Pressing “Send” Might Be an Accidental Step in Assigning Your Copyright: 11th Circuit Deems Email a Valid Assignment of Plaintiff’s Music Copyright

Pressing “Send” Might Be an Accidental Step in Assigning Your Copyright: 11th Circuit Deems Email a Valid Assignment of Plaintiff’s Music Copyright

Warning! Always consider your emails before you send them - what they truly are. If you see them as non-substantive notes on electric paper, bound only by the monitor and without the consequences of tangible print, big mistake! It's best to remember that the four-corners of your inbox can be analogous to the four-corners of a contract. This was made apparent in a recent decision from the 11th Circuit.

In Hermosilla v. Coca-Cola Co., 2011 U.S. App. LEXIS 22241 (11th Cir. Fla. Nov. 3, 2011) [enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law], the 11th Circuit determined that Rafael Vergara Hermosilla's email constituted a contract to assign his copyright interest in a song's adaption.

Coca-Cola contacted Jose Puig of Universal Music Latin America to produce the Spanish version of a song. Puig sought advice from Rafael Artero of Universal Music Publishing Group, and Artero recommended Vergara, who had a contract with Universal Group.

Vergara adapted the song into Spanish, but a dispute arose regarding Vergara's credit and his "adapter's share" of the profits. Vergara emailed Puig:

[B]ecause I am a man of my word and honor, that is not moved by economic motives, my only request is that my credits are respected as producer and adapter of the Spanish version (that every time the name of any composer of this version appears, my name appears as adapter), and obviously the credits for the production that are detailed in the invoice sent for this production, which I have detailed below.

For the adaptation, you may consider it a work for hire with no economic compensation to that respect. I believe what's legal is a dollar.

I hope that this leaves clear what my work was and what my good intentions were from the beginning.

Puig responded with an email stating:

Rafa, we are aware of your goodwill from the beginning, and most of all, we are aware of how hard you had to work given the little time we gave you. You can count on the credits on the track. I am resending you the contract.

Universal Group later assigned its copyright in the adaptation to Coca-Cola. In the contract, Universal stated that it had acquired the copyright from Vergara.

Vergara unsuccessfully sued Coca-Cola for copyright infringement. It was determined that Vergara entered a contract to assign his copyright interest in his adaptation to Universal. Vergara agreed to sell his rights to the lyrics for a dollar so long as he received credit for his contribution, and Puig accepted that condition of sale on behalf of Universal. The 11th Circuit held that:

the record establishes without dispute that Vergara assigned his copyright interest to Universal. Under Florida law, parties enter a contract when "there was a definite proposal by one party which was unconditionally accepted by the other." To make this determination, a reviewing court must "place itself in the situation of the parties, and from a consideration of the surrounding circumstances, the occasion, and apparent object of the parties, . . . determine the meaning and intent of the language employed." Vergara stated in his email on March 4, 2009, that his "only demand" to assign his copyright interest was that he receive credit as the adapter and producer. Puig "unconditionally accepted" that condition in his email on March 5, 2009, in which he told Vergara to "count on the credits on the track." Puig's acceptance on behalf of Universal was effective to create a contract with Vergara because it "match[ed] the terms of [his] offer." The two emails were "so connected with each other that they may be fairly said to constitute . . . a complete contract."

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