Court of Appeals Rules Producer, Not Director is the Author of a Motion Picture

Stephen Carlisle July 1, 2015

Following on the heels of the Ninth Circuit Court of Appeals’ decision in Garcia v. Google, ¹ the Second Circuit Court of Appeals has issued a major ruling clarifying one of the great mysteries of copyright law, namely: who is the “author” of a motion picture? The Second Circuit’s opinion is particularly important because it governs the State of New York, home to many of the largest entertainment companies. So now the Courts of Appeal that govern Hollywood and New York City have both issued ruling on what the copyright in a motion picture covers and who is the author of the film.

The facts of 16 Casa Duse, LLC v. Merkin ² are not complicated. A production company known as 16 Casa Duse acquired the rights to a screenplay for a short film entitled Hands Up. It hired all of the cast and crew of about 30 people, including a script supervisor, director of photography, camera operators and significantly enough, director Alex Merkin. ³ Everyone in the cast and crew signed their contract with the Producer, except of course, the Director, who never signed his contract. This is significant since the contracts all specified that the contributions by the signer were to be “works made for hire” and thus transfer any copyright interest to the Producer. The film was completed and the Director took into his possession four computer hard drives that contained the raw footage for the film. ⁴

In the inevitable dispute that followed, the Director refused to sign his contract or return the four hard drives containing the raw footage of the film. When the Producer attempted to arrange showings of the film, these were met with threats of a cease and desist order from the Director and his attorney, which caused the film to miss at least four film festival submission deadlines. ⁵ Unknown to the Producer, the Director had also registered the raw footage with the Copyright Office and listed the Director as the sole author. ⁶

The District Court issued a preliminary injunction against the Director, ruled that the Producer, not the Director was the author for purposes of copyright, and awarded attorneys fees against both the director and his attorney. ⁷

Curiously, the Director did not claim to be a joint author or co-author of the film. ⁸ Presumably, the reason being that if he was, he could not prevent the Producer from exploiting the film on a non-exclusive basis. ⁹ So, either the Director is the author of all of the film, or none of it. According to the Second Circuit panel, he is the author of none of it.

For the first time, a Court of Appeal had to confront the question of:

“…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 opinion hones in on the fact that the Director’s contributions were “inseparable” from the finished product, and that none of the contributions of the Director were separately copyrightable.

“’A motion picture is a work to which many contribute; however, those contributions ultimately merge to create a unitary whole.’ But the [Copyright] Act lists none of the constituent parts of any of these kinds of works as ‘works of authorship.’ This uniform absence of explicit protection suggests that non-freestanding contributions to works of authorship are not ordinarily themselves works of authorship.” ¹⁰

So the opinion draws the authorship line as to whether a contribution to a copyrighted motion picture could stand “on its own.”

“[A]uthors of freestanding works that are incorporated into a film, such as dance performances or songs, may copyright these ‘separate and independent work[s].’ (citation defining “collective work” omitted ). But 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.” ¹¹

The Court also could have taken a slightly different tack. Motion pictures by their very nature are derivative works from the underlying source material, namely the screenplay. While there may be various artistic decisions being made by a Director, they are naturally guided and shaped by what has already been written, since the end desire is to fully realize the plot and characters present in the script. The script, being the property of the Producer, can only be acted upon by the Director in the nature of creating a derivative work, which requires the permission of the Producer. If that permission is not express, but can be implied, as here, there would be a corresponding implied permission for the Producer to utilize the fruits of the Director’s work.

The Court also pointed out a sound policy reason for reaching its decision:

“A conclusion other than the one we adopt would grant contributors like [the Director] greater rights than joint authors, who, as we have noted, have no right to interfere with a co-author’s use of the copyrighted work…  We doubt that Congress intended for contributors who are not joint authors to have greater rights enabling them to hamstring authors’ use of copyrighted works, as apparently occurred in the case at bar. We agree with the en banc Ninth Circuit, then, that the creation of ‘thousands of standalone copyrights’ in a given work was likely not intended.” ¹²

In determining who owned the copyright amongst multiple participants, the court held that “the dispositive inquiry is which of the putative authors is the ‘dominant author,’ ¹³and enumerated three major factors:

• Who holds the decision making authority
• The manner in which parties credit themselves
• The parties agreements with 3^rd parties” ¹⁴

The Court held that the second factor was neutral, but the first and third factors heavily favored the Producer.

“[The] director… made a variety of creative decisions related to camera work, lighting, blocking, and actors’ wardrobe, makeup, and dialogue delivery, particularly during the three days of filming… [b]ut in the context of the project as a whole, [the Producer] exercised far more decision-making authority… [The Producer] initiated the project; acquired the rights to the screenplay; selected the cast, crew and director; controlled the production schedule; and coordinated (or attempted to coordinate) the film’s publicity and release.” ¹⁵

“[The Producer] obtained written work-for-hire agreements from every cast and crew member other than [the Director]. [The Director] did not, so far as the record shows, enter into any third party agreements. Indeed, nothing in the record suggests he had any intention to do so. [The Producer] also entered into an agreement with the screenwriter, authorizing the very creation of the film as a derivative work.” ¹⁶

So in sum,

• The Director did not create any independently copyrightable material such as a song, dance or painting, so whatever copyrightable material he created is subsumed in the copyright in the motion picture
• The Director has expressly denied that he is a co-author or joint author of the film, and has no interest in the copyright by reason of joint ownership
• The Producer was the “dominant author” and thus the owner of the copyright in the film.

So even though the Producer should be given a smack upside the head for not only letting the Director on the set without signing his contract but letting him have all the raw footage without signing the contract (a mistake I doubt he will repeat), at last we have some clear guidance on the ownership rights inherent in a motion picture.

Now, if only we can get some clear guidance on who the author of a sound recording is, then we’ll really have something.