‘Leave all love and 'ope behind, out of sight is out of mind’

Authors: Alex Batteson and Ian Karet (Linklaters)

Citation: Journal of Intellectual Property Law 2009, doi:10.1093/jiplp/jpp173

Folding Attic Stairs Limited v The Loft Stairs Company Limited [2009] EWHC 1221 (Pat) 9 June 2009

The Patents Court (England and Wales) considered the terms ‘preset’ and ‘predetermined’ and interpreted the expression ‘made available to the public’ under Article 54 European Patent Convention (‘EPC’).

Legal Context

Construction of patent claims

In Kirin-Amgen Inc v Hoechst Marion Rousell Ltd [2004] UKHL 45, Lord Hoffmann said:
48. The Catnic principle of construction is therefore in my opinion precisely in accordance with the Protocol. It is intended to give the patentee the full extent, but not more than the full extent, of the monopoly which a reasonable person skilled in the art, reading the claims in context, would think he was intending to claim.
Anticipatory disclosures

Article 54 EPC states:
(1) An invention shall be considered to be new if it does not form part of the state of the art.
(2) The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application. ...

Folding Attic Stairs (FAS) owned a patent for a process for manufacturing a folding attic stairway. It sued The Loft Stairs Company and its owner for infringement; the defendants counterclaimed for revocation on the grounds of anticipation and obviousness.

The technology concerned stairways for accessing roof spaces or attics of buildings. In their simplest form, these stairways involve the insertion of a generally wooden and rectangular frame within an aperture or ‘ope’ created between the ceiling joists. The following example (not specifically cited as prior art in the proceedings) was employed by the deputy judge as an illustration:

The stairway is provided in three hinged sections. The uppermost is fixed to a trapdoor, being hinged to the frame and spring-biased towards it by means of folding metal support arms. When not required for use, the stairway is folded up and the metal arms force the folded stairway into a nesting position above the ope. The arms also act as a counterbalance when folding and unfolding the stairway.

The widths between ceiling joists, and therefore the ope widths that need to be accommodated, vary from building to building. Rather than manufacture the stairways with varying widths to fit each type of ope width that might be encountered, which would have been too expensive, the prior art settled on a standard width and adjusted for the difference by bending the metal support arms. A problem with the prior art was a limit to the width that could be tolerated by bending. If the ope width departed too far from the standard, the arms were unable to operate freely and more strain was applied to them, eventually leading to failure of the pivot joints. The patent sought to solve these problems as follows:

It introduced an ‘inner frame’ [in addition to the ‘outer frame’ (6) which remained inserted in the ope] and attached the metal support arms (19) to the long sides (or side beams) (14) of the inner frame rather than the top section of the stairway (30). Thus, the width of the inner frame could be varied during the course of manufacture to accommodate various ope widths by varying the length of the end beams (16, 17) of the inner frame. This avoided the need to bend the metal support arms. The key point was that the stairway could remain of standard width.

Claim 1 of the patent reads (emphases supplied by the deputy judge):
A manufacturing process for manufacturing a folding stairway comprising the steps:
forming a rectangular outer mounting frame for complementary engagement and mounting within an associated rectangular ceiling ope of a predetermined size, the outer frame having a pair of spaced-apart side members interconnected by end members extending between associated ends of the side members;
forming an inner stairway carrying frame for pivotally mounting on the outer frame for movement between a nesting position within the outer frame and a downwardly extending in-use position hanging downwardly from the outer frame, the inner frame having a pair of spaced-apart side beams interconnected by an associated pair of spaced-apart end beams, connecting the side beams to the end beams such that each side beam is spaced a preset distance inwardly of the side members of the outer frame when the inner frame is mounted within the outer frame in the nesting position;

preparing an extendable stairway which is foldable between a collapsed stored position for nesting within the outer frame and an extended in-use position;

mounting the inner frame within the outer frame by securing a hinge between an outer frame end member and an end beam of the inner frame thus pivotally mounting the inner frame on the outer frame;

mounting a folding support arm between each side beam on the inner frame and an associated side member on the outer frame, each arm being pivotally mounted on each frame and being foldable intermediate its ends between an extended position corresponding to the downwardly extending in-use position of the inner frame and a folded position corresponding to the nesting position of the inner frame,

each arm having bias means for urging the arm towards the folded position for retaining the inner frame in the nested position within the outer frame; and

mounting an inner end of the stairway between the end beams on the inner frame such that the stairway is foldable between the collapsed and extended positions when the inner frame is in the in-use position.

