No Copyright Interest for Film Director’s Contributions

The Second Circuit faced a question of first impression:  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.  (Opinion pdf page 13).

Robert Krakovski owns and operates film-production company 16 Casa Duse, LLC.  Acting as the principal of Casa Duse, Krakovski purchased the rights to Heads Up, a screenplay written by Ben Carlin.  Film director Alex Merkin agreed to direct the film based on the screenplay, also entitled Heads Up.  Except for Merkin, all of the cast and crew members signed an Independent Contractor Agreement with Casa Duse, agreeing that their participation was “work for hire” and that Casa Duse would own the film’s copyright.  Merkin never did sign an independent contractor agreement with Casa Duse, despite receiving numerous email messages from Krakovski requesting Merkin to sign.  Production of the film began in May 2011 without Merkin signing an independent contractor agreement.

A Few More Background Facts

Merkin completed his duties in directing the film.  Krakovski wanted Merkin to edit the footage and gave Merkin a hard drive containing the raw film footage.  Casa Duse and Merkin entered in to a “Media Agreement” under which Merkin agreed to edit the film, and further agreed not to license, sell or copy the footage for any purpose without the permission of Casa Duse.  Krakovski and Merkin entered into an ongoing correspondence, each asserting what he believed to be his rights regarding the film.  Krakovski asserted that Casa Duse owned all rights in the film and Merkin asserted that he owned his contribution.  Merkin refused to return the film footage hard drive after Krakovski demanded that Merkin do so.  Merkin declared that Casa Duse could not release the film without an agreement in place and asserted ownership of the raw footage.  Merkin registered the copyright for the raw footage in his name alone in January 2012.

Having obtained a different film editor, Krakovski began submitting Heads Up to film festivals in March 2012.  As a result of the dispute, Krakovski’s plans for a private screening at the New York Film Academy followed by a restaurant reception had to be cancelled the day of the event and the deadlines for four film festivals were missed. 

Casa Duse sued Merkin and his LLC.  Casa Duse requested the court to declare that Casa Duse was not liable to Merkin for copyright infringement, that Merkin did not own a copyright interest in the film and that Merkin’s copyright registration was invalid.  Casa Duse also asserted tortious interference with business relations and other claims.  The district court granted Casa Duse’s requests for a temporary restraining order and a preliminary injunction enjoining Merkin from interfering with Casa Duse’s use of the film.  Merkin counterclaimed, requesting the court to declare that a motion picture director is an author, that there can be no work for hire or assignment without an express writing, and that Merkin’s copyright registration was valid.  The district court granted summary judgement to Casa Duce on all of its claims.  This post discusses only the copyright claims.

When the case reached the Second Circuit, Casa Duse and Merkin agreed on two things:

1.  Merkin is not a joint author.  Neither party intended to be a co-author.

2.  Merkin’s efforts cannot be considered a work made for hire.  Merkin was not an employee and the parties did not enter into a written work made for hire agreement.

Copyright in Creative Contributions to a Work

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 ‘work of authorship’ amenable to copyright protection.

(Opinion pdf pages 17 – 18).

Section 102(a)(1) of the Copyright Act lists examples of categories of “works of authorship,” such as literary works, musical works and motion pictures and other audiovisual works. 

But the Act lists none of the constituent parts of any of these kinds of works as ‘works of authorship.’ This uniform absence of explicit protection suggests that non‐freestanding contributions to works of authorship are not ordinarily themselves works of authorship.

(Opinion pdf page 20).

The Second Circuit discussed the contributions of various individuals in the motion picture context.

While issues of ‘coownership’ of a copyright may arise in the motion picture context, the question of separate contributions meriting separate copyrights as ‘works’ ordinarily would not, unless the motion picture incorporates separate, freestanding pieces that independently constitute ‘works of authorship.’ In a joint work, the separate elements comprising the work merge into a unified whole, whereas in a collective work, individualsʹ contributions remain unintegrated and disparate.

(Opinion pdf pages 21-22).

The Second Circuit agreed with the Ninth Circuit’s assessment that allowing individual actors to claim a copyright interest in their individual contributions would “would result in a legal morass, making Swiss cheese of copyrights.”  My blog post on that Ninth Circuit decision is No Twisting Copyright Law to Remedy Other Tort Injuries.

