A recent case in the Third Circuit, Barefoot Architect Inc. v. Bunge, Case Nos. 09-4495, 09-4600, (3d. Cir. January 14, 2011) has provided some interesting practice pointers with respect to copyright transfers. The case involved a dispute between an architect (Michael Milne of Barefoot Architects) and his clients Sarah Bunge and Thomas Friedberg. Milne had designed a house for Bunge and Friedberg, but the parties fell out before the house was completed, and Bunge and Friedberg ultimately hired a different architect to finish the project. Milne, through Barefoot Architects, sued Bunge and Friedberg for copyright infringement, amongst other wrongs. The District Court had dismissed Barefoot's copyright claims on the ground that the copyright in the plans was owned by Milne's employer at the time the plans were prepared, a different architecture firm called Village Vernacular, Inc., and that therefore Barefoot had no standing to bring the action.
At issue before the Third Circuit was the validity of a written "Memorandum of Transfer", executed in 2008 after the suit had commenced, that purported to document an oral transfer of copyright from Village Vernacular to Barefoot Architect that the plaintiff had claimed had taken place 9 years previously at the time that Milne moved his practice from Village to Barefoot. The Copyright Act requires a valid transfer of copyright to be in writing. However, the writing does not have to be contemporaneous with the transfer. The court held that "an oral transfer can be given legal effect by a subsequent signed writing", particularly in situations where there is no dispute between the transferor and transferee about the ownership of the copyright. However, the court held that the oral transfer must actually have taken place, and there must be some evidence of such earlier oral transfer. In this case, Barefoot was unable to convince the court that an oral transfer had actually taken place in 1999.
The case suggests that a written memorandum of copyright assignment that purports to document an earlier oral transfer should recite the circumstances evidencing the oral transfer in sufficient detail to establish that the oral transfer took place. In addition, it may be advisable for the memorandum also to include a present assignment, in case the memorandum of the earlier transfer is held to be defective.
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