Claim construction

The deputy judge summarized the claim as follows (emphasis transposed from that applied to the full claim above): a manufacturing process for making folding stairways in which you
make an outer frame ‘for complementary engagement and mounting within’ a given ceiling ope,
make an inner frame (for carrying the stairway) by connecting side beams to end beams ‘such that each side beam is spaced a preset distance inwardly of the side members of the outer frame’,
make a foldable stairway that can nest within the outer frame,
hinge one end of the inner frame to one end of the outer frame,
mount spring-biased foldable support arms, one end pivoted to the side beam of the inner frame, the other end pivoted to the side beam of the outer frame, and
mount one end of the stairway between the end beams of the inner frame so that it can fold up in use.
The deputy judge held that a ceiling ope of a predetermined size meant the size of the given ope in which the stairway was to be fitted; effectively, an ope of a size predetermined by the house-builder. He distinguished Nikken Kosakusho Works v Pioneer Trading Company ([2005] EWCA Civ 906), in which Jacob LJ expressed surprise that the words ‘annular groove of predetermined depth’ could appear in a patent claim because the expression begged the question. He did not believe that Nikken criticized the use of the word ‘predetermined’ as such, not least because the words ‘predetermined’ and ‘preset’ very frequently appeared in granted patent claims. In Nikken, it was impossible, even following a reading of the patent as a whole, to deduce the purpose of having a groove of predetermined depth and according to which criterion the depth fell to be predetermined.

Spaced a preset distance meant that the separation between the side beams of the inner (14) and outer (6) frame, respectively, was chosen by the manufacturer (or one to whom he left the decision) with the aim of coping with various ope widths while avoiding excessive bending or cranking of the metal arms. Such a construction would be reasonably certain for third parties: a third party manufacturer would know whether he infringed the claim if he was presetting the distance between the respective side beams himself (in order not too bend the arms too much).

The judge rejected the idea that words of intent should not be used in patent claims. There was nothing in the EPC to support such a proposition. Moreover, the burden would be on the patentee, not the third party manufacturer, to prove the necessary intent. The deputy judge drew an analogy with so-called ‘Swiss-style’ claims in the form ‘use of a known ingredient X for making a medicine for treating disease Y’. He suggested that this really meant use of X with the intention of treating disease Y. If that was permissible in pharmaceutical cases, he saw no reason why it should not be in other industries.


FAS had invited an Irish Government Minister and a newspaper photographer to its factory in order to publicize a recently obtained business accreditation. The visit took place before the priority date of the patent. A prototype of the invention was on display in the factory on the day of the visit. A photographer took a photograph of the owner in front of the prototype; this was subsequently published in a newspaper, again before the priority date of the patent.

The deputy judge found as a fact that the photographer and Minister ‘could have gazed at all parts of the prototype’ if they had wanted to and were free to do so. The judge also found as a fact that no terms of confidentiality had been imposed on the photographer or the Minister, so that they ‘were free to impart to others whatever they did perceive and were able to recall’. However, it was relevant that there was no evidence that the photographer or Minister had in fact inspected the prototype ‘in any detailed sort of way’ and that it was unlikely that they would have had any interest or motivation to do so.

The publication of the photograph was not an anticipation as it did not depict the prototype in full. The question was what would the skilled person have discerned from the photograph. Given the problem addressed by the patent, the judge held that it was not only a patent for a process for manufacturing folding stairways but, based on a purposive construction, for doing so on a repeat basis. Thus, he identified the person skilled in the art as a manufacturing carpenter. It was necessary to avoid defining the common general knowledge to be attributed to that person too narrowly—there was no recognized profession of designing folding attic stairways. Thus, at the filing date, the skilled person would have been only vaguely aware of folding stairways in general terms; the common general knowledge did not include the prior art. The judge found that the photograph would not have divulged to such a skilled person the need to vary the width of the inner frame in accordance with that of the outer frame. He also held that the disclosure of the prototype to the Minister and photographer did not anticipate the claim. This was because the prototype product could not have anticipated a claim to a manufacturing process since it could not have disclosed to the skilled person the need to vary the side beam spacings.

