Because many creative people participate in the making of an artistic, documentary or commercial film, in order to exploit the film efficiently, it is critical to pinpoint who owns the copyright in the finished work as well as in the raw footage.
Congress recognized that an unwieldy situation could arise with respect to the control of a film’s copyright unless there was a way for all copyright interests to reside with a single owner. This is because if a non-employee of the producer made a creative contribution during a film’s production, such contribution could be viewed as copyright protected. To address the problem, Congress adopted a mechanism in the Copyright Act of 1976 (the “Act”) which treats any such contribution as a work-made-for-hire (“WMFH”) [WMFH Described] if the parties so agree in a signed document. Under such circumstances, all copyright rights in any creative contributions belong to a single owner, most likely the producer.
In a perfect world, that should solve the problem. But what if one of the major contributors, (i.e., the director or an actor) fails to sign such an agreement? Would the producer be helpless and subject to the vagaries of competing claims to the film’s copyright? The 2nd U.S. Circuit Court of Appeals recently considered this question in 16 Casa Duse v. Merkin [2nd Cir. Opinion] and came down on the side of the producer, Casa Duse, LLC, (“Casa Duse”) owned by Robert Krakovski, to the chagrin not only of the film’s director, Alex Merkin, but also of his attorney, Maurice Reichman.
The main facts are that Krakovski purchased the rights to a screenplay so as to finance and produce a film based on it. He asked Merkin to direct the film and they informally settled on a fee for Merkin’s services. Krakovski assembled the cast and crew for the film, each of whom signed an independent contractor agreement which provided that their work product would be treated as a WMFH. Despite being asked several times, Merkin did not sign such an agreement.
Eventually, filming went forward with Merkin as the director. Later Krakovski gave Merkin a hard drive containing the raw film footage for Merkin to edit. There was a period of negotiations between the parties because Krakovski wished to clarify that Casa Duse owned the raw footage and had not relinquished any rights it would have had were a WMFH agreement in place. For his part, Merkin claimed copyright ownership in the raw footage. When Krakovski demanded the return of the raw footage, Merkin refused and warned Krakovski not to release the film without an agreement in place because he owned the footage.
Unbeknownst to Krakovski, Merkin registered a copyright in the film with the U.S. Copyright Office asserting that he was its sole author. Krakovski had the footage edited by someone else and began submitting the finished film to festivals. Due to threats made from Merkin’s camp, a promotional screening was cancelled and Casa Duse missed several film festival submission deadlines.
Casa Duse sued Merkin seeking a declaratory judgement that its actions did not infringe any rights of Merkin. The trial court granted summary judgement to Casa Duse and awarded it judgement declaring: Merkin did not own a copyright interest in the film; his copyright registration was invalid; and permanently enjoining him from interfering with Casa Duse’s use of the film. The court also awarded Casa Duse attorney fees and costs amounting to $185,579.00 jointly and severally against Merkin and his attorney. [Attorney Sanction Authority]
Following this rout, Merkin and Reichman appealed to the 2nd Circuit Court of Appeals. The Circuit Court in its ruling addressed three major questions:
1. Can Copyright Protection Be Accorded to Creative Contributions Which Appear in a Work of Authorship?
The Circuit Court read the Copyright Act to require that only works considered to be “works of authorship” were eligible for copyright protection. The categories of “works of authorship” listed in Section 102 of the Act [17 USC 102] includes “motion pictures and other audiovisual works.” As part of its reading, the Court noted that the Act does not list constituent parts of any of the listed categories of “works of authorship.” According to the Court,
“This uniform absence of explicit protection suggests that non-freestanding contributions to works of authorship are not ordinarily themselves works of authorship.”
Thus the Circuit Court agreed with the trial court that Merkin’s contribution to the film did not amount to a “work of authorship.”
While the 2nd Circuit recognized that many people (i.e., directors, screenwriters, actors, designers) make artistic contributions to a film, nonetheless:
“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 . . . .”
To further buttress its conclusion, the Circuit Court cited Garcia v Google, Inc. [9th Cir. Opinion] in which the 9th Circuit U.S. Court of Appeals ruled that the performance of an actress in a film did not amount to a “work of authorship” which could be protected by the Act. 1/
2. Who Owned the Copyright in the Raw Film Footage?
Merkin claimed that he owned all of the copyright interests in the “raw film footage.” The Court allowed that, unlike his creative contributions to the film, the unedited film footage, being an early version of the final product, was entitled to copyright protection. However, when multiple parties claim authorship in a single work, a court will look into which of the putative authors is the “dominant author.” After considering a number of factors, the trial court concluded, and the 2nd Circuit agreed, that Casa Duse was the “dominant author” because it made most of the relevant decisions for the project and, except for Merkin, had entered into third party agreements with all others involved in the film’s production.
3. Should Attorney Fees and Sanctions Be Assessed and Against Whom?
The Circuit Court upheld the trial court’s decision to award attorney fees to Casa Duse under the Act despite the fact that it had not registered a copyright, which would have been required in order to proceed with a copyright infringement claim. However, Casa Duse was not claiming infringement but rather it sought a declaratory judgment that it did not infringe Merkin’s putative copyright.
Similarly, the Circuit Court confirmed the trial court’s sanction award against Merkin’s attorney on the basis of 28 U.S.C. §1927 which allows a court, when it finds that an attorney’s conduct “so multiplies the proceedings in any case unreasonably and vexatiously” to require the attorney “to satisfy personally the excess costs, expenses, and attorneys’ fees reasonably incurred because of such conduct. “ In this case, the lawyer, Reichman, was held jointly and severally liable with Merkin for $175,634.00 and was solely responsible for over $9,000.00.
What is the takeaway for filmmakers and business owners who hire others to produce films for them? As may have unfortunately been the case for Casa Duse, do not become so swept up in the film making process as to forget or not to require those working on the production to sign agreements which make it clear who owns the copyright in any of their creative contributions.
1/ Garcia v Google [news account] concerned the actress, Cindy Garcia, who claimed that a clip of her performance in one film was then dubbed and inserted into an anti-Islamic film which appeared on YouTube. Ms. Garcia received death threats and, claiming copyright in her individual performance, sought to have Google remove the film titled “Innocence of Muslims” from the YouTube website. The initial injunction prohibiting Google from broadcasting the film was later lifted by an 11-judge panel of the 9th U.S. Circuit of Appeals.