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Intellectual Property Enterprise Court
You are here: BAILII >> Databases >> Intellectual Property Enterprise Court >> Martin & Anor v Kogan & Ors  EWHC 2927 (IPEC) (22 November 2017)
Cite as:  EWHC 2927 (IPEC)
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BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY ENTERPRISE COURT
Fetter Lane, London, EC4A 1NL
B e f o r e :
| NICHOLAS MARTIN
BIG HAT STORIES LIMITED
|- and -
- and -
(1) FLORENCE FILM LIMITED
(2) PATHÉ PRODUCTIONS LIMITED
(3) QWERTY FILMS LIMITED
|Defendant/Part 20 Claimant
Part 20 Defendants
Simon Malynicz QC and Ashton Chantrielle (instructed by Keystone Law) for the Defendant/Part 20 Claimant
Jonathan Hill (instructed by Wiggin LLP) for the Part 20 Defendants
Hearing dates: 10-11 October 2017
Crown Copyright ©
Judge Hacon :
(1) What was the nature and extent of Ms Kogan's contribution to the writing of the Screenplay?
(2) Did that contribution make the Screenplay a 'work of joint authorship' within the meaning of s.10(1) of the Copyright, Designs and Patents Act 1988 ("the Act") and qualify Ms Kogan to be joint author with Mr Martin?
(3) Did any act or statement by Ms Kogan, or lack of the same, provide the Part 20 Defendants with a defence of acquiescence or estoppel?
Ms Kogan's case
The law on joint authorship
"(1) In this part a 'work of joint authorship' means a work produced by the collaboration of two or more authors in which the contribution of each author is not distinct from that of the other author or authors."
"(3) For the purposes of this Act, 'a work of joint authorship' means a work produced by the collaboration of two or more authors in which the contribution of one author is not distinct from the contribution of the other author or authors."
"Could the additions so made constitute him a joint author with Wilks of the whole piece? There may, no doubt, be a plurality of authors: the statute, in s.1, dealing with the duration of copyright, speaks of "the author or authors, or the survivor of the authors." But I fail to discover any evidence that there was any co-operation of the two in the design of this piece, or in its execution, or in any improvements either in the plot or the general structure. All the plaintiff claims to have done is to vary some of the dialogue, so as to make it more suitable for his company or for his audience. If the plaintiff and the author had agreed together to rearrange the plot, and so to produce a more attractive piece out of the original materials, possibly that might have made them joint authors of the whole. So, if two persons undertake jointly to write a play, agreeing in the general outline and design, and sharing the labour of working it out, each would be contributing to the whole production, and they might be said to be joint authors of it. But, to constitute joint authorship, there must be a common design."
"It is, no doubt, difficult to draw the line: but it never could be suggested that, when an author submits his manuscript to a friend, and the friend makes alterations and improvements, the latter would thereby become a joint author of the work. If, when the piece was brought to the plaintiff, he had said to Wilks, 'This thing requires to be remodeled, and you and I will do it together,' and Wilks had assented, possibly a case of joint authorship might have been set up. But the evidence here falls very short of that."
The ultimate arbiter test
The case law on sufficient contribution
"I have said that Mr. Donaldson quite frankly accepted that he had not had great experience in the field of the theatre. He made it quite plain that, in writing this play, he was indebted to Mr. Wiseman not only for many hints of stagecraft, but also for a great deal of constructive criticism. Mr. Wiseman, Mr. Donaldson told me, was a useful critic, able to say pertinent things about how plays should be written; but, says Mr. Donaldson, he certainly did not write the play."
"A joint author must participate in the writing and share responsibility for the form of expression in the literary work. He must accordingly do more than contribute ideas to an author: he must be an author (or creator) of the work in question.
There is no reason why penmanship should be insisted on any more in case of joint authors than in the case of a sole author, who may dictate his work to a scribe. But in my judgment what is required is something which approximates to penmanship. What is essential is a direct responsibility for what actually appears on the paper." (at 636)
"In my view, to have regard merely to who pushed the pen is too narrow a view of authorship. What is protected by copyright in a drawing or a literary work is more than just the skill of making marks on paper or some other medium. It is both the words or lines and the skill and effort involved in creating, selecting or gathering together the detailed concepts, data or emotions which those words or lines have fixed in some tangible form which is protected. It is wrong to think that only the person who carries out the mechanical act of fixation is an author. There may well be skill and expertise in drawing clearly and well but that does not mean that it is only that skill and expertise which is relevant. As Mr Howe has said, where two or more people collaborate in the creation of a work and each contributes a significant part of the skill and labour protected by the copyright, then they are joint authors" (at 835-6).