The judge accepted that if the prototype had been in a public place, for example, a street, where anyone might have stopped to examine it, its design would have been deemed to have been made available to the public. However, the judge decided that the prototype was not in a public place at all. It was relevant that it was available for viewing only by a small and defined class, which was uninterested in manufacturing attic stairs or, moreover, the existence of the prototype (Lux Traffic Controls v Pike Signals [1993] RPC 107 distinguished). If information that is available for viewing in private premises by a small and defined class of visitors is to become part of the state of the art, that information must actually be imparted to at least one human mind which is free in law to divulge it to anyone else. It was not enough that it could have been imparted but was not. There was no irrebuttable presumption that information capable of being perceived by persons on private premises was in fact perceived by them, if the circumstances were such as to make it unlikely that those persons were interested in the subject matter. That would amount to an unnecessary legal fiction. On the facts, the judge found that it was unlikely that either the photographer or Minister would have been able to recall the spaced side beams of the prototype.

Practical Significance

The deputy judge seems to have found it important that the disclosure was on private premises. However, it is not clear how this decision fits with previous decisions. In Lux, Aldous J. said: ‘... it is settled law that there is no need to prove that anybody actually saw the disclosure provided the relevant disclosure was in public’. In G01/92 Availability to the Public [1993] EPOR 241 at 243–244, the Enlarged Board said:
‘There is no support in the EPC for the additional requirement ... that the public should have particular reasons for analysing a product put on the market, in order to identify its composition or internal structure. According to Article 54(2) EPC the state of the art shall be held to comprise everything made available to the public. It is the fact that direct and unambiguous access to some particular information is possible, which makes the latter available, whether or not there is any reason for looking for it. ... The introduction of such an additional requirement would remove a commercially available and reproducible product from the public domain. It would mean an unfounded deviation from the principles applied in respect of the other sources of the state of the art as defined in Article 54(2) EPC and it would obviously represent an element of subjectivity leading to uncertainty in applying the concept of novelty as defined in this Article’.
If correct, this decision appears to introduce state of mind as an element in the question of novelty, which may lead to uncertainty. However, the facts are unusual and cases like this should be infrequent.

Bavaria and Bayerisches Bier may co-exist

Authors: Paul Reeskamp and Eva den Ouden (Allen & Overy LLP, Amsterdam)

Citation: Journal of Intellectual Property Law & Practice, doi:10.1093/jiplp/jpp180

Bavaria NV and Bavaria Italia Srl v Bayerischer Brauerbund eV, Case C-343/07, Court of Justice of the European Communities, 2 July 2009

Bavaria NV is allowed to use its pre-existing trade marks containing the element ‘Bavaria’ and co-exist with the geographical indication ‘Bayerisches Bier’, provided that those trade marks do not infringe the geographical indication, are registered in good faith and are not subject to any grounds of invalidity or revocation provided for by harmonized European trade mark law.

Legal Context

On 14 July 1992, the European Commission adopted Council Regulation 2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs (the ‘GI Regulation’). To be protected under this regulation, an agricultural product or foodstuff must comply with certain specifications as specified in Article 4, evidence that the agricultural product originated in the geographical area details bearing out the link with the geographical environment etc. According to the simplified procedure of Article 17, Member States should have notified the commission, within 6 months of the entry into force of that Regulation, which of their legally protected names or, in those Member States where there is no protection system, which of their names established by usage, they wish to register under that Regulation.

The German authorities notified the name ‘Bayerisches Bier’ within the stated time limit. This name was also already protected through bilateral agreements between Germany, France, Spain, Italy, and Greece. The Commission subsequently adopted Council Regulation 1347/2001 (the ‘Bayerisches Bier Regulation’) as an annex to the GI Regulation to conclude that ‘Bayerisches Bier’ should be protected as a geographical indication in accordance with the GI Regulation.

The main question in the proceedings between Bavaria NV and Bayerisches Brauerbund (BB) was whether Bavaria was allowed to use the pre-existing trade mark BAVARIA, or pre-existing trade marks containing the element ‘Bavaria’, taking into account that the name ‘Bayerisches Bier’ is a protected geographical indication (‘PGI’) under the GI Regulation.

