BY:Neil J. Rosini, Michael I. Rudell
tel(Originally published in the Entertainment Law column in the New York Law Journal on September 30, 2015)
In 2014 and again earlier this year, the Ninth Circuit considered in Garcia v. Google, Inc. whether an actor in a film owned the copyright in her five-second performance in the absence of either joint authorship or a work-for-hire agreement. A divided three-judge panel initially ruled for the actor, but the court sitting en banc subsequently decided otherwise because “[the plaintiff’s] theory of copyright law would result in … [a] legal morass… splintering a movie into many different ‘works’ even in the absence of an independent fixation.”
The focus of attention on the subject of film authorship (and ownership) shifted east this summer when a three-judge Second Circuit panel in 16 Casa Duse, LLC v. Alex Merkin et al.  decided — without dissent — that a production company owned the contribution of a director to a film, also in the absence of either joint authorship or a work-for-hire agreement. Judge Robert D. Sack, who wrote the opinion, generally followed the trail blazed by Garcia but in some respects went beyond it. The court separately analyzed copyrightability of the director’s “inseparable” contribution to the completed film and then addressed ownership of raw footage by applying a test of “dominant author.”
The Facts of the Case
Events began in 2010 when Robert Krakovski, the owner and principal of 16 Casa Duse, LLC, a production company based in Brooklyn bought rights to a screenplay called “Heads Up” from its author on behalf of Casa Duse. Krakovski then hired appellant Alex Merkin to direct a short film based on it for a fee of $1,500.
Krakovski assembled the actors, cast and crew, hired additional producers, a script supervisor, a photography director and others, creating an ensemble of about thirty. Merkin made some recommendations about hiring but Krakovski made all of the ultimate decisions. Merkin, Krakovski and others planned details of the production such as props, locations and sceheduling. While all the other cast and crew members entered into work-for-hire agreements with Casa Duse making it the owner of copyright, Merkin did not despite several requests from Krakovski.
Nevertheless, production went forward with Merkin as director. Krakovski then gave Merkin a hard drive containing the film’s raw footage which Merkin agreed to edit pursuant to a “Media Agreement.” In that document, Merkin agreed not to license, sell or copy the footage without permission from Casa Duse.
Still without a work-for-hire agreement, Krakovski sent Merkin an email to propose clarifications to the Media Agreement to the effect that Casa Duse owned the footage and had not given up any “directorial/editorial terms [or] rights” that would finally appear in a work-for-hire agreement.” Merkin countered that he was “not giving up any creative or artistic rights” himself and that “all of [his] creative work … is still [his] work” and not the property of Casa Duse. Krakovski responded that he intended a work-for-hire relationship with Merkin and not a joint venture.
Negotiations continued along these lines for a few months before collapsing. Merkin then refused to return the hard drive and asserted that Casa Duse could not release the film without an agreement with him. Merkin also claimed to own the raw footage and threatened to inform film festivals that Casa Duse (which by then had found another editor) lacked rights to the film. Unbeknownst to Krakovski, Merkin also registered the copyright in the raw footage in his own name as sole author.
Krakovski nevertheless began submitting the film to festivals and scheduled an invitation-only screening at the New York Film Academy in April, 2012 and a reception afterward. But when the Merkin camp threatened the NYFA with a cease and desist order to prevent the screening from going forward, the NYFA cancelled. Casa Duse missed at least four film festival submission deadlines while the dispute continued. In May, 2012, it sued both Merkin and his lawyer and was soon granted a preliminary injunction enjoining Merkin from interfering with Casa Duse’s use of the film.
Among other claims in the action, Casa Duse sought a judgment declaring that it was not liable to Merkin or Merkin’s company for copyright infringement; neither Merkin nor his company owned a copyright interest in the film; and Merkin’s copyright registration was invalid. Merkin counterclaimed on various grounds, seeking a judgment that a motion picture director is an author; Merkin’s copyright registration was valid; and there can be no work-for-hire or assignment without an express writing; and other relief. The district court granted summary judgment to Casa Duse on all of its claims along with $185,579.65 in attorney’s fees and costs for which Merkin and his lawyer were held jointly and severally responsible, except for about $10,000 for which the lawyer was solely responsible. Merkin and his lawyer appealed.
Ownership of the Finished Film
Before addressing ownership of the raw footage, the court first disposed of Merkin’s claim to own a copyright in his directorial contributions to the finished film.
First, the parties did not dispute that Merkin was neither a joint author of the film nor an employee for hire, which would have made Casa Duse sole owner. To be a joint author, Merkin needed to show that both he and Casa Duse made independently copyrightable contributions and fully intended to be co-authors. Even assuming the former, evidence showed that neither Krakokvsky nor Merkin intended the latter. And – as the parties recognized from the outset — Merkin’s services could not be considered a work-for-hire in the absence of a signed written agreement making them so.
That left the Court with a question of first impression in the Second Circuit: if an individual’s creative contribution to a work, such as a film, is not “de minimis” and is inseparable from and integrated into the work, and he is neither the sole nor joint author of the work nor an employee for hire, then may that individual maintain a copyright interest in his or her contribution as an independent work of authorship amenable to copyright protection? The court answered its question in the negative, “at least on the facts of the present case,” relying on the Copyright Act’s terms, structure and history.
Although the Copyright Act does not define the term “works of authorship,” it does give examples like “literary works, “ “musical works,” and most relevantly, “motion pictures and other audiovisual works.” (See Section 102(a).) Creative efforts that are not “similar  or analogous to any of the listed categories” tend not to fall within the subject matter of federal copyright protection, and the Act does not refer to constituent parts of these types of works as works of authorship. This suggested to the court that “non-freestanding contributions” ordinarily are not themselves works of authorship.
