson or any other purported licensor, because such defenses are not applicable to copyright infringement actions. Fitzgerald Publishing Co. v. Baylor Publishing Co., 807 F.2d 1110 (2d Cir. 1986) ("reliance -- justified or otherwise -- is irrelevant in determining whether [the defendant] infringed [the plaintiff's] copyrights").