Facts and Analysis

BB, a German association, had the objective of protecting the common interests of Bavarian brewers. Its statutes dated from 1917; since 1968, it was the proprietor of the registered trade marks BAYERISCH BIER and BAYERISCHES BIER.

Bavaria NV, a Dutch brewing company operating on the international market, began using the name ‘Bavaria’ in 1925; that word became part of its name in 1930. Bavaria owned several trade marks containing the element ‘Bavaria’ (‘the Bavaria trade marks’). Bavaria Italia, also a party to this proceeding, was part of the Bavaria group (Bavaria NV and Bavaria Italia are referred to as ‘Bavaria’).

After the German authorities informed the Commission of the application to have ‘Bayerisches Bier’ protected as a geographical indication, a number of Member States filed an objection, specifically with regard to the pre-existence of trade marks including the term ‘Bayerisches Bier’ or translations of it, and expressing the opinion that the term ‘Bayerisches Bier’ or its translations had become generic. After investigation, the Commission concluded that these arguments were unfounded and adopted the Bayerisches Bier Regulation. Bavaria did not bring an action against this regulation.

Subsequently, BB brought an action before the District court in Turin, to stop Bavaria using the Bavaria trade marks. BB sought an interlocutory injunction declaring those marks invalid or revoking them, on the ground that they infringed the PGI ‘Bayerisches Bier’. BB considered that Bavaria misled the public since the Bavaria trade marks contained a geographical indication referring to Bayerisches beer while the Bavaria beer itself was Dutch. The District Court partly granted the action of BB against Bavaria. Bavaria appealed against this judgment. The Court of Appeal referred two questions for preliminary ruling to the European Court of Justice (ECJ).

First question

Is the Bayerisches Bier Regulation invalid, possibly as a consequence of the invalidity of other acts, in the light of a possible breach of general principles, a failure to comply with procedural requirements or a failure to comply with substantive requirements?

With regard to the first question, the ECJ considered that no factor was disclosed which affected the validity of the Bayerisches Bier Regulation. Two issues arising are, however, worth mentioning.

In this context, the issue was raised whether the term ‘Bayerisches’ had become generic. Only if the link between the reputation of Bavarian beer and its geographical origin had disappeared could this be the case, said the ECJ: the mere presence on the market of trade marks including the word ‘Bayerisches’ did not automatically mean this link had disappeared.

Secondly, based on Article 14(3) GI Regulation Bavaria is of the opinion that the PGI ‘Bayerisches Bier’ should not have been registered since their Bavaria trade marks are well known and have been used for a long time. According to Bavaria, the PGI ‘Bayerisches Bier’ is therefore liable to mislead consumers as to the true identity of the products. According to BB and as considered by the ECJ, a situation like this does not exist.

Second question

2. As an alternative, if question (1) is held inadmissible or unfounded, should the Bayerisches Bier Regulation be construed as meaning that recognition of the PGI ‘Bayerisches Bier’ is to have no adverse effect on the validity or usability of pre-existing marks of third parties in which the word ‘Bavaria’ appears?

The consideration of the ECJ with regard to this question is closely related to the first. The ECJ focused on the comparison between Articles 14(2) and 14(3) GI Regulation. Article 14 sets out, among other things, general rules of conflict with regard to the relationship between registered geographical indications and trade marks. Article 14(2) refers to a situation of conflict between a PGI and a pre-existing trade mark, while Article 14(3) governs the situation where registration of a geographical indication would be liable to mislead the consumer as to the true identity of the product, in the light of the reputation of a pre-existing trade mark. According to the ECJ, Articles 14(2) and 14(3) govern separate situations. The fact that there is no likelihood of confusion on the part of the consumer and Article 14(3) is therefore not applicable (as is the case here) will not affect the need to examine the conditions in Article 14(2) that make it possible for a trade mark and a geographical indication to ‘co-exist’.