The court supported its conclusion with other Copyright Act provisions. The definition of “joint work” refers to “contributions … merged into inseparable or interdependent parts of a unitary whole,” which suggests the contributions are not themselves works of authorship. (See, Section 101.) And contributions to a collective work enjoy independent copyright protection when they are “separate and independent”. (See, Sections 101 and 201(c).) Accordingly, “inseparable contributions integrated into a single work cannot separately obtain such protection.”
The legislative history of the Copyright Act took the court to the same place. The House Report on the 1976 Act observed that a “motion picture would normally be a joint rather than a collective work with respect to those authors who actually work on the film, although their usual status as employees for hire would keep the question of coownership [sic] from coming up” – distinct from novelists, playwrights, and songwriters whose “separate or independent authorship” is given separate copyright protection. Accordingly, said the court, in a motion picture context the question of separate contributions meriting separate copyrights ordinarily would not would not come up “unless the motion picture incorporates separate freestanding pieces that independently constitute ‘works of authorship.’”
The court favorably cited a similar interpretation of the Act by the Copyright Office in connection with the Garcia case and endorsed the Ninth Circuit’s view that permitting an actor in that case to hold a separate copyright in her performance would make “Swiss cheese of copyrights.” If copyright subsisted separately in each of the thousands of artistic contributions to a film from actors, directors, producers, screenwriters, designers, cinematographers and the rest, “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.”
Echoing Garcia, the court also held that the mere fact these original artistic expressions are fixed by a film crew doesn’t change the result: authors are only entitled to copyright protection in “the ‘works of authorship’ they create and fix” themselves. And to hold otherwise would give contributors, like Merkin, greater rights than joint authors “who … have no right to interfere with a co-author’s use of the copyrighted work.” The court doubted that Congress so intended.
The “Dominant Author” Concept
Merkin’s arguments did not fare better with regard to copyright ownership of the raw film footage. Here the court introduced a “dominant author” test — which previously had been used in the Second Circuit as a test of joint authorship — to support copyright ownership by the producer in the absence of both a work-for-hire agreement and joint ownership. (Apparently, there was no need to determine “dominant” authorship of the finished film because Merkin’s contribution was not found to be subject to copyright protection.)
To begin, the court established that the raw footage was subject to copyright protection because the Copyright Act affords it to each work at the moment of its creation and the unedited film footage was merely “an early version of the finished product.” The copyright in the raw footage belonged to Casa Duse rather than Merkin – as would be the case whenever multiple authors lay claim and joint authorship isn’t applicable — because Casa Duse was the “dominant author” based on a three-factor test.
First, in the context of the project as a whole, Casa Duse exercised far more decision-making authority. Merkin “exercised a significant degree of control over many of the creative decisions, “ but Casa Duse initiated the project, acquired the screenplay, selected cast, crew and director, controlled the production schedule and attempted to coordinate the film’s publicity and release. A second factor — how the parties intended to bill or credit themselves — was “essentially neutral” in the context of raw footage. The third factor, the parties’ agreements with outsiders, pointed “decisively” in Casa Duse’s favor. It obtained rights to make the film as a derivative work from the screenwriter and entered into work-for-hire agreements with all of the cast and crew except Merkin. The record did not show that Merkin entered into any third party agreements or that he had any intention to do so.
Accordingly, Casa Duse was held to be sole copyright owner of the raw footage as well as the finished film. Merkin and his attorney, however, secured one consolation on appeal: the lower court was directed to reexamine the size of its grant of costs and fees to Casa Duse.
In the wake of Garcia and Casa Duse, are work-for-hire agreements optional for producers of audiovisual works because they’ll own the fruits of contributors’ services with or without one? We would say not. For one thing, the Supreme Court hasn’t addressed the question and other federal circuits still can go their own way. Second, while the ownership of contributions by an actor (who is seen in a film for several seconds) and of a film’s director might be clear enough, determining ownership of other high-level contributors may be less so. Thirdly, the Copyright Act spells out a procedure that is supposed to make copyright ownership of audiovisual works unimpeachable without litigation: execution by independent contractors and their employers of work-for-hire agreements. Unless and until the Copyright Act is amended, a work-for-hire agreement still seems the safest bet.
 766 F.3d. 929 (9th Cir. 2014)
 Garcia v. Google, Inc., No. 12-57302 (9th Cir. May 18, 2015). (referred to in this article as “Garcia.”)
 16 Casa Duse, LLC v. Merkin, No. 13-3865 (2d Cir., June 29, 2015)
 See, Thomson v. Larson, 147 F.3d 195 (2d Cir. 1998) and Childress v. Taylor, 945 F.2d 500 (2d Cir. 1991), both cited in Casa Duse.
 Casa Duse did not succeed (as it had in the district court) with a separate claim for tortious interference with business relations based on Merkin’s alleged interference with the producer’s planned screening and post-screening reception. This is because Casa Duse did not show that Merkin’s conduct amounted to a crime or independent tort, or that he acted for the sole purpose of inflicting intentional harm on the plaintiff, or that Merkin’s copyright claims were “frivolous, objectively unreasonable, or patently meritless.” With the tortious interference claim removed from the calculus, and in light of the appellate court’s reasons for doing so, the lower court was directed to reexamine the amount of costs and fees awarded to Casa Duse.