1709 Blog: for all the copyright community

Monday, 12 November 2012

Assignment of copyright: "done… thanks!"

A quick post on assignment of copyright further to the decision in MVP Entertainment, Inc.,
v Mark Frost which was handed down in the Court of Appeal of California last week.

In this case Frost wrote a book called "The Match: The Daythe Game of Golf Changed Forever". Copyright in the book was assigned to Good Comma Ink, of which Frost was the sole owner, however a company called MVP was interested in acquiring rights in the book to make it into a film.
© kulicki
In late 2008 and early 2009, the parties' lawyers corresponded about MVP's potential purchase of copyright in the book and on 30 April 2009 MVP's lawyer sent Frost's lawyer an email proposing certain terms and saying: "Let me know if this is okay and we'll send paperwork . . . .". Frost's lawyer, Mr Wertheimer replied saying: "done . . . thanks! Werth." On the face of it this seems an ambiguous email, however the parties proceeded: in May MVP's laywer sent Wertheimer an agreement which he wanted to have signed by 17 or 18 August, however no formal agreement was signed.

At some point in the summer of 2009, Frost met with the president of MVP and shortly afterwards told him he did not want MVP to make his book into a film. This caused MVP to sue Frost for breach of contract, promissory estoppel, declaratory relief, and negligent misrepresentation. MVP's overarching claim was that the parties entered a contract or promised MVP they would enter into a contract to allow MVP to make a film of Frost's book. Essentially they were arguing that Wertheimer's email saying "done . . . thanks! Werth" was signed by Wertheimer and created a binding contract. This may seem a far reaching claim, so readers will not be surprised by the court's decision.
Wertheimer's response to the claim was that his email "was intended to simply note that the parties were in accord on the broad economic terms of a deal" and that by signing off as "Werth" he had not intended to sign a contract or to bind himself or Frost to anything. Frost added that although Wertheimer negotiated deals on his behalf, he never signed contracts for him and that in this instance Frost had not given Wertheimer the authority to assign copyright in his book.
In the US, as in the UK, assignment of copyright must be done in writing and must be signed (s.204(a) of the US Copyright Act and s.90(3) CDPA 1988).
At first instance the trial court granted summary judgment concluding that a transfer of ownership was invalid unless signed by the owner or the owner's duly authorized agent. The court further concluded that even if express authority were not required, Frost had done nothing to suggest that Wertheimer had authority to transfer the property.
MVP appealed this decision saying that Wertheimer had actual or ostensible authority to enter into the alleged contract. The Court of Appeal held that it was undisputed that Wertheimer did not have actual authority to transfer the copyright in the book, and it was actual rather than ostensible authority that was required under the US Copyright Act. Because MVP failed to raise a triable issue of fact showing that Wertheimer was Frost's duly authorized agent, its remaining arguments could not defeat summary judgment.
This is a simple case which serves to remind us that although assignment of copyright is very straightforward in the US and the UK, it pays to get it right: assignment needs to be signed by or on behalf of the owner of the copyright and it needs to be done in writing. Also additional requirements may apply in other jurisdictions and there may also be more fundamental differences to consider. In Germany, for example, copyright cannot be assigned but can be bequeathed, and in France future copyright cannot be assigned.

1 comment:

Anonymous said...

I think that the Defendant's name is confusing with that of Merck Frosst.