OMG! Jared Leto Loses Copyright Infringement Suit Over Video About Taylor Swift (For Sure!!)
BY JERRY GLOVER
SEPTEMBER 26, 2016
Here’s the latest in the “I Can’t Believe They Are Spending This Much Money on Litigation for This Silly Case” series. Sisyphus Touring, Inc. v. TMZ Productions, Inc., No. 15 CV 09512 (C.D. Calif. September 23, 2016).
Film actor and musician, Jared Leto, hired Naeem Munaf to shoot a video of Leto at his home recording studio in September of 2015. The video showed Leto listening to Taylor Swift’s new album. Toward the end of the video Leto used strong language about Swift. If you don’t mind the F word, you can watch the short video here: http://www.tmz.com/2015/12/07/jared-leto-taylor-swift/. Leto and Munaf signed no documents related to the shoot.
Using a pseudonym, “Jake Miller,” Munaf contacted TMZ through its web site and told the gossip show (I mean, celebrity news show!) about the video. A TMZ rep contacted Munaf and later sent an email stating that TMZ would pay Munaf $2,000 for the purchase of the Leto video. That TMZ representative asked Munaf to reply to his email with “I agree.” A contract and W-9 forms were attached to the email. Munaf did as he was told and sent an “I agree” reply email noting he would fill out the forms and send them to TMZ.
Munaf gave TMZ a web link to the Leto video. A TMZ employee told the TMZ news desk that it now owned the video. Leto found out about this and told TMZ that the video was stolen and that Leto owned the copyright in it. Nevertheless, TMZ broadcast a portion of the tape that was a little over one minute in duration. Leto demanded that Munaf sign a non-disclosure agreement which, among other things, acknowledged that Leto and Munaf had an oral agreement that Leto would own the copyright in the video. Leto apologized to Swift after the broadcast. Munaf asked TMZ not to post the footage claiming that he did not own it. He added that he would not be signing the forms sent to him by TMZ. TMZ never paid Munaf.
After the TMZ broadcast, Leto registered four excerpts from the Swift video in the U.S. Copyright Office. He then sued TMZ for copyright infringement.
WORK FOR HIRE
The main issue was who owns the Swift video? Was it a work made for hire so that Leto owned it or did the videographer, Munaf, own it? The U.S. Copyright Act defines a work for hire as a copyrightable work created by one party at the request of another party. If those parties are in an employer/employee relationship, the employer owns the copyright in the work. No written instrument indicating that relationship is required. If the parties are not employer/employee and if the work falls into one of the work for hire categories listed in the Copyright Act (which includes audio visual works), then the parties must have a written agreement noting that the hiring party owns the copyright. That writing must be signed by both parties.
Leto claimed that the non-disclosure agreement acknowledging the oral agreement that Leto owned the video was sufficient to turn the video into a work made for hire.
The court noted that the U.S. Court of Appeals for the Ninth Circuit (which governs the district court in this case) had never decided wither a written instrument memorializing a prior oral agreement satisfied the purposes of the work for hire provision of the U.S. Copyright Act. It noted that the Court of Appeals for the Seventh Circuit (which governs Illinois among other states) had held that the purpose of the Copyright Act’s work for hire provision was to make ownership of the copyright clear and definite and held that a work for hire document must be executed before a work is created. Schiller & Schmidt, Inc. v. Nordisco Corp., 969 F.2d 410 (7th Cir. 1992). The trial court in the Leto case agreed noting allowing the agreement to be executed after the work was created would defeat the purpose of the work for hire provision: clearly determining copyright ownership. Leto did not argue that Munaf was an employee. Therefore, without a written agreement, Munaf was the copyright owner of the Swift video.
TRANSFER OF OWNERSHIP
TMZ claimed it because the owner of the copyright in the video by a transfer from Munaf. Similar to the work for hire writing requirement, a transfer or copyright ownership from the copyright owner to another requires “an instrument of conveyance, or a note or memorandum of the transfer in writing and signed by the owner.” 17 U.S.C. Sec. 204(a). That written conveyance does not require any special language or magic words; even a one-line statement will suffice. The court held that Munaf transferred his copyright ownership in and to the video to TMZ through the email exchange described above. That exchange included TMZ’s email stating that it was making an offer for the “outright purchase” of the video. Munaf replied via email that he accepted TMZ’s terms. Although the email exchange did not mention a transfer of copyright ownership, the court determined that it clear from the “finality” of the emails that Munaf intended to transfer that ownership to TMZ. The court also determined that a series of emails, rather than one contract-like instrument, could be used to prove transfer of ownership.
The court buttressed its holding about the email exchange by citing to the federal electronic signature law. 15 U.S.C. Sec. 7006. This law defined electronic signature to mean “an electronic sound, symbol or process, attached to or logically associated with a contract or other record and executed or adopted by a person with the intent to sign the record. This type of signature cannot be denied legal effect simply because it is in electronic form. The court noted that an electronic signature in the form of an email from one party to another may affect a valid transfer of copyright.
TAKE AWAY: Attorneys practicing in the area of entertainment/copyright law have seen all too often the result of one party hiring another to create something but never discussing ownership before the work begins. Boring as it may be, get it in writing up front!