"As it appears to me, the architects in that case were in large part acting as 'scribes' for the director. In practice such a situation is likely to be exceptional." (at 636)
A multi-purpose test
(1) whether what has been copied from a copyright work is a 'substantial part', thus giving rise to infringement of the copyright if the copying was done by an unlicensed party;
(2) whether a modification made by a person to an earlier work is sufficient for new copyright to arise in the modified work, and
(3) whether a contribution by a person to the creation of a copyright work in the course of collaboration with one or more others is sufficient to qualify the person as a joint author of the work.
Types of contribution to a copyright work
Summary of the law
(1) A party will be joint owner of the copyright in a work only if he or she (or in the case of a company, its employees) collaborated in the creation of the work. The collaboration must be by way of a common design, i.e. co-operative acts by the authors, at the time the copyright work in issue was created, which led to its creation.
(2) The contribution of each author must not be distinct from that of the other author or authors.
(3) Contributions by a putative joint author (including those done by way of collaboration) which formed no part of the creation of the work are to be disregarded in the assessment of joint authorship.
(4) No distinction is to be drawn between types of contribution that did form part of the creation of the work. In particular, there is no distinction which depends on the kind of skill involved in making the contribution.
(5) The contribution, assuming it is relevant to the assessment of joint authorship, must be sufficient. This depends on whether the contribution constitutes a substantial part of the whole of the work in issue.
(6) That will be the case if the contribution would be protected by copyright in the work. Thus, if the contribution alone were copied by an unlicensed third party and such copying would result in an infringement of the copyright, the contribution constitutes a substantial part of the whole.
(7) The test of substantiality in the context of joint authorship of copyright, as in the context of infringement, involves a qualitative as well as quantitative assessment.
(8) Suggestions from a putative joint author as to how the main author should exercise his or her skill – for instance by way of criticism or editing of a literary work – will not lead to joint authorship where the main author has the final decision as to the form and content of the work.
(9) It is thus relevant, but not decisive, whether an author is the ultimate arbiter as to the content of the work.
(10) If joint authorship is established, the court may apportion ownership of the copyright.
Burden of proof
"104. (1) The following presumptions apply in proceedings brought by virtue of this Chapter with respect to a literary, dramatic, musical or artistic work.
(2) Where a name purporting to be that of the author appeared on copies of the work as published or on the work when it was made, the person whose name appeared shall be presumed, until the contrary is proved—
(a) to be the author of the work;
(b) to have made it in circumstances not falling within section 11(2), 163, 165 or 168 (works produced in course of employment, Crown copyright, Parliamentary copyright or copyright of certain international organisations).
(3) In the case of a work alleged to be a work of joint authorship, subsection (2) applies in relation to each person alleged to be one of the authors."
The reliability of recollection
"Evidence based on recollection
 An obvious difficulty which affects allegations and oral evidence based on recollection of events which occurred several years ago is the unreliability of human memory.
 While everyone knows that memory is fallible, I do not believe that the legal system has sufficiently absorbed the lessons of a century of psychological research into the nature of memory and the unreliability of eyewitness testimony. One of the most important lessons of such research is that in everyday life we are not aware of the extent to which our own and other people's memories are unreliable and believe our memories to be more faithful than they are. Two common (and related) errors are to suppose: (1) that the stronger and more vivid is our feeling or experience of recollection, the more likely the recollection is to be accurate; and (2) that the more confident another person is in their recollection, the more likely their recollection is to be accurate.
 Underlying both these errors is a faulty model of memory as a mental record which is fixed at the time of experience of an event and then fades (more or less slowly) over time. In fact, psychological research has demonstrated that memories are fluid and malleable, being constantly rewritten whenever they are retrieved. This is true even of so-called 'flashbulb' memories, that is memories of experiencing or learning of a particularly shocking or traumatic event. (The very description 'flashbulb' memory is in fact misleading, reflecting as it does the misconception that memory operates like a camera or other device that makes a fixed record of an experience.) External information can intrude into a witness's memory, as can his or her own thoughts and beliefs, and both can cause dramatic changes in recollection. Events can come to be recalled as memories which did not happen at all or which happened to someone else (referred to in the literature as a failure of source memory).
 Memory is especially unreliable when it comes to recalling past beliefs. Our memories of past beliefs are revised to make them more consistent with our present beliefs. Studies have also shown that memory is particularly vulnerable to interference and alteration when a person is presented with new information or suggestions about an event in circumstances where his or her memory of it is already weak due to the passage of time.
 The process of civil litigation itself subjects the memories of witnesses to powerful biases. The nature of litigation is such that witnesses often have a stake in a particular version of events. This is obvious where the witness is a party or has a tie of loyalty (such as an employment relationship) to a party to the proceedings. Other, more subtle influences include allegiances created by the process of preparing a witness statement and of coming to court to give evidence for one side in the dispute. A desire to assist, or at least not to prejudice, the party who has called the witness or that party's lawyers, as well as a natural desire to give a good impression in a public forum, can be significant motivating forces.
