Court Implies Producer May Have To Infringe On Rights To Buck Rogers Character To Find Out If He Has Infringed

Court Implies Producer May Have To Infringe On Rights To Buck Rogers Character To Find Out If He Has Infringed

March 30, 2016
by Jerry Glover

A California-based film production company was developing a film based on the Buck Rogers sci-fi character. The estate of the man who created that character threatened to sue the company. So the production company filed a declaratory judgment action in Pennsylvania federal court to determine whether the Buck Rogers character was protected by copyright or in the public domain (if the latter, anyone is free to create a Buck Rogers film). Team Angry Filmworks, Inc. v. Geer, 2016 WL 1086370 (W.D. Pa. March 21, 2016). The trust argued that the plaintiff company lacked standing to sue.

Philip Nowlan created the Buck Rogers character. He first appeared in a story under the name “Anthony Rogers” in a 1928 magazine story. Nowlan died in 1940 and the magazine article appears to have entered the pubic domain in the United States in 1956 and worldwide in about 2010. The plaintiff film company started developing a motion picture based on the Buck Rogers character. The producer’s development activities included the following: retaining the services of two people as producers; retaining the services of two screen writers; authorizing the commencement of the writing of the screenplay; hiring a visual effects supervisor to start “pre-visualization” on the project; and obtaining interest from two film studios to fund the production with a budget equal to or in excess of $100 million.

After the producer publicly announced the film project, the trust vigorously asserted its rights in and to the Buck Rogers character and threatened a lawsuit in phone calls and letters to the production company. The producer claimed these threats have destroyed interest by third party studios in funding and distributing the film noting that these threats made further development of the project virtually impossible. Since the production company believed the character was in the public domain, it filed a suit in federal court seeking a declaratory judgment that the copyright had expired throughout the world in the magazine article (and, therefore, the Buck Rogers character).

The court noted that the federal Declaratory Judgment Act allows US courts to declare a party’s rights “in a case of actual controversy.” 28 U.S.C. Sec. 2201(a). This means the production company which would be the one the trust sues gets to serve as the plaintiff and find out if the rights the trust asserts are valid. But what does “actual controversy” mean?

The U.S. Supreme Court uses the following test to determine whether an actual controversy (i.e., a justiciable controversy) exists: the declaratory-judgment plaintiff (the film producer) actually produced or was prepared to produce an allegedly infringing product (the film) and, considering the totality of the circumstances, the controversy is “definite and concrete, touching the legal relations of parties having adverse legal interests. MedImmune, Inc. v. Genetech, Inc., 549 U&.S. 118 (2007) [hereinafter “MedImmune”]. The controversy must also be real, substantial and immediate.

In intellectual property cases, a court asks whether there potentially infringing activity has occurred or whether there has been “meaningful preparation” to conduct that activity. Courts have noted that if the declaratory-judgment plaintiff has not taken “significant, concrete steps” to conduct infringing activity, the controversy is neither immediate nor real. If that is the case the court will dismiss the declaratory judgment request.

The Pennsylvania court ruled that the steps the producer had claimed to have taken so far to produce the Buck Rogers film were merely “vague allegations” and not significant, concrete steps toward producing and releasing the film. Therefore, the dispute lacked immediacy and reality.

On the question of immediacy: the court noted that the longer the amount of time before the infringing activity is expected to occur, the more likely the case lack immediacy. Here the producer did not claim when film production would begin or, if finished, when the film would be released. So the court could not say that the producer was immediately prepared to engage in activity that might violate the trust’s copyright.

On the question of reality: A dispute is not real if it involves contingent future events that may not occur as anticipated or may not occur at all. Here there was no allegation from the producer that it had hired or entered into even preliminary agreement with those parties who would be integral to the commencement of production or release of a major motion picture such as directors, lead actors, cinematographers and effects supervisors. The producer did not allege the screenplay had even gone through one complete draft; even if that had occurred, a script can undergo many changes before cameras start to roll. So it was impossible for the court to determine if the “film” would infringe on any rights held by the trust.

It should be noted that it is common for attorneys to believe that the threat of litigation (as occurred in this case) is sufficient, by itself, to create an actual controversy for declaratory judgment filings. The Buck Rogers court noted that after MedImmune this is no longer true.

A question remains: how far must the Buck Rogers producer go in the production process before the controversy becomes “immediate and real.” Must all pre-production activities leading to commencement of principle photography be completed? Must principal photography be completed? Must the film be released to the public?

In 1986, Walt Disney sued an animation company for copyright infringement (among other things) because the animation company had implemented plans to produce and distribute of a film entitled “The New Adventures of Pinocchio.” Walt Disney Productions v. Filmation Associates, 628 F. Supp. 871 (C.D. Cal. 1986). The animation company had completed much preliminary work on the film but had not actually completed the film. The company argued, therefore, that it could not be sued for any claims based on the film. The company argued further that the completed materials were only transitory steps toward a finished product. But the court noted that the completed articles included a script, story board, story reel and promotional trailer. The court added that dismissal of Disney’s copyright claims was not required just because the elements produced by the animation company at that point were not published (so that the public might see/read them). Copyright infringement occurs, the court noted, even if an unauthorized copy is made solely for the reproducer’s private purposes. The court added that the materials the animation company had completed were detailed enough to determine if the film would infringe Disney’s rights.

The Disney case was not a declaratory judgment case. But its facts are quite similar to our Buck Rogers plaintiff’s situation. But in Disney the animation company appears to have gone further in its pre-production phase than our plaintiff. Nevertheless, no film was completed in either case.

Perhaps the Disney case is a “guide” for the Buck Rogers plaintiff to determine when another declaratory judgment action might be filed. Of course, this means the plaintiff would have to spend large sums of money to get as far as the animation company in Disney had gone as well as additional sums to file another declaratory judgment action.

So does a film producer have to actually produce a film before asking a court if it has violated a copyright owner’s rights? What producer would go that far on the slim hope that a court will find that the film does not infringe those rights?

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