Litigation: An email is not enough to transfer copyright

An email that reads “done…thanks” did not satisfy the writing requirement of the Copyright Act

Copyrights can be an extremely valuable commodity. Deals exchanging that commodity may be required to be in writing. A copyright holder doesn’t need a written deal to simply grant a non-exclusive license to use a copyrighted work. The exchange is evident, not only by an oral agreement, but through the conduct of the parties, as the copyright holder is not giving up ownership, but merely giving another person permission to use the work. When a copyright holder transfers rights, however, that exchange must be in writing between the parties because the copyright holder is giving up ownership in the copyrights to the acquiring party and thus the Copyright Act requires proof of that exchange.

Section 204(a) of the Copyright Act specifically provides that a “transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner's duly authorized agent.” What constitutes sufficient writing to satisfy this requirement has been the subject of many cases. A recent California Court of Appeals decision, MVP Entertainment, Inc. v. Frost, adds to that collection. In it, the court held that an email purportedly confirming the terms of a deal to transfer copyrights was insufficient to meet the Section 204 writing requirement.

In opposition, MVP’s lawyer declared that he believed the "done…thanks" email created a binding contract and that Frost’s lawyer had led him to believe that he was Frost’s “duly authorized agent.” Another lawyer for MVP declared that he also reasonably believed Wertheimer was Frost's duly authorized agent, that Frost had provided a pitch memorandum after the “done…thanks” email was sent, which indicated that the "deal had been closed" and that Frost had sent copies of the book and gave approval of a draft brochure for marketing the movie.

The trial court granted summary judgment based on Section 204 and the Court of Appeal affirmed. As to the Copyright Act’s writing requirement for transfers, the court noted that “The rule is really quite simple: If the copyright holder agrees to transfer ownership to another party, that party must get the copyright holder to sign a piece of paper saying so. It doesn't have to be the Magna Charta [sic]; a one-line pro forma statement will do. The Copyright Act's writing requirements are intended to force parties to bargain carefully and to determine precisely what rights are being transferred, and at what price."


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Lincoln Bandlow

Lincoln Bandlow is a partner in Lathrop & Gage’s Los Angeles office. He practices sophisticated business litigation and specializes in litigation media, First Amendment, intellectual...

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