The Second Circuit was recently asked to decide whether a contributor to a creative work, whose contributions are inseparable from and integrated into the work, can maintain a copyright interest in his or her contributions.  Aligning itself with the Ninth Circuit’s en banc decision in Garcia v. Google, Inc., the Second Circuit held that, on the facts of the case before it, the contributor could not maintain a copyright interest in his or her contributions.

In 16 Casa Duse, LLC v. Alex Merkin, et al., the Southern District of New York granted summary judgment in favor of the plaintiff 16 Casa Duse, LLC (“Casa Duse”) and against, inter alia, the defendant Alex Merkin, related to the production of a movie entitled Heads Up.

The court’s opinion set forth the facts as follows:

Casa Duse is a movie production company that purchased the rights in the screenplay for Heads Up in September 2010 and sought Merkin’s services as the movie’s director.  Merkin and Casa Duse were unable to execute a work-for-hire agreement prior to producing the movie, despite Casa Duse’s allegedly repeated efforts.  After finishing production in May 2011, Casa Duse sent Merkin the raw footage to be edited, and the parties entered into a “Media Agreement” pursuant to which Merkin would edit but not license, sell, or copy the footage without Casa Duse’s permission.  Merkin allegedly remained adamant that he would not give up his creative rights in the movie and that he retained ownership of his own creative work.  After a fallout in discussions, Merkin again refused to sign a work-for-hire agreement or return the raw footage.  In January 2012, Merkin registered for copyright protection in the movie’s raw footage, identifying himself as the sole author.  In March 2012, Casa Duse sought to publicize and submit the movie to festivals, but Merkin allegedly interrupted its efforts.

In May 2012, Casa Duse sued Merkin, seeking a judgment that, among other things, (1) Casa Duse was not liable to Merkin for copyright infringement; (2) Merkin did not own a copyright interest in the movie; and (3) Merkin’s copyright registration was invalid.  In turn, Merkin requested a judgment declaring, among other things, that (1) a motion picture director is an author; (2) the Copyright Act has no provision for a “merged work”; (3) there can be no work-for-hire or assignment without an express writing; and (4) his copyright registration was valid.  The district court granted summary judgment in Casa Duse’s favor.

On appeal, the Second Circuit affirmed the District Court’s grant of summary judgment in Casa Duse’s favor as to the copyright claims.  It began by noting that the parties did not dispute that (1) Merkin was not a “joint author” or “co-author” under the Copyright Act; and (2) Merkin’s efforts could not be deemed a work-made-for-hire under the Copyright Act.  Nevertheless, it determined that the Copyright Act’s terms, structure, and history supported the conclusion that Merkin’s contributions did not themselves constitute a “work of authorship” subject to copyright protection.

The court cited three other sources of authority supporting its decision:

  • Other Portions of the Copyright Act:  For example, the definition of a “joint work” references multiple contributions but suggests that such inseparable contributions are not themselves works of authorship.  Additionally, although copyright may subsist in contributions to a collective work, that is true only when such contributions constitute “separate and independent” works (rather than inseparable contributions integrated into a single work).
  • Legislative History of the Copyright Act:  The legislative history of the Copyright Act recognizes that movies are normally a joint work rather than a collective work with respect to the authors that work on the movie.  Typically, such contributors’ status as employees-for-hire would keep the question of coownership from coming up.  Ordinarily, movies do not involve issues of collective works, because the different elements of a movie typically merge into a unified whole.  Collective works, on the other hand, incorporate separate, freestanding pieces that independently constitute “works of authorship.”
  • Previous (Non-Binding) Decisions:  In an unrelated case, the Copyright Office had previously indicated that an individual lacking a work-for-hire agreement who intends his or her contribution to be merged into an inseparable part of a work may assert a claim for joint authorship in the picture, but not sole authorship in his or her portion of the work.  And in the Ninth Circuit’s en banc decision in Garcia v. Google, Inc., it upheld the Copyright Office’s view and concluded that granting ownership in inseparable contributions to a single work would result “in a legal morass” and make “Swiss cheese of copyrights.”

According to the court, because filmmaking is a collaborative process involving a large number of people, permitting copyright to subsist separately in each contribution would undermine the copyright in the movie itself.  Despite the fact that such contributions might be (1) original artistic expressions and (2) fixed in the medium of film footage, those factors alone are not enough to warrant copyright protection.  Instead, such protection reaches only “works of authorship.”  Because such contributions are not by themselves works of authorship, they are not entitled to copyright protection.

In sum:

The Ninth Circuit, Second Circuit and Copyright Office have all agreed that individual contributions to an inseparable work (such as a movie) generally do not themselves warrant copyright protection.  The rationale for this rule is that because collaborative projects such as films involve such a large number of people and contributions, granting copyright protection to each individual contribution would have negative consequences, including undermining the copyright in the film itself.  Because such contributions are not “works of authorship,” they do not qualify for protection under the terms of the Copyright Act.