Second Circuit Denies Film Director Copyright Interest
This past June, the United States Court of Appeals for the Second Circuit decided a case with significant importance for the film industry. This case was 16 Casa Duse, LLC v. Merkin, and the issue, in a matter of first impression for the Circuit, was: “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?”.1 Affirming the decision of the lower court in part, the court answered the question in the negative, agreeing “that copyright does not subsist in individual contributions to that film.”2
In the present case, 16 Casa Duse, LLC, a film-production company owned and operated by Robert Krakovski based in Brooklyn, NY sued Alex Merkin, a film director who was hired by Krakovski to direct a short film based on a screenplay entitled Heads Up.
After confirming Merkin’s services as director, Krakovski made additional production arrangements for the film, including hiring cast and crew, while having each employee sign an agreement to work as an independent contractor. Additionally, Krakovski sent Merkin a work-for-hire agreement to solidify the terms on which Merkin would provide his directorial services. Merkin’s agreement expressly provided that Casa Duse would own all copyright in the film, throughout the world, in perpetuity. However, despite Krakovski’s numerous requests, the work-for-hire agreement was never signed and film production began.
When the film was completed, Krakovski began submitting Heads Up to film festivals and set up a screening at the New York Film Academy (NYFA). However, before this screening took place, Merkin’s attorney Maurice Reichman, sent a cease-and-desist notice to NYFA, ultimately causing the screening to be cancelled. Although Krakovski had explicitly communicated to Merkin that the film was never intended to be a joint venture, Merkin believed that, as director, he owned the rights to the film. Krakovski responded to Merkin’s claims explaining that he only intended for Merkin to direct the film as a work-for-hire and that the rights were the property of Casa Duse. The lawsuit followed as a result of the disagreement and its surrounding events.
In its decision, the Second Circuit ruled that the parties had never entered into a joint venture and furthermore, despite Krakovski’s efforts, Merkin’s directorial services could not be deemed a work-for-hire since the work-for-hire agreement was never executed.3 This lead the court into an open area of law.
The Second Circuit found that “the Copyright Act’s terms, structure, and history support the conclusion that Merkin’s contributions to the film do not themselves constitute a ‘work of authorship’ amenable to copyright protection.”4 Motion pictures often require contributions from various individuals, however for a work of authorship to receive copyright protection, it is required to be a separate and independent work.5 Originality and fixation are prerequisites, but they are not sufficient on their own.6 The Copyright Act’s “uniform absence of explicit protection suggests that non-freestanding contributions to works of authorship are not ordinarily themselves works of authorship.”7
This ruling aligned the Second Circuit with the Ninth Circuit, which ruled similarly on Garcia v. Google, holding that an individual, in this case an actress, does not have a copyright interest in her individual contribution to a finished motion picture.8 The Second Circuit agreed with the Ninth Circuit’s conclusion that allowing individuals copyright interest to their contributions “would result in [a] legal morass[,] . . . [making] Swiss cheese of copyrights.”9
The protections and confidence that copyright laws provide would be undermined if the court had ruled in favor of Merkin. It is certain that numerous issues and disputes would arise if individuals were allowed to claim a copyright interest in their contributions to collaborative film projects. By settling this issue, production companies and their collaborators can now move forward with clarity.
16 Casa Duse, LLC v. Merkin, 791 F.3d 247, 254, 115 U.S.P.Q.2D (BNA) 1185, 1189, 2015 BL 206325, 5 (2d Cir. 2015)↩
Id. at 250.↩
Id. at 255-56.↩
Id. at 256.↩
Id. at 257.↩
Id. at 258.↩
Id at 257.↩
Id. at 258 (citing Garcia v. Google, Inc., 766 F.3d 929 , 933-36 (9th Cir.), rev’d en banc, F.3d , No. 12-57302, 2015 U.S. App. LEXIS 8105 , 2015 WL 2343586 (9th Cir. May 18, 2015)) (thereafter “Garcia (en banc)”).↩
Id. at 258 (citing Garcia (en banc), F.3d at , 2015 U.S. App. LEXIS 8105 , at *23, 2015 WL 2343586, at *6 (internal quotation marks omitted)).↩