Film Director Fails To Sign Work For Hire Agreement Then Claims Copyright Ownership Of Film—Really!
July 24, 2015
by Jerry Glover
The federal court of appeals in New York recently ruled that the director of a motion picture is not the copyright owner of that film even if he didn’t sign a work-for-hire agreement which acknowledges that the producer is the sole copyright owner of the film (a work-for-hire agreement). 16 Casa Duse, LLC v. Merkin, 2015 WL 3937947 (2d Cir. June 29, 2015). This ruling follows on the coattails of another recent federal appeals court decision—this one in California—which held that an actor does not own any copyright interest in her performance even where no work for hire agreement was signed. See Garcia v. Google, Inc., 2015 WL 2343586 (9th Cir. 2015).
In the most recent case, the production company, 16 Casa Duse, hired defendant Merkin to direct a film. Merkin never signed the work-for-hire agreement which other members of the production had signed. Nevertheless, the production company allowed him to direct the film.
After principal photography was completed, the production company gave Merkin a hard drive containing the raw film footage so that Merkin could provide a director’s cut of the film. The parties entered into what they called a Media Agreement which noted that Merkin would edit but would not license or sell the footage without the production company’s permission. When the production company later suggested amendments to the Media Agreement, Merkin agreed but noted that he was “not giving up any creative or artistic rights” he had in the project and that “all of [his] creative work … is still [his] work and not the property of [plaintiff[.” The producer replied that the film was never intended to be a joint venture with Merkin. Negotiations on the agreement collapsed and the production company demanded the return of the raw footage. Merkin refused to do so. He went even farther and “forbade” the use of the footage for any purpose including release of the motion picture. He then proceeded to register the raw footage in the U.S. Copyright Office under his name as the sole author. He did not create a director’s cut. The production company created its own final cut of the film.
The production company then filed suit against Merkin seeking a declaration that it was the sole copyright owner of the film and that Merkin’s copyright registration was invalid. The trial court found in favor of the production company and Merkin appealed.
The federal appellate court affirmed the trial court judgment. The court first noted that the parties agreed they were not joint authors of the film for copyright purposes. In order for two or more parties to jointly own a copyright they must, among other things, intend to be joint owners. Here the court said it was clear from the facts that the production company never intended to share ownership with Merkin.
The court then noted that it had never decided the question of whether significant creative contributions to a work, like a film, fall within the subject of copyright when those contributions (i) are inseparable from the work, (ii) the individual is neither the sole nor joint author of the work, and (iii) is not a party to a work-for-hire agreement. The court concluded that Merkin’s contributions to the film as director do not constitute a work of authorship that would be protected by copyright.
The Second Circuit noted that the Copyright Act does not define “works of authorship” but it does list examples of work of authorship that are given copyright protection including motion pictures. Motion pictures and similar works of authorship like dramatic works are expected to have contributions from multiple sources. For a motion picture contributions can come from dozens, if not hundreds, of people: actors, cinematographers, writers, set designers, costume designers, CGI technicians, etc. But the court added that the Act does not state that any of these contributions are considered “works of authorship.” This lack of explicit protection, the court concluded, means that on-freestanding contributions are not works of authorship. The appellate court added that even the U.S. Copyright Office has noted that a person who had contributed to a motion picture without signing a work-for-hire agreement might assert a claim of joint authorship but could not assert a claim of sole authorship of the entire film.
The court quoted from the 9th Circuit case noted above in which an actor claimed copyright ownership of her performance in a film: “Film making is a collaborative process typically involving artistic contributions from large numbers of people … . If copyright subsisted separately in each of their contributions to the completed film, the copyright in the film itself …could be undermined by any number of individual claims.”
Merkin had also contended that he owned the copyright in the raw film footage which had been delivered to him for creation of a director’s cut. The Second Circuit stated that the principal question that determines ownership is which of the so-called authors is the “dominant author.”
The court looked to its previous rulings involving joint authors and determined that the “dominant author” should be determined by which has decision making authority, billing in the film and written agreements with third parties. Decision making authority refers to the parties’ relative control over what changes are made and what is included in a work. The court noted that Merkin, as director, had made significant decisions about elements to include in the film but that the production company had far more decision making authority—it initiated the project, it acquired the rights to the screenplay, it selected the cast and crew, it controlled the film’s publicity and release, etc.
As to the billing consideration, the court noted that both parties intended to take some credit in the final product so this factor was neutral.
Finally, the court noted that the production company had obtained third-party work-for-hire agreements from all crew members and the screenwriter. Merkin had obtained no similar third-party agreements for the film. Consequently, the production company was the dominant author and owner of the raw footage copyright.
NOTE: Although it was not necessary to the decision, the Second Circuit commented in a footnote on the meaning of part of the test to determine whether two or more people/entities could be considered joint authors of a work. Typically, the test for determining joint authorship has two parts: (i) whether the parties intended to create a unified work as co-authors and (ii) whether each party made an independently copyrightable contribute to the work. The court explained in the footnote that “copyrightable” meant only that the co-author’s contribution must be the product of authorship and that the coauthor need not be able to obtain a copyright on his/her separate contribution. This explanation means that minor contributions to a so-called joint work which might not be separately copyrightable would still be enough for a person to be considered a joint author assuming the intent elements is also met). But, again, this comment was only dicta and did not concern an issue raised in the appeal. We believe, however, it is likely to surface as an issue in a future case.