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Oh, Mickey, No Joint Author

Posted by James Juo | May 27, 2022 | 0 Comments

Under the Copyright Act, a “‘joint work' is 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. An “author” is “the party who actually creates the work, that is, the person who translates an idea into a fixed, tangible expression entitled to copyright protection.” Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730, 737 (1989).

The Ninth Circuit in Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 2000), explained that an author is someone “to whom the work owes its origin and who superintended the whole work, the ‘master mind' . . . someone who has artistic control,” and set forth three factors for determining whether a work is jointly authored.

  • “First, an author ‘superintend[s]' the work by exercising control.” Id. at 1234 (quoting Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 61 (1884)).
  • “Second, putative coauthors make objective manifestations of a shared intent to be coauthors . . . .” Id.
  • “Third, the audience appeal of the work turns on both contributions and ‘the share of each in its success cannot be appraised.'” Id. (quoting Edward B. Marks Music Corp. v. Jerry Vogel Music Co., 140 F.2d 266, 267 (2d Cir.), modified by 140 F.2d 268 (2d Cir. 1944)).

Toni Basil's “Mickey”

Recently, in Stillwater Ltd. v. Basilotta, No. 21-55241 (9th Cir. May 11, 2022), the Ninth Circuit held that singer Antonia Basilotta (AKA, Toni Basil) was the sole author of the sound recording of “Mickey,” which was a hit song in 1982 at the dawn of MTV.

In 2013, Toni Basil filed a termination notice, effective June 2016, to reclaim copyright ownership of her sound recordings, which she earlier had assigned to her record label. Under the Copyright Act, an author can terminate an assignment, and reclaim the copyright, after 35 years (but this does not apply to a “work-for-hire” because the employer is deemed to be the author in that situation).

Exercising Control

Stillwater argued that the recordings were a “joint work” under the Copyright Act because Mathieson, a producer, had “exercised control” over the song and was a co-author with Ms. Basil. If so, then her share of the copyrights in the recordings would be limited to being a joint author rather than the sole author and owner of the copyright.

A person exercising control is “likely [to] be a person ‘who has actually formed the [work] by putting the persons in position, and arranging the place where the people are to be—the man who is the effective cause of that,' or ‘the inventive or master mind' who ‘creates, or gives effect to the idea.'” Aalmuhammed, 202 F.3d at 1234 (quoting Burrow-Giles, 111 U.S. at 61).

Mathieson did not testify at trial or provide any written testimony. Instead, a witness who only occasionally witnessed Mathieson performing his role as a producer, provided a vague description of Mathieson's role as a producer. The Court found it “inadequate to prove that Mathieson was a creative mastermind behind the recordings rather than someone who was, for instance, mixing the tapes largely at Basilotta's direction consistent with her creative vision.”

On the other hand, the Court found that Toni Basil was the one who primarily wielded creative control, “selecting songs and instrumental musicians, devising the creative concepts for recordings, and even helping Mathieson mix the master tapes.”

Objective Manifestation

Mathieson signed agreements with the recording company “that any copyright interests to which Mathieson might be entitled were to be transferred to the company and that he was to be paid royalties based on the recordings' sales,” which Stillwell argued was an objective manifestation that Mathieson would be a co-author under the second factor.

But the producer agreements are between the recording company and Mathieson, and not between the alleged coauthors here—that is, Basilotta and Mathieson. They are therefore not evidence of any understanding between Basilotta and Mathieson. In addition, it is telling here that Stillwater's own witness, the head of the recording company, testified that the notion of “joint authors” never crossed his mind when he signed Basilotta as a recording artist.

Audience Appeal

For the third factor, whether “the audience appeal of the work” can be attributed to both alleged authors, and whether “the share of each in its success cannot be appraised,” the Court found that the evidence suggests that the “audience appeal” of the recordings was predicated more on Toni Basil's performance than on anyone else's, and the audience appeal of the record album was likely tied to her performance in the accompanying cheerleader-inspired video.

In addition, Stillwater further argued that “the relationship between a producer and performer of a sound recording is a traditional form of collaboration in which the producer is generally considered a joint author so long as the producer completes his or her traditional duties.” But it was “undisputed that Mathieson was an inexperienced producer.” Even if there was some presumption of joint authorship for traditional producers, “Stillwater has not adequately shown that Mathieson is entitled to any sort of presumption of joint authorship.”

Accordingly, the Court concluded that Stillwater has failed to prove that Mathieson was a co-author of Toni Basil's “Mickey” song recording.

The copyright attorneys at Thomas P. Howard, LLC can evaluate copyright issues including infringement and ownership.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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