You may think there is one simple hard-and-fast rule of copyright law: You cannot transfer a copyright without a written instrument signed by the copyright owner. It's right there in section 204 of the Copyright Act.

But writings and signatures today can be electronic, and as a recent case illustrates, the "instrument" need not be a formal document that specifically addresses copyrights. As a result, in copyright litigation, defendants often use discovery to intensely scrutinize the basic issue of who owns the copyright in question.

In Johnson v. Storix, for example, the issue was whether Anthony Johnson had transferred the copyright in a software program to a company, Storix, Inc. Johnson had developed the program as a sole proprietor and eventually sold business assets to Storix. But copyrights were never specifically mentioned. He continued to work for Storix after the sale, but eventually left after conflicts developed.

Johnson then claimed that he owned the software copyright, and hence could prevent Storix from continuing to develop and sell the software. Because he had never executed simple customary copyright assignment, the door was open for him to dispute Storix's ownership of the copyright. 

The issue then became whether any other document sufficiently met the section 204 requirement of a written instrument in which Johnson had transferred his copyright to Storix. Eventually, a jury, looking at various documents, concluded that an "annual report" signed by Johnson, during the time he worked at Storix, satisfied the written instrument requirement.

The annual report simply stated that "all assets from Storix Software were transferred to Storix, Inc." as of its incorporation date. The annual report wasn't a formal copyright assignment, it was written almost a year after the deal occurred, it never specifically mentioned the software program, and it never even used the word "copyright." 

But the U.S. Court of Appeals for the 9th Circuit, in its decision affirming a jury verdict against Johnson, concluded that that sentence in the annual report about "all assets" sufficiently transferred the copyright. It was not necessary, the court held, for a copyright transfer document "to be the Magna Carta; a one-line pro forma statement will do." The district court had similarly noted that Storix wasn't required "to provide a writing that recited details regarding price, consideration, negotiated terms, reproduction rights, or other 'magic words.'" The critical issue was to discern "the parties' intent," and the annual report did that.

The case suggests one other lesson for those who take their copyright disputes to court. There are hints in the trial and appeal court decisions that Johnson's other documents were inconsistent with his trial position, and his "vulgar email correspondence," did not help his credibility with the jury that decided the ownership issue.

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