Second Circuit Blesses, Expands on Garcia, Director Denied Separate Copyright in Film

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By Tony Dutra

June 29 — Copyright in a film would be “undermined by any number of individual claims” if each participant's creative effort could be separately protected, the Second Circuit ruled on June 29.

The Second Circuit's ruling was in line with the Ninth Circuit's ruling, in Garcia v. Google, that an actress's performance was not separately copyrightable.

But the Second Circuit went further, concluding that the director of the film in its case did not have independent rights, even though the production company agreed that the director had never signed a work-for-hire agreement and handed a pre-editing fixed copyrightable item—a hard drive with raw footage—to the director for editing purposes.

The court left open the possibility that a director who is also sole or joint author of the film could secure copyright protection for the work, but said that “a director's contribution to an integrated work of authorship such as a film is not itself a work of authorship subject to its own copyright protection.”

Film Made Without Committing Director

Film production company 16 Casa Duse LLC agreed to pay Alex Merkin $1,500 to direct “Heads Up,” which website called “an edgy, comedic story.”

The firm's owner and operator Robert Krakovski is listed as executive producer; he purchased the rights to the screenplay from its author.

Merkin and his attorney Maurice A. Reichman parried Krakovski's attempts to get him to sign a work-for-hire agreement, but filming went ahead with Merkin as director anyway. Still without an agreement, Krakovski gave the hard drive to Merkin to edit the raw footage as well.

Merkin never did and Krakovski hired another editor, while Merkin held onto the hard drive.

After Merkin interfered with Krakovski's planned showing of the finally edited film in New York, the latter sued for tortious interference with business relations and sought a declaration that Merkin's registered copyright was unenforceable and that it did not infringe Merkin's copyright.

Judge Richard J. Sullivan of the U.S. District Court for the Southern District of New York granted summary judgment in favor of Casa Duse, including an award of attorneys' fees that added Reichman to the parties liable for damages.

Film Is Collaborative Process

The Second Circuit, in an opinion written by Judge Robert D. Sack, acknowledged that Merkin presented a question of first impression for the circuit: “We have never decided whether an individual's non-de minimis creative contributions to a work in which copyright protection subsists, such as a film, fall within the subject matter of copyright, when the contributions are inseparable from the work and the individual is neither the sole nor a joint author of the work and is not a party to a work-for-hire arrangement.”

The court acknowledged further the Ninth Circuit's Garcia v. Google opinion and a Copyright Office brief in that case, both of which it found persuasive.

“Filmmaking is a collaborative process typically involving artistic contributions from large numbers of people, including—in addition to producers, directors, and screenwriters—actors, designers, cinematographers, camera operators, and a host of skilled technical contributors,” the court said. “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.”

Other than the director-as-author exception, the court cited copyrightability, separately, for “authors of freestanding works that are incorporated into a film, such as dance performances or songs.”

But neither applied here, the court said, leaving Merkin without any copyright claim as editor.

Casa Duse Owns Raw Footage Too

The court conducted a different analysis for the hard drive, which Merkin had since copied onto four DVDs. That unedited work was not the finished product, the court said, and there may be a separate question as to ownership of copyright in that work.

However, the parties agreed that this was not a “multiple-author” scenario as envisioned by 17 U.S.C. §201(a), allowing for multiple copyrights in a single work. It thus would be resolved by determining the “dominant author,” the court said, and that was still Casa Duse.

Two of the relevant “factual indicia of ownership and authorship”—decision-making authority and written agreements with third parties—favored the production company here and the third, billing, was “essentially neutral.”

‘Misguided' Belief Not Tortious Interference

The court reversed the district court's judgment as to tortious interference with Casa Duse's planned screening, though.

Casa Duse complained of Merkin's “insistent assertion of his copyright interest.” But, under New York state law, the firm had to show that he “acted for a wrongful purpose or used dishonest, unfair, or improper means,” the court said.

Saving Merkin here was that the Ninth Circuit, sitting en banc, had overturned the panel's decision in Garcia v. Google. Thus, the court said, “at least one appellate panel” had the same view as Merkin, such that his own copyright claims “were not frivolous, objectively unreasonable, or patently meritless.”

Merkin's “insistence, however misguided, on his copyright interest,” could not support the requirement for “egregious wrongdoing” necessary to support the interference claim, the court concluded.

Attorneys' Fee Award Remanded

The court rejected the defendants' arguments that they were not liable for an award of fees.

Merkin was liable for costs and fees under 17 U.S.C. §505, as the court said that it didn't matter that Casa Duse sought a declaration that it didn't infringe Merkin's copyright—i.e., Casa Duse did not have to rely on registration of its own copyright to seek attorneys' fees.

And though the Copyright Act allowed for fees only against a “party,” Reichman was liable under 28 U.S.C. §1927—“Counsel’s liability for excessive costs.”

However, given that the court now took the tortious interference judgment out of the discussion, it remanded for the district court to “reconsider its grant of costs and fees and its imposition of sanctions.”

Chief Judge Robert Allen Katzmann and Judge Gerard E. Lynch joined the opinion.

Eleanor M. Lackman of Cowan, DeBaets, Abrahams & Sheppard LLP, New York, represented Casa Duse. Reichman represented himself and Merkin.

To contact the reporter on this story: Tony Dutra in Washington at

To contact the editor responsible for this story: Blake Brittain in Washington at

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