According to the ECJ, to determine whether a situation of conflict between a PGI and a pre-existing trade mark exists, a national court should analyse:
* whether the use of the trade mark corresponds to one of the situations referred to in Article 13 GI Regulation;
* whether the trade mark was registered in bad faith before the date on which the application for registration of the name was lodged; and, if appropriate
* whether there are grounds for invalidity or revocation of the trade mark as provided for, respectively, by Articles 3(1)(c) and (g) and 12(2)(b) of Trade Mark Directive 89/104.
In summary, the ECJ concludes that the fact that ‘Bayerisches Bier’ is protected as a geographical indication does not adversely affect the validity and the possibility of using pre-existing trade marks of third parties in which the element ‘Bavaria’ appears and which were registered in good faith before the date of the application for registration as a geographical indication, provided that the trade marks are not subject to any grounds of invalidity or revocation under harmonized European trade mark law. It is for the national courts to decide whether such a situation exists.

Practical Significance

This decision is of practical significance in two ways. First, by making clear that the registered geographical indication ‘Bayerisches Bier’ and the pre-existing Bavaria trade marks may co-exist, provided that the use of these trade marks does not correspond to any of the situations referred to in Article 13 GI Regulation, they are registered in good faith and are not subject to any ground of invalidity or revocation under harmonized European trade mark law. In summary, only when BB is able to show that one of these situations exists should the national courts declare the Bavaria trade marks invalid. The outcome of this case is satisfactory. It is undesirable if a trade mark such as Bavaria, which has been successfully used for such a long time, could be easily put aside when the term ‘Bayerisches’ is suddenly protected as a geographical indication.

The explanation of Article 14(2) GI Regulation is in line with Article 24.5(b) TRIPS, which provides that a trade mark consisting of a geographical indication is valid as long as it was registered before the geographical name was protected in its country of origin. Although this article of TRIPS has been subject to discussion with regard to the question whether it incorporates ‘co-existence’, the ECJ's decision is a step in the right direction. Co-existence of pre-existing trade marks and geographical indications is, in principal, possible, though subject to the interpretation of the circumstances of the case.

Secondly, this decision clarifies that the mere presence of trade marks including a geographical indication will not automatically provide that a geographical indication becomes generic. A geographical name only becomes generic if the direct link between the geographical origin and a specific quality of the product (eg its reputation) has disappeared, and the name does no more than describe a style or type of product.

Joint authorship of doo-wop song found based on disputed 10 per cent contribution to lyrics

Author: Charles R. Macedo (Amster, Rothstein & Ebenstein LLP, New York, NY)

Citation: Journal of Intellectual Property Law & Practice, doi:10.1093/jiplp/jpp179

Janky v Lake County Convention and Visitors Bureau, Nos 07-2350, 07-2762, and 08-1606, 576 F.3d 356 US Court of Appeals for the Seventh Circuit, 3 August 2009

Joint ownership of copyright was found where an author's contributions to a song contributed to its commercial viability.

Legal Context

Under US copyright law, ‘[t]he authors of a joint work are coowners of copyright in the work’ (17 USC 201(a)). Thus, as long as each contribution rises to the level of authorship, each joint owner holds an undivided interest in the joint work regardless of the quality or quantity of their respective contribution, and can each authorize others to use the work. However, the US law, at least in the Seventh Circuit where this case was decided, recognizes that not every comment or suggestion rises to the level of authorship. Janky v Lake County Convention and Visitors Bureau, 576 F.3d 356 (7th Cir. 2009) clarifies (in an entertaining opinion) the Seventh Circuit's view as to what type of contribution is necessary for someone to be considered an author in a joint work. This case highlights the perils of filing a copyright application containing information which is later contended to be inaccurate and based on a misunderstanding of the legal implications of such information.


In the late 1990s, the Lake County Convention and Visitors Bureau for Lake County, Indiana, located southeast of Chicago, Illinois, was interested in commissioning a tune ‘singing the county's praises’ (576 F.3d at 358).