 Considerable interference with memory is also introduced in civil litigation by the procedure of preparing for trial. A witness is asked to make a statement, often (as in the present case) when a long time has already elapsed since the relevant events. The statement is usually drafted for the witness by a lawyer who is inevitably conscious of the significance for the issues in the case of what the witness does nor does not say. The statement is made after the witness's memory has been "refreshed" by reading documents. The documents considered often include statements of case and other argumentative material as well as documents which the witness did not see at the time or which came into existence after the events which he or she is being asked to recall. The statement may go through several iterations before it is finalised. Then, usually months later, the witness will be asked to re-read his or her statement and review documents again before giving evidence in court. The effect of this process is to establish in the mind of the witness the matters recorded in his or her own statement and other written material, whether they be true or false, and to cause the witness's memory of events to be based increasingly on this material and later interpretations of it rather than on the original experience of the events.
 It is not uncommon (and the present case was no exception) for witnesses to be asked in cross-examination if they understand the difference between recollection and reconstruction or whether their evidence is a genuine recollection or a reconstruction of events. Such questions are misguided in at least two ways. First, they erroneously presuppose that there is a clear distinction between recollection and reconstruction, when all remembering of distant events involves reconstructive processes. Second, such questions disregard the fact that such processes are largely unconscious and that the strength, vividness and apparent authenticity of memories is not a reliable measure of their truth.
 In the light of these considerations, the best approach for a judge to adopt in the trial of a commercial case is, in my view, to place little if any reliance at all on witnesses' recollections of what was said in meetings and conversations, and to base factual findings on inferences drawn from the documentary evidence and known or probable facts. This does not mean that oral testimony serves no useful purpose – though its utility is often disproportionate to its length. But its value lies largely, as I see it, in the opportunity which cross-examination affords to subject the documentary record to critical scrutiny and to gauge the personality, motivations and working practices of a witness, rather than in testimony of what the witness recalls of particular conversations and events. Above all, it is important to avoid the fallacy of supposing that, because a witness has confidence in his or her recollection and is honest, evidence based on that recollection provides any reliable guide to the truth."
" A long list of cases was cited by counsel for Mr Blue showing that my observations in the Gestmin case about the unreliability of memory evidence have commended themselves to a number of other judges. In some of these cases they were also supported by the evidence of psychologists or psychiatrists who were expert witnesses: see e.g. AB v Catholic Child Welfare Society  EWHC 3334 (QB), paras 23-24, and related cases. My observations have also been specifically endorsed by two academic psychologists in a published paper: see Howe and Knott, " The fallibility of memory in judicial processes: Lessons from the past and their modern consequences " (2015) Memory, 23, 633 at 651-3. In the introduction to that paper the authors also summarised succinctly the scientific reasons why memory does not provide a veridical representation of events as experienced. They explained:
"… what gets encoded into memory is determined by what a person attends to, what they already have stored in memory, their expectations, needs and emotional state. This information is subsequently integrated (consolidated) with other information that has already been stored in a person's long-term, autobiographical memory. What gets retrieved later from that memory is determined by that same multitude of factors that contributed to encoding as well as what drives the recollection of the event. Specifically, what gets retold about an experience depends on whom one is talking to and what the purpose is of remembering that particular event (e.g., telling a friend, relaying an experience to a therapist, telling the police about an event). Moreover, what gets remembered is reconstructed from the remnants of what was originally stored; that is, what we remember is constructed from whatever remains in memory following any forgetting or interference from new experiences that may have occurred across the interval between storing and retrieving a particular experience. Because the contents of our memories for experiences involve the active manipulation (during encoding), integration with pre-existing information (during consolidation), and reconstruction (during retrieval) of that information, memory is, by definition, fallible at best and unreliable at worst."
 In addition to the points that I noted in the Gestmin case, two other findings of psychological research seem to me of assistance in the present case. First, numerous experiments have shown that, when new information is encoded which is related to the self, subsequent memory for that information is improved compared with the encoding of other information. Second, there is a powerful tendency for people to remember past events concerning themselves in a self-enhancing light."
The six contributions relied on by Ms Kogan
(1) Lily Pons and the Bell Song
(2) McMoon's audition
(3) The rehearsal scene
(4) Scene in the lift
(5) Further rehearsal scenes
(6) Melotone Records scenes
Ms Kogan's contributions to the text
"2.2 Dialogue which was written solely by me. Some of the dialogue was written solely by me. This is mainly musical jargon or mumbo-jumbo which I had heard during my career in music. As I explained in my witness statement, Nick had no musical training [and] did not have any idea of the expressions that singers would use. I was able to bring this to the collaboration."
