may please the court's good morning my name is kevin q s i represent plaintiffs appellate gladwell governmental services inc to the court's information my client i'm glad well it's present here today i would like to highlight four points this morning first that the rights to the preexisting materials initially vest with the author which in this case rights to gladwell thirdly the parties did not intend for marine to assume all rights exclusively and finally fundamental fairness requires reversal of the lower court our review of the court's interpretation you've said that your third point was that basically that not all rights had been transferred and that some had been reserved but i don't see any reservation languishes just to put the question as plainly as i know how to put it it looks to me as i read the language of that agreement that your client assigned whatever rights she now claims that she reserved in the language of paragraph eleven the first the first point i'd like to make is that this contract provision refers only to work product under the agreement there is no mention of work product prior to the agreement  which say that it's it refers to all reports information dad at work product etc which have been furnished to or collected prepared assembled and or made by the contractor under this agreement there is no reference to any work product made prior to this agreement which of course is what the preexisting materials are but the problem is that she's basically making the claim that the work product that she turned over to the county cannot be republics to the county to walla meter put on the secretary of state's website when there's no dispute that what she turned over to the county is what ended up on the website s my original question was what is it that she reserves and how did the county breach this provision of the contract if they simply took the work product and gave it to others so work product they took a copyright in the preexisting materials that was retained by my client but the problem is that the contract doesn't say anything about preexisting material what as i read it what it says is the work product which is transferred to the county i theirs they have the ownership of it they then publish it and i assume that the parties intended it was going to be available to the public at large and i assume we can assume that that included putting on some kind of a website or maybe posting publicly what how did the county breach its obligation to your client we cannot assume that this work product would be available to the public at large that's not the intent with a record retention schedule this is purely to be used internally and the parties how do you explain the language in and eleven that talks about and shall not be they may be made available by the contractor to any other person or entity or published by the contractor without the prior written authorization of the county that seems to  that it's the county who gets to decide whether or not this public gladwell cannot and would not want to publish this material published the word publisher of the copyright act has a specific definition to sell or otherwise transfer ownership to another person gladwell would have no interest in publishing this material to any other person but if the owners of this work product was transferred to the county under this clause and it is the owner of the work product by definition doesn't have the right to do whatever it wants to do with the property that it owns with all due respect your honor no each copyright write can be transferred and own been held separately that's section two and one assumes that it was reserved but the problem i'm having with your argument is there's no language in paragraph eleven that purports to reserve to your client something that is a guess to use that contained within the work product that was turned over to the county which was a preexisting material but she reserve the copyright if obviously if you'd said that in the language we wouldn't be here but you didn't say that and and i'm having a hard time understanding why you aren't bound by the agreement and the right that you your honored two things one the presumption is it goes the other way it's not that the copyright holder needs to reserve rights it's that no right is transferred unless under the this court's opinion in effect associates which sets out the policy underlying section two zero for a of the copyright act no right no copyright none of that bundle of rights is transferred unless there is a clear reasonably certain writing to that effect it would be committed to different way if we were to decide that the language of paragraph eleven is clear and unambiguous and amounted to a transfer of whatever interest she had when she turned over the work product and you lose right hypothetically but i can stablish that that is not correct that it's not a clear transfer and i wanted to come back to another point you had you had just been under section one hundred three b of the copyright act if you acquire ownership of a derivative work or a compilation it's casebook law that you don't acquire ownership of the preexisting materials unless there's a separate writing specifically on that point it so acquiring this is effectively both a compilation and a derivative work acquiring this compilation as maureen does does not entitle i ownership of preexisting materials unless there's a specific agreement on that point the burden is on murrin to show a specific agreement transferring preexisting materials otherwise all we get is the compilation i'd be with you i'd be with you in your argument if the definition of work product in paragraph eleven wasn't so it's a very very broad definition it includes all reports information data work product finding conclusions furnished to or collected prepared to sample and or made i mean that covers compilations that covers a variety of forms that are also assumed within the definition of work product its broad but it's not it doesn't talk about the intellectual property rights in the work product there is no precedent that allows for a transfer of intellectual property rights in work product with language that just talks about the work product itself it's just not a different way if there's no underlying copyright then paragraph eleven and the discussion probably right no your honor because the parties in one that the parties intended for a for this to transfer the work if you had no underlying copyright that probably answer this question if there was no underlying copyrights to the preexisting materials then the and phrases and selection and arrangement of data a typical copyright copyrightable nature of a compilation so it's choices me as to how to take a really quick example say this record retention schedule three hundred pages what one of the dozens of things that gladwell did was they provided on the backside of each page an