The Director’s Cut Out of the Copyright by the Second Circuit

In its June 29 opinion in 16 Casa Duse, LLC v. Merkin, the Second Circuit, citing the Ninth Circuit’s en banc decision in Garcia v. Google, held that a director does not have an independent copyrightable interest in a motion picture. In addition to affirming the District Court’s granting of summary judgment in favor of plaintiff producer, the Court’s 40-page decision also affirmed the plaintiff’s award of costs and attorney’s fees.

Plaintiff’s principal, Robert Krakovski, is the producer of a short film called Head’s Up. Krakovski purchased the film rights from the author of the underlying work and asked defendant, Alex Merkin, to direct the film for a fee of $1500.

Krakovski then proceeded to do what producers do: he assembled the film’s crew of about 30 people, including additional producers, cameramen, technicians and actors. He made all final hiring decisions. All personnel except Merkin entered into written work-for-hire agreements which stated that plaintiff would own and control all of the results of their collective efforts, including the worldwide copyrights to the film.

Krakovski clearly intended that Merkin sign a similar work-for-hire agreement while Merkin balked at this by refusing to respond to Krakovski’s emails. Meanwhile, Krakovski moved forward with the production, including scheduling, and scouting locations. Krakovski was still trying to get Merkin to sign an agreement a week before shooting was to commence. Despite the lack of a written agreement, Merkin directed the three days of shooting for the film.

Thereafter, with the main work-for-hire agreement still not signed, Krakovski asked Merkin to edit the film and the parties, sometimes directly and sometimes through Merkin’s lawyer, Reichman, attempted to negotiate a “media agreement,” which would have included the work-for-hire language. Krakovski provided Merkin with a hard drive of a rough cut of the film for Merkin to edit — despite their being no finalized agreement.

Notwithstanding his concession that Krakovski owned the rights to the screenplay, Merkin asserted that he owned the rights to the “rough cut” of the film and that Krakovski could not use Merkin’s work in the final film without his permission. While the dispute continued, Merkin registered a copyright in the “raw footage for the film Head’s Up” without informing Krakovski and listing himself as the sole author.

Krakovski submitted the film to various festivals and scheduled a private screening in New York City, which was to be followed by dinner at a nearby restaurant which he reserved with a non-refundable deposit. However, Merkin  crashed the party with a purported “cease and desist” notice to the screening venue, which made the venue cancel the screening, which, in turn made Krakovski lose his deposit with the restaurant. The lawsuit followed.

Plaintiff sought a judgment declaring: a) that plaintiff did not infringe defendants’ copyright; b) that defendants owned no copyright interest in the film; and (c) that Merkin’s copyright registration was invalid. Plaintiff also asserted state-law claims for tortious interference as well as attorney’s fees under both Section 505 of the Copyright Act and 28 U.S.C. § 1927. Defendants asserted various claims, including a judgment that a director of a film is an “author” for purposes of copyright.

The District Court granted summary judgment to plaintiff on all claims and assessed attorney’s fees against Merkin and sanctions against his attorney, Reichman. After some additional motions and submissions, the District Court entered a final order assessing damages from the canceled screening event in the amount of $1,956.58 and costs and attorney’s fees of $185,579.65, $175,634 of which Merkin and Reichman would have joint and several liability, with the remaining $9,945.65 assessed solely against Reichman. Merkin and Reichman appealed.

The Second Circuit framed this issue as follows:

This case requires us to answer a question of first impression in this Circuit: May a contributor to a creative work whose contributions are inseparable from, and integrated into, the work maintain a copyright interest in his or her contributions alone? We conclude that, at least on the facts of the present case, he or she may not.

Turning to the copyright claims, the Court first stated that the parties agree that they are not “joint authors” under §101 of the Copyright Act as joint authorship requires the intent of the parties to create a merged, unitary whole and such intent was clearly lacking. A finding of joint authorship (which would include one of joint ownership since the copyright would vest in the film’s authors) would preclude any claims of either infringement or tortious interference since you can’t infringe (or interfere with) your own work against your co-owner. The parties also agreed that Merkin’s efforts cannot be deemed a work-for-hire as he never signed a written agreement to that effect as required by statute.

Having disposed of the copyright preliminaries, the Court then turned to the key issue as to whether Merkin’s contributions to the film could be separately copyrightable:

We have never decided whether an individualʹs non‐de minimis creative contributions to a work in which copyright protection subsists, such as a film, fall within the subject matter of copyright, when the contributions are inseparable from the work and the individual is neither the sole nor a joint author of the work and is not a party to a work‐for‐ hire arrangement. We answer that question in the negative on the facts of the present case, finding that the Copyright Actʹs terms, structure, and history support the conclusion that Merkinʹs contributions to the film do not themselves constitute a ʺwork of authorshipʺ amenable to copyright protection. (citation omitted).

The Court bolstered its conclusion by endorsing the Ninth Circuit’s recent en banc decision Garcia v. Google which reversed Judge Kosinski’s opinion holding that an actor may have a separately copyrightable interest in her performance:

We agree. Filmmaking is a collaborative process typically involving artistic contributions from large numbers of people, including—in addition to producers, directors, and screenwriters—actors, designers, cinematographers, camera operators, and a host of skilled technical contributors. If copyright subsisted separately in each of their contributions to the completed film, the copyright in the film itself, which is recognized by statute as a work of authorship, could be undermined by any number of individual claims.

The Court  therefore concluded these contributions are not independent “works of authorship” under the Copyright Act, unlike free-standing, independent original works such as dances or songs that may be incorporated into a film.

Having disposed of Merkin’s claim to copyright in his contribution to the film, the Court then turned to his claim to own the copyright in the raw footage from which the final film was to be fashioned. Since the parties are not “joint authors,” the analysis then turned to which party was the “dominant author” of the film.

The Second Circuit agreed with the District Court that notwithstanding Merkin’s significant contributions (e.g., camera work, lighting, blocking, actor’s delivery of lines, wardrobe, etc.), Casa Duse “exercised far more decision making authority” particularly with respect to its “agreements with outsiders” noting that plaintiff executed all relevant third-party agreements for the production. As dominant author, the Court concluded that plaintiff owns the copyright in the finished film  — as well as the underlying raw footage.

The Court did throw Merkin a bone, finding that he did not engage in tortious interference with business relations under New York law. Finally, the Court upheld the joint and several liability for costs and attorney’s fees against Merkin and Reichman. First the Court noted that even though plaintiff did not file the copyright registration in issue and sought a declaration of non-infringement (as opposed to seeking damages for copyright infringement), attorney’s fees were nonetheless available under §505 of the Copyright Act. And the joint and several liability was appropriate under 28 U.S.C. §1927.

The holdings of both this case and the Ninth Circuit’s Garcia decision that inseparable, integrated contributions to a motion picture are not independently copyrightable will probably have somewhat limited application as actors, directors and other contributors routinely sign work-for-hire agreements.  And the Second Circuit took pains to limit its holding to the particular facts presented. It will be interesting to see how these holdings may be applied to other collaborative efforts, such as creating and recording popular songs, although work-for-hire agreements are commonplace there as well. As for disputes between “collaborators” who are clearly not joint authors, the Second Circuit’s guidance (even absent a specific test) as to who is a “dominant author” and therefore the owner of the copyright in the work, should be helpful.