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January 7, 2014 | EntertainmentFrom the blog

Print It! The Power of the Pen Can Bring Copyright Clarity

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On September 27, 2013, a federal judge in New York City held that a film director is not considered a co-author under the U.S. Copyright Act unless the film’s contributors intended for the director to own a portion of the completed film’s copyright.

This case begs the question: How could this situation have been avoided? 

No Contract, No Clarity

The production company, 16 Casa Duse, began work on the short film Heads Up in 2010 after purchasing the screenplay rights and hiring a thirty-person team.  Alex Merkin was hired as the film’s director.  According to the decision, with the exception of Merkin, “every member of the cast and crew executed an agreement… assigning [16 Casa Duse] the rights to their contributions to the Film.”  Merkin, however, was permitted to continue directing Heads Up even though he never assigned his interests to the production company.

As filming wrapped in 2011, Merkin refused to part with his creative rights in the film.  Merkin made an unauthorized copy of the film and filed for federal copyright registration under his own name.  Before long, he was threatening to sue if the production company moved forward with the film.

Merkin sabotaged a private screening of Heads Up in April 2012 with a cease and desist notice addressed to the New York Film Academy.  As a result of Merkin’s claim of copyright ownership, the film missed four festival screenings.

In a preemptive legal move, similar to that of toymaker GoldieBlox, 16 Casa Duse filed a federal lawsuit seeking a declaratory judgment that (i) it wasn’t liable for copyright infringement and (ii) Merkin had no copyright ownership interest in the film.

Although Judge Richard Sullivan recognized the director’s “concrete contributions” to the film, he focused on the fact that neither Merkin nor 16 Casa Duse wanted the other party be a co-author.  “When the Second Circuit finds that there is no mutual intent to be co-authors,” Judge Sullivan determined, “it holds that whoever was the ‘dominant’ author is the sole author.”  Because 16 Casa Duse acquired all rights of every member of Heads Up’s cast and crew except Merkin, the court concluded that the production company “was indisputably the dominant author… and Merkin is not an author at all.”

The Power of the Pen

As Hollywood Reporter’s Eriq Gardner noted, “Hollywood is ruled by contracts.  The biggest reason why discussions over the entitlements of film contributors don’t come up more is the prevalence of written agreements.”  The more clear and well-defined an agreement is in the entertainment industry, the less likely that subsequent copyright clarity disputes will end up in a courtroom.

Both 16 Casa Duse and Merkin stood to benefit from clearly defined provisions addressing copyright ownership.  16 Casa Duse could have avoided Merkin’s assault on the promotion of Heads Up.  Even though Merkin is appealing the decision, the $175,000 judgmentfor legal fees seems to speak for itself.

Moral of this story: avoid the confusion and get it in writing!

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