instruction manual that told you how to use the front side and they put it upside down so that when you have a worker who's in a certain department in orange county and they ever have a question that's to what's going on in the front and some of the abbreviations used they just turn it over and they look at it and there it is then that is just one of a dozen examples i could give them unfortunately we haven't provided them the record compilation copyright is by its nature all that's required is some originality and all that will then be provided the protection you get is the copyright in those sorts of choices you know because it is the truth and let me just interrupt i gather on the face of the record we have now we really don't know with any serious disadvantage i mean i could make a much better case and one point we could say is what kind of choices are collected or assembled under this agreement it doesn't make any sense in english and certainly if you construe the facts in the complaint in the way most favorable to the plaintiffs to say that a choice made with respect to selecting data was collected under the agreement or was assembled under the agreement and because you can't say that the definition of work product to which ownership is transferred to the town the kind of esoteric choices that are made with respect to selecting doubted that originality is really the the crux of what's copyright protected in her preexisting materials and you can't point to one of these words that would bring in that type of material in here on the other i get your position as if you're going to transfer copyright you have to say so that services the plaintiff if i had no opportunity to provide evidence in this case there is an actual registry culprit to see holes in the preexisting materials that that's important to me from each version each footer each page of these three hundred page documents contains a denotation of authorship and diane gladwell is named the parties knew that she was the author they knew that she had authorship they intended for her to retain off excuse me to retain authorship beyond this agreement because each of the versions each of the footers every single page said she had authorship and if i could and them are on copyright say that if you're going to transfer copyright you have to refer in some way to the domain of copyright you have to route reference intangible rights in some way it's never enough to talk about transferring a material object you can sell me a book but that doesn't mean i have the rights to make that into a movie unless you've made that clear in the contract there is literally no precedent for just assuming that if work product is conveyed intellectual property rights in the work product is also conveyed so using the phrase shall be the property of the county your argument is that's not that's not enough property has to be separately defined to include intellectual that's one way you could say all rights and to the property and sole use or publication for any purpose all the kind of language that all the other cases include when courts decide that these rights are transferred but don't we read that in connection with the leader phrase in paragraph eleven that talks about the county having the right to determine whether or not the contractor can publish you do and if it and if they meant all rights in the first phrase the second good morning and may it please the court carrie adams of the law firm of murphy austin adam schoenfeld here on behalf of the counties of are in and i believe the in your questions you've identified the two issues here first whether paragraph eleven is sufficient to create a work for hire and second what is the consequence of that assuming that it does for the allegations about preexisting material and i too want to start with the language of the paragraph eleven and i encourage you to look at the excerpted page forty three rather than the quotation of it by the court in the order below since there were some errors itself it might be sufficient to transfer all of the copyrights but we don't need to answer that question here because the third part of the paragraph eleven the this one sentence the work is produced that means they probably the typical example would be a piece of art or something like that but if you have preexisting material and it becomes part of a compilation  the preexisting material under copyright law be subject to all of the work for hire provisions i think the answer to that question your honor requires reading together sections two zero one b and section one zero three b because it speaks to compilations and works for hot works made for hire and while while mr hughes stresses section two hundred four which requires a written transfer of copyright that has to be purposes of this title and on last parties have expressed agreed otherwise and a written instrument signed by them owns all of the rights comprised in the copyright so if a an author is done in the compilation from the preexisting materials while the language of one of three b n i think this answers your question directly judge thomas the copyright in a compilation derivative work extends only to the material contributed by the author of such work and that's in the supplement authorities contributed by the author of such work so i think if i may help you partly why does that help you whatever gladwell had before was contributed to this compilation section one of the three b says that the copyright extends only so far as that which is contributed by the author now if there is somebody else is copyright that does not belong to the author then yes it would retain its separate copyright status in the compilation  and the the author of the hire would need the authority of that prior author the holder of that prior copyright in order to publish it in the compilation but here we're talking exclusively about material that had been contributed by the author and that's the language of section one of the three b n i think has to be read together with two on one d to qualify to go for a spelling out how we deal with precisely this situation so i gather you're interpretation of section one hundred one the definition of compilation in combination statutes would be that if the author author can't retain a partial ownership of any critique this thing work if you're contributing and if the if the author is contributing the whole work that's your position if the author and others though if there's only one author the author can segregate preexisting from the  eventual work that's compile well she could if she did it expressly in the in writing signed by the parties as required by one three d so it would be a simple matter for her to have reserved the copyright in these particular  and have previously copyrighted the fourth one herself and put them into the collection that she does in a work for hire the one that she had copyrighted before i