Cheryl Janky, a member of ‘Stormy Weather’, an Indiana-based doo-wop group (right), took up the challenge after Henry Farag, another member of Stormy Weather told the band about the opportunity, suggesting that the band might want to give it a shot. In 1999, Janky wrote the music and lyrics for a tune she called ‘Wonders of Indiana’ (a.k.a. ‘Indiana’). When the song was completed in May 1999, Janky filed a copyright application in which she listed herself as the sole author. Thereafter, Janky showed the song to Henry Farag. At this point, the issue of collaboration began. As the Seventh Circuit explained:
Although Farag thought it had potential, he recommended revising the lyrics to better suit the Bureau's vision. Pursuant to a conversation with the Bureau's chief executive officer, Farag suggested that the song needed to focus more on Lake County in particular, as opposed to Indiana in general, and include references to the area as ‘Chicago's neighboring south shore’ and to its ethnic diversity. Janky testified that Farag's recommendations, which she adopted, accounted for 10 percent of the lyrical content (576 F.3d at 359–60).
In December 1999, Janky filed a second copyright application for the revamped song, listing Farag as a co-author who provided ‘additional lyrics’ and characterizing the effort as a ‘joint work’. She also filed a similar document with the American Society of Composers, Authors and Publishers (ASCAP) stating that Farag held a 10 per cent ‘ownership share’.

The ‘revamped’ song was recorded by Janky, Farag, and the rest of Stormy Weather, into a demo, and then a music video, which was ultimately adopted and used by the Bureau, and is the subject of the present copyright dispute.

Farag issued a non-exclusive licence to the Bureau to use the video and song in return for the cost of production. The band had apparently decided that the publicity (rather than a royalty) would be sufficient payment for use of the song. On 1 December 1999, the Bureau made first use of the song at the same time it opened a new visitor's centre. It played the music video and sponsored a live performance. In June 2000, Stormy Weather completed production of the song and included it on an album called ‘Doo-It Doo-Wop’. The Bureau purchased 1500 copies of the album, reselling it at the visitor's centre. The Bureau also made other use of the song.

Janky later alleged that ‘she composed the song and never gave the Bureau permission to use it’ (576 F.3d at 358). Janky ‘testified that she placed Farag's name on the registration form "as an indication of [her] gratitude ... and to demonstrate that [she] appreciated every little bit of support." She said she now realizes that the proper way to acknowledge a "de minimis" contribution is by making a notation on the album cover’ (id at 360). In contrast, Farag maintained that ‘the lyrical changes were "significant," and revisions were also made to the melody’ (id).

Presumably, in recognition of the ‘mistake’ Janky now claims she made in the December 1999 copyright application, on 15 July 2003, she filed a third copyright application for the ‘revamped song’ to correct her ‘mistake’. This third application instead listed herself as the sole author of the music, lyrics, and ‘arrangement performance’. According to Janky, ‘Farag’s license to the Bureau was without effect and the latter's use of the song illegal' (576 F.3d at 361). She notified the Bureau that she was the exclusive owner, but the Bureau continued using the tune until Janky commenced the present lawsuit in October 2003. In what the Seventh Circuit characterized as an ‘over-litigated’ case, with ‘unfocused’ appellate briefing, the US district court ultimately awarded partial summary judgment in favour of Janky on the grounds that Janky was the sole owner of the copyright to the tune at issue, based on its findings that Janky and Farag ‘didn't intend to be co-authors at the time of creation’ and Farag's contributions were ‘nothing more than "minimal revisions" of a song Janky already composed’ (id. at 358, 361). A jury awarded Janky $100,000 in damages for the Bureau's copyright infringement, and the present appeal ensued.


The Seventh Circuit provides an entertaining and informative explanation of the criteria to be used in that Circuit for determining whether someone is an author in a ‘joint work’. While the Seventh Circuit also discussed other issues, the present analysis focuses on the main issue on appeal: was Janky the sole author of the copyright work, or was Farag co-author of a ‘joint work’.

Section 101 of the US Copyright Act defines a joint work 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 USC 101. The Seventh Circuit law on co-authors provides that ‘[i]n general, individuals are co-authors of a work only where they (1) intend to create a joint work; and (2) contribute independently copyrightable material’ (citing Erickson v Trinity Theatre, Inc., 13 F.3d 1061, 1068, 1071 (7th Cir. 1994) 576 F.3d at 361.

The Seventh Circuit determines ‘intent’ based on the collaborators' intent to ‘work together in the creation of a single product’, rather than on whether the collaborators intend to ‘recognize each other as coauthors for purposes of copyright law’ (citing Erickson, 13 F.3d at 1068–1069; 576 F.3d at 362). This intent may be evidenced by ‘billing’ or ‘credit’. (citing Erickson, 13 F.3d at 1072).