(1) After Mr Martin had prepared his first thoughts on the Florence project in March 2012, he sent a 'story outline' to Ms Kogan, who was then in the United States. He asked for Ms Kogan's input in an email dated 28 March 2012 and referred to her as his 'special collaborator'.
(2) On 2 April 2012 Ms Kogan sent Mr Martin an email saying "It is such fun for me to work on these things with you. I hope we'll get to do much more…"
(1) By the time of the Florence project Mr Martin was a screenwriter of some standing, having written several screenplays for TV drama shows. Ms Kogan was an operatic singer by training and profession. She had written magazine articles and children's books, but claimed no experience of screenwriting before she met Mr Martin.
(2) In July 2012 Ms Kogan had suggested that she and Mr Martin should jointly write a script for a different project. Mr Martin reacted badly to the suggestion and told Ms Kogan that he always worked alone. Despite his being in a romantic relationship with Ms Kogan, there was no evidence that he changed his mind about this, aside from Ms Kogan's assertions that he had.
(3) Mr Martin was the ultimate arbiter of what went into the screenplay drafts.
(4) Emails at the time the story outlines were being written (i.e. before the first draft of the screenplay) indicate that Ms Kogan was making typographical corrections and other comments of a proof-reading kind, but nothing more substantial. An email dated 31 March 2012 from Ms Kogan is typical in this regard. It also includes this:"Of course, please ignore whatever you please of what I say, this is totally your baby."
(5) Mr Martin started work on the first draft of the screenplay in February 2013 while Ms Kogan was in France. It was completed in early April. Ms Kogan wrote an entry in her diary on 3 April 2013:"N finishes Flo."
(6) The second draft was completed on 19 June 2013. Mr Martin emailed a copy to Ms Kogan on 21 June 2013. Ms Kogan replied on 23 June 2013:"…you have done it – you have accomplished the great task of creating something truly important. … All the more so because you have written Florence under so much pressure, in such difficult circumstances. … Making something from nothing but your own talent is a value in itself. To create in a near vacuum is the real thing."
(7) Mr Martin went to Los Angeles in July 2013 where he met people in the Hollywood film industry with whom he reviewed the Florence project, in particular Ben Lewin, a director, producer and writer of screenplays and Mr Lewin's wife, Judi Levine. Their son carried out some research for the project. In an exchange of texts on 27 July 2013 Ms Kogan advised:"You must protect your position as the writer."
(8) After Mr Martin had returned to London, work was done on the third draft. Mr Martin was concerned that Mr Lewin and Ms Levine would claim a share of the authorship, making it difficult for him to claim sole authorship when selling the project to finance companies. To neutralise the difficulty, he decided to offer them part of his writing income. 15% was later agreed. In an email to Ms Kogan dated 23 January 2014 Mr Martin discussed this – he called it "the Ben and Judi problem" – and asked her what she thought about offering part of his income. On the same day Ms Kogan replied "It makes sense…". On 5 March 2014 Mr Martin's company, the Second Claimant, signed an agreement with Qwerty, the third Part 20 Defendant, for the financing of the Film. It included a warranty that Mr Martin was sole writer of the script. Throughout this Ms Kogan did not suggest that she should be given a share of the income. It was not raised until 8 April 2014, following a therapy session attended by Ms Kogan and Mr Martin in an attempt to save what had by then become a difficult relationship.
(9) Ms Kogan knew that Mr Martin had registered the first three drafts of the screenplay with the Writers' Guild of America with Mr Martin listed as sole author. She raised no objection.
(1) using Lilly Pons as a character in the Film and using the Bell Song;
(2) using The Swan in McMoon's audition scene;
(3) having Florence visit Melotone Records.
Whether Ms Kogan's contributions were sufficient
Acquiescence and estoppel
" Fourthly, in so far as the respondents' argument is put on the basis of estoppel, they would have to establish that it would be in some way unconscionable for Mr Fisher now to insist on his share of the musical copyright in the work being recognised. As Robert Walker LJ said in Gillett v Holt  Ch 210, 225d, "the fundamental principle that equity is concerned to prevent unconscionable conduct permeates all the elements of the doctrine" of estoppel. Given that their case at each of the three stages is based on the fact that Mr Fisher did not raise his entitlement to such a share, one would expect the respondents to succeed in estoppel only if they could show that they reasonably relied on his having no such claim, that they acted on that reliance, and that it would be unfairly to their detriment if he was now permitted to raise or to enforce such a claim. As was also said in Gillett v Holt  Ch 210, 232d, the "overwhelming weight of authority shows that detriment is required" although the "requirement must be approached as part of a broad inquiry" into unconscionability."