think she the restriction of women work for hire can can apply it to a non employee and in this case the only real issue i sense that is a compilation since it is an independent contractor  whether there is a whether section eleven is an express agreement in a written instrument signed by them that the work shall be considered a work made for hire and i don't think the notion that you have to use the phrase to it did relate to a document that was allegedly prepared earlier but there certainly was no prior notice to any of the parties involved in the development of the contract that there was no that in the record no your honor e question even if it were even if it had been filed early on i think even then the the literal meaning of sections one of three the two a one  b and the paragraph eleven would make it incumbent upon the the author to call attention to the fact that there is copyrighted material that i pre own and i'm going to put it in here but i'm not going to transfer you my copyright in that material i think that's what section one hundred three one b says it all belongs to the higher unless the parties have expressly agreed that you may have an esteemed put in work for hire by the same author but i find it hard to believe you can take it in the abstract you can take a copy of preexisting copyright and transfer it under a work for hi arrangement well i would argue your honor that i'm sorry i don't know but we have an allegation of certain phrases expressions and other creative elements that that  the case recently and i think the plaintiff's case rests on the idea that i've got this several hundred page document i can allege that something in there is is creative and has previously hard to analyze what's really going on here well i think i really don't know if you say what i mean i gather you don't know either what what is being claimed as a preexisting work and what isn't well you know that our hands are tied by probably you know that's there wasn't for the additional context but i think that district court got it right that in the face of paragraph eleven and nothing more the plaintiffs cannot establish an exclusive right to a copyright which is jurisdictional under section five hundred one b the legal or beneficial owner of an exclusive right under a copyright is entitled to institute an action for infringement so that in the face of paragraph eleven which clearly gives the ownership to marin county the court found while the plaintiff can't prove that she has a copyright in this and well i think that as i said before even if she did and even if that were possible which she i would say did not adequately  in a work for hire that one brings to the work and fails to disclose and reserve to a one b unless the parties have expressly agreed otherwise and a written instrument signed by them  be on that issue regardless of what the status of of those expressions phrases or other creative elements it's a couple lies down from the top a presentation of the draft will be made to the records management committee allowing them to discuss the issues and make changes so we're talking about a document that is drafted by submitted to the departments where they could be easily edited and the right to edit that material the teamwork nature of the way this compilation was prepared for twenty two different departments discussion of these different types of documents dealt with in the copyright act and the reference to a joint work where separate elements merge into a unified whole where they where they're subject to edits in a case like that they become a joint work and it would belong to all of the authors except all of the aco authors are in the employ or working for hire for m past to be read in conjunction with to a one b and that to a one b is much more specific tool for any is a general statement that to transfer it you have to have a writing signed by both the higher who becomes the author so i think you have to read to all four and the requirement that a transfer of be in writing as qualified by two a one b which speaks specifically to that issue in the case of a work for hire which is what we have today and then one of the three b sheds further light on that by indicating that in a compilation  the copyright only extends to the material contributed by the author so i think the practical reading of the statute says if a an author has a preexisting copyrighted material and it's going to create a compilation and it's going to include that in it the author needs to reserve the right to that previously copyrighted material in the written document that creates the work for hire if i understand the legal difference once we've boiled down everything else on there a lot of it is this let's assume hypothetically because it makes makes it a little bit easier for me to get my head around let's let's say you have that you have a playwright who has can constructed an act and takes a copyright interest in an act and then someone commissions the playwright to say well i'd like you to do produce something for us but use that use that act as part of it so as to the result thing is a three act compilation that's produced and you have language like paragraph eleven that's that's part of your position it would be unless the document reserves the copyright into the act that was previously copyrighted the screenwriter or the playwri that handful of sections in the copyright act which i think if read together does in fact speak to the specific issue and speaks to your hypothetical and says yes you should reserve your copyright to that part that you're going to compile  answer that your honor is that marin county regards all of the content of it to be uncommonly rideable facts and therefore as a practical matter it does not object to mrs clad well continuing to  conductor business which is not in the record but i believe she is fully capable of doing in and county firms here that it does not object to this is clad well using all of the material that appears intend to object to it you don't try to make money off this are hardening trying to make money off this no they're not your honor they're trying to make good most of what they purchased and so i guess the question and this has nothing to do with what we're going to have to decide because it's you know  interesting issues of copyright and contract law but it seems to me that you know if you are you position to talk settlement about this case because a lot of it seems to be a dispute about intent on perhaps specifics that  resolved through negotiation rather than than this and i you don't have to tell me you can just say yes or no whether you think it's subtle or you've gone past that point i think your honor there  solvable i think we have an obligation just ask and see whether that's possible  thank you your honors i wanted to address two points first reverse order judge hug i think maybe an even more direct question is would