16 Casa Duse, LLC v. Merkin

Citing the U.S. Court of Appeals Ninth Circuit’s recent en banc decision in Garcia v. Google (IP Update, Vol. 18, No. 6), the United States Court of Appeals for the Second Circuit affirmed a summary judgment ruling that copyright did not subsist in individual contributions to a film. 16 Casa Duse, LLC v. Merkin, Case No. 13-3865 (2d Cir., June 29, 2015) (Sack, J.)

In 2010, Casa Duse asked director Alex Merkin to direct the short film Heads Up. Merkin agreed and the parties settled informally on a fee for Merkin’s services. Casa Duse had already purchased the rights to the Heads Up screenplay, and the production company hired a cast and crew for the short film. With the exception of Merkin, the cast and crew entered into independent contractor agreements with Casa Duse, which stated that the company would retain control of the film, including the copyright in the work. Prior to production of the film, Casa Duse asked Merkin to enter into a work-for-hire agreement. Although Merkin acknowledged receipt of the agreement and indicated that his lawyer would review it, the parties never reached a finalized agreement prior to beginning production.

After Merkin completed his direction of the film, Casa Duse gave Merkin a hard drive with the raw footage of the film for editing. During this time, the parties continued negotiations with respect to the terms of a media agreement pertaining to Merkin’s editing role, as well the terms of a work-for-hire agreement. However, negotiations collapsed and when Casa Duse demanded return of the hard drive, Merkin refused and stated that he would not allow Casa Duse to release the film without an acceptable agreement in place. Merkin then sent a letter to Casa Duse claiming that he owned the film’s raw footage. In January 2012, Merkin registered a copyright in the raw footage without the knowledge or permission of Casa Duse.

Soon after, Casa Duse began submitting Heads Up to film festivals and made plans to publicize the film. On the date of the scheduled film screening, the venue cancelled the event in response to a cease-and-desist order that Merkin’s attorney allegedly sent to the screening venue. Casa Duse sued Merkin, seeking an injunction against interfering with use and distribution of the film. After receiving a preliminary injunction, Casa Duse filed an amended complaint seeking invalidation of Merkin’s copyright registration as well as a judgment declaring that Merkin did not own a copyright interest in the film. After the district court granted summary judgment on Casa Duse’s claims, Merkin appealed.

The 2d Circuit considered the question of whether a contributor to a creative work whose contributions are inseparable from and integrated into the work maintains a copyright interest in his or her contributions when the contributor was not a sole or joint author and was not a party to a work-for-hire arrangement.

On the facts of the case, the 2d Circuit found that the “Copyright Act’s terms, structure, and history” support the conclusion that Merkin’s directorial contributions to the film did not constitute a work of authorship subject to copyright protection. The court noted that while the Copyright Act specifically lists “motion picture” as a work of authorship, the Act does not list a film’s many constituent parts as works of authorship. Citing Garcia, the court noted that filmmaking is a collaborative process involving artistic contributions from a large number of people, and if copyright subsisted separately in each of the individual contributions to a film, the copyright in the film as a whole would be undermined by all of the individual claims.

The Court clarified that authors of “freestanding” works that are incorporated into a film (such as a dance performance or song) may copyright those separate and independent works. However, unless a director is a sole or joint author of a film, his or her directorial contribution to a film as an integrated work of authorship is not a work of authorship subject to copyright protection.