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. These various contributors may make original artistic expressions, which are arguably fixed in the medium of film footage. But while originality and fixation are necessary prerequisites to obtaining copyright protection, they are not alone sufficient: Authors are not entitled to copyright protection except for the ‘works of authorship’ they create and fix.

(Opinion pdf pages 23 -24).

The Second Circuit did not rule that a motion picture director can never gain copyright protection for their creative efforts.  “But a directorʹs contribution to an integrated ‘work of authorship’ such as a film is not itself a ‘work of authorship’ subject to its own copyright protection.”  (Opinion pdf page 25).

A final observation: A conclusion other than the one we adopt would grant contributors like Merkin greater rights than joint authors, who, as we have noted, have no right to interfere with a co‐authorʹs use of the copyrighted work. (Joint authorship entitles the co‐authors to equal undivided interests in the work.)  We doubt that Congress intended for contributors who are not joint authors to have greater rights enabling them to hamstring authorsʹ use of copyrighted works, as apparently occurred in the case at bar. We agree with the en banc Ninth Circuit, then, that the creation of ‘thousands of standalone copyrights’ in a given work was likely not intended.

(Opinion pdf page 25). 

Copyright in Raw Film Footage

Merkin argued that he owned all copyright interests in the raw footage of the film.

While Merkin’s creative contributions to the film are not subject to copyright protection, the film footage is subject to copyright protection. 

An original motion picture is surely a ‘work of authorship’ in which copyright protection ‘subsists’ under the Copyright Act.  And where a work is prepared over a period of time, the portion of it that has been fixed at any particular time constitutes the work as of that time. The unedited film footage at issue in this case seems to us to be an early version of the finished product, constituting the film ‘as of that time.’ Because ʺthe Copyright Act affords protection to each work at the moment of its creation, copyright subsists even in such an unfinished work.

(Opinion pdf pages 26 – 27).

Under §201(a) of the Copyright Act, the author or authors initially own the copyright.  Casa Duse and Merkin agreed that they were not joint authors of the film.

In cases in which none of the multiple‐author scenarios specifically identified by the Copyright Act applies, but multiple individuals lay claim to the copyright in a single work, the dispositive inquiry is which of the putative authors is the ‘dominant author.’

The district court concluded, and we agree, that Casa Duse was that ‘dominant author. Our Circuit has not proffered rules for determining which of multiple authors is ‘dominant.’  We have, however, identified ‘factual indicia of ownership and authorship’ relevant to the joint‐author inquiry.  These factors—including decisionmaking authority, billing, and written agreements with third parties,—are also relevant to our dominant‐author inquiry.

(Opinion pdf pages 27 – 28).

In this case, the parties agreed that Merkin exercised a significant degree of control over many creative decisions.  Casa Duse exercised far more decision making authority over the project as a whole.  “Casa Duse initiated the project; acquired the rights to the screenplay; selected the cast, crew and director; controlled the production schedule; and coordinated (or attempted to coordinate) the filmʹs publicity and release.  (Opinion pdf page 29).

For the second factor, billing, the way in which the parties bill or credit themselves provides evidence of intent of authorship.  “Although Merkin evidently sought to retain the right to remove his name from the finished film, both parties initially intended to take some credit for the final product. The billing inquiry as to the raw footage, then, appears to us to be essentially neutral, as we understand will often be the case in the context of a motion picture.”  (Opinion pdf page 29).

The Second Circuit determined that the third factor, the parties’ agreements with outsiders, pointed decisively in favor of Casa Duse.  “Casa Duse obtained written work‐for‐hire agreements from every cast and crew member other than Merkin. Merkin did not, so far as the record shows, enter into any third party agreements. Indeed, nothing in the record suggests he had any intention to do so. Casa Duse also entered into an agreement with the screenwriter, authorizing the very creation of the film as a derivative work.”  (Opinion pdf page 30).

We agree with the district court that in this case, Casa Duse was the dominant author of the film. The record does not reflect any developments that occurred between the creation of the raw film footage and Casa Duseʹs attempts to create a finished product that would alter this analysis as to the raw footage. We thus conclude that Casa Duse, not Merkin, owns the copyright in the finished film and its prior versions, including the disputed ‘raw film footage.’

(Opinion pdf page 30).

This case is 16 Casa Duce, LLC v. Merkin, No. 13‐3865, Second Circuit Court of Appeals.

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