diane gladwell have intended for more and to share her products with her clients she only has so many counties in california and then have it posted on the secretary of state website for free but also kind of response to the question about solvability she would not have intended for well there is there is no point section eleven that says murder in will open it up for public inspection what we would make very clear on the record if i mean if i had the opportunity to expand the record and provide evidence does with this is they have a record retention schedule and they have provided to each of their departments they can have meetings and talk about it they can have a board of supervisors meeting where they officially say we formally adopt it but it's never contemplated that they're literally going to take the document of the electronic form for example and give it to other counties and say use it and to make cargo for public inspection this pretty broad well what what is intended by that language it's pretty it's ambiguous and the intent is very clear and i could i could make it very clear with witnesses that's part of the problem of this being ruled on the twelve b six i would love to be more expansive about what exactly is copyrightable and about what this contract really minutes i haven't yet had the opportunity i don't think we can make assumptions about what it means it is intent relevant in the current context because basically both of you are making a legal argument about what needs to be included in the contract to preserve copyright rights rights as a threshold that we have to get over first if you're asking me what about are are we have a legal issue about what exactly how the interplay between one of three billion to a one yeah and what you need to do if we resolve that issue then what you need to include in a contract to preserve  are the author of a derivative work or compilation the copyright you own only extends to your original contributions not to preexisting materials if you as a work for hi hiring party own a compilation or a derivative work you are deemed the author of your copyright again is no more expansive than if you author that yourself you only get the new material so new contribution express language in paragraph eleven because the ownership right that you would assert in that instance would forbid the county from making this document fail for public inspection no the the county clearly has that right here to make it available for public consumption or your theory because it includes copyrightable material and therefore any need disclosure to the public would be a breach of your client's copyright and preexisting material your honor with all due respect when ever you have a copyright you're free to in a contract give pieces of it you give one stick out of that bundle and this is what they did but your your position has to be that the county of maryland could not have posted on the web of its own duration forget about sectors that it could not have made that document available to the public and from or in counties to this and so that they could see what the records retention schedule so what ownership right was transferred under paragraph eleven by under your interpretation of the last public inspection does not mean what you're assuming it means the ownership rate that was transferred is they're allowed to use it internally they're allowed to make it available for public inspection so for example if i'm a marine county citizen and i make a public records act request i can receive a copy of this document they can make it available to me they're required under law but what they're required to that's the distinction posted on the bulletin board system or in county civic center that would be ok you're starting to get to an area where i think the parties clearly did not intend that and that's outside the record i just like it in a hard time buying your definition of public inspection because your definition doesn't comport with what i understand the dictionary definition to be of public inspection well public inspection to go right directly to the heart of it is not into the work and they did there was a team effort we have to be very careful about the contract the contract was referred to in the complaint the contract wording is properly before this court because the parties signed on to that they agreed they signed to it but to say that it then speaks to the truth of what actually occurred you're making a leap and it's also in admissible hearsay so i just want to this work for hire if we look at the excerpt of records fifty appears to contemplate more than simply hiring a painter as and off to paint paintings it does contemplate sort of a team process by which material would be added and changed so it's not like hiring a photographer or a painter to or an author of a book to write a book that is published by the owner and there is law with respect to hemingway's editor how much of a contribution is it before you're enjoying author that's that's a valid and once we get there and figure out who contributed what we can intelligently respond to that sort of thing to if you will for that compilation you don't get more just because you're hiring somebody else to do it then you would get if you did it yourself whose names are theirs are or not it is if let me ask let me go in reverse if it wasn't fact to work for hire which it's not then and that was stablished then the burden would be on the creator not the hiring party it's not a work for is not involved work for hire the contract with maureen does not involve work for hire in any respect even if it did it does not square the language is is much less narrow than the language of each work for hire case but for purposes the where we are today even if it was work for hire you don't get to own and take preexisting material that predates the hiring that's clear in the the hiring party was a publisher so the parties intended that the hiring party needed all these rights to continue to resell the map or the photographs or the mail order catalog or whatever it was that reversed in this case lead what was the one to the parties all knew they needed to own copyrights to to continue her business secondly each of the cases in which work for hire was found and they used words like so property they said that the creator could not use or publish for any purpose much broader than what we've got which is the creator can't publish and i think there's another example of how it was just kind of expensive and very clear that under no circumstances does the creating party own any intellectual property after this point after they sign this agreement and that's not the case here this would be unprecedented if this was ruled the work for hire there is literally no press today for a work for hire with this sort of language right counsel thank you for your argument an interesting case and it will be submitted