In adopting the ‘independently copyrightable material’ prong of the Seventh Circuit test, the Circuit explicitly rejected a ‘de minimis’ test, as proposed by Professor Nimmer in his treatise, which requires merely ‘more than a de minimis contribution by each author’. Thus, when a putative author contributes merely ‘(i)deas, refinements, and suggestions’, such a contribution is not enough to make the author a joint author under Seventh Circuit jurisprudence (citing Erickson, 13 F.3d at 1070; ibid).

While the Seventh Circuit has carved out as an exception to the ‘independent copyrightability’ requirement, those works where none of the parts could pass the test of copyrightability due to ‘the nature of the particular creative process’, such as the creation of a comic book, which requires a writer, a penciler, an inker, and a colourist, to form such a work (discussing Gaiman v McFarlane, 360 4 F.3d 644, 658–659; 576 F.3d at 362 n.41 (7th Cir. 2004)), that exception was found to not apply in the present case since Janky was capable of submitting and obtaining, and did actually obtain, a copyright to the original version of the tune, before she ever spoke with Farag about the details of the work.

In its analysis, the Seventh Circuit determined that Janky and Farag intended to create a joint work, despite Janky's post hoc protestations to the contrary, considering Janky's initial acknowledgment of Farag's contribution as a co-author, combined with the ‘considerable control’ that Farag wielded over ‘what the song finally looked like’ (576 F.3d at 362). The Seventh Circuit declined to find that Janky's affidavit to the contrary was sufficient to create a material fact in dispute on this point.

Likewise on the second prong of the test, the Seventh Circuit found, as a matter of law, that Farag's contributions went beyond general ‘(i)deas, refinements, and suggestions.’:
They were concrete expressions and thus pass the test of copyrightability where mere ideas fail. Gaiman, 360 F.3d at 658. In addition, while Farag's changes may have accounted for only 10 percent of the lyrics, they were significant. They were important not only to the final sound, but also to its commercial viability. Before Farag became involved, the song celebrated the charm of Indiana as a state; Farag shifted the focus to Lake County. Without Farag's input, it is unlikely that the Bureau would have embraced the song the way it did (576 F.3d at 363).
Thus the Seventh Circuit weighed the importance of the comments as more important than their volume in determining separate copyrightability, and concluded that the Bureau, rather than Janky, was entitled to summary judgment. Despite this finding, the Seventh Circuit did, however, recognize that this was a ‘close case’ and cautioned:
We have observed in the past that published creations are almost always collaborative efforts to some degree—peers make suggestions, editors tweak words, and so forth. See id. at 658. Were we to deem every person who had a hand in the process a co-author, ‘copyright would explode.’ Id. On the other hand, the very purpose of copyright law is to promote the progress of the arts and sciences, U.S. CONST. art. I, 8, cl. 8; Wildlife Express Corp. v Carol Wright Sales, Inc., 18 F.3d 502, 507 (7th Cir. 1994), a purpose that is defeated if important contributions are denied copyright protection. Placing a contribution in one hopper or the other is not always an easy task, and the judge here made a commendable effort. In the end, though, this doo-wop ditty is a joint work.
Circuit Judge Ripple dissented from the majority opinion to the extent the majority granted summary judgment in favour of the Bureau. While Judge Ripple agreed that summary judgment in favour of Janky was improperly granted by the district court, he would have found that the case should be remanded for further consideration since the record was insufficient to establish:
whether Farag had an intent to become a joint author; and whether Farag's contributions were sufficient to establish separate copyrightability.

Practical Significance

Copyright applications in the USA are deceptively simple forms that many authors believe are easy to fill out. While the questions seem straightforward, the answers are not always so. The failure to appreciate in the first instance the legal implications of the information provided can lead to unintended results. This case serves as a sober reminder to authors of the importance of making sure to consider carefully the respective roles of each participant in the creation of the work, and to record properly those roles in the first instance in their copyright applications, to avoid later disputes over respective rights. Consultation with copyright counsel is strongly recommended.

* Charles R. Macedo is the author of The Corporate Insider's Guide to US Patent Practice, published by Oxford University Press (details here).