16 Casa Duse, LLC v. Merkin
791 F.3d 247
| 2d Cir. | 2015Background
- Casa Duse (Krakovski) bought the screenplay for the short film Heads Up, hired cast and crew, and solicited Alex Merkin to direct for $1,500; Merkin directed three days of shooting but never signed a written work-for-hire agreement.
- Casa Duse executed work-for-hire agreements with other crew; Merkin performed direction, received the raw-footage hard drive, and was later given a Media Agreement to edit (subject to Casa Duse control) but negotiations over ownership continued and collapsed.
- Merkin copied raw footage onto DVDs, registered a copyright in the raw footage with the Copyright Office listing himself as sole author, and refused to return the hard drive or footage.
- Casa Duse planned festival submissions and an invitation screening; Merkin (through counsel) threatened screening venues with a cease-and-desist, the screening was canceled, and Casa Duse lost a restaurant deposit and missed festival deadlines.
- Casa Duse sued for declaratory relief (no Merkin copyright), conversion/replevin, tortious interference, and sought fees; district court granted summary judgment to Casa Duse on copyright and state-law claims, enjoined Merkin, and awarded fees; Merkin appealed.
Issues
| Issue | Plaintiff's Argument (Casa Duse) | Defendant's Argument (Merkin) | Held |
|---|---|---|---|
| Whether a contributor to an integrated film can own a separate copyright in his inseparable creative contributions (e.g., directorial decisions) | Contributor’s original, fixed creative contributions are copyrightable and Merkin owns copyright in his directorial contributions | Contributions that are inseparable from a unitary work are not standalone "works of authorship"; Merkin’s direction therefore does not yield separate copyright | Merkin’s non‑freestanding directorial contributions are not separately copyrightable; Casa Duse owns the film copyright |
| Whether Merkin or Casa Duse owns copyright in the raw, unedited film footage | Casa Duse: as dominant author and producer that controlled production and third‑party contracts, it owns the raw footage and finished film | Merkin: registered copyright in raw footage and claims ownership of that material | Casa Duse is the dominant author; it owns copyright in the raw footage and prior versions as well as the finished film |
| Whether Merkin’s communications that led to cancellation of a screening and reception constitute tortious interference with business relations under NY law | Merkin interfered wrongfully with Casa Duse’s business relations (NYFA, restaurant) and caused damages | Merkin’s assertions of a copyright interest were not wrongful means or motivated solely to injure; his conduct was not criminal or independently tortious | Reversed: Merkin is entitled to summary judgment on the tortious interference claim because his conduct did not meet the "wrongful means" standard |
| Whether district court’s awards of attorney’s fees and sanctions were proper | Fees under 17 U.S.C. § 505 and sanctions under 28 U.S.C. § 1927 were appropriate given defendants’ posture; fees may be awarded in declaratory/noninfringement contexts | Merkin and Reichman argue awards were procedurally or substantively improper and that some awards targeted counsel improperly | Affirmed in principle that fees and sanctions can be awarded; district court should reassess amounts on remand in light of reversal of tortious interference claim |
Key Cases Cited
- Blanch v. Koons, 467 F.3d 244 (2d Cir. 2006) (standard of review for summary judgment)
- Community for Creative Non-Violence v. Reid, 490 U.S. 730 (U.S. 1989) (employee vs. independent-contractor test for copyright ownership)
- Thomson v. Larson, 147 F.3d 195 (2d Cir. 1998) (co‑authorship tests and evidentiary factors for authorship intent)
- Childress v. Taylor, 945 F.2d 500 (2d Cir. 1991) (joint authorship principles)
- Nat’l Basketball Ass’n v. Motorola, 105 F.3d 841 (2d Cir. 1997) (scope of works of authorship under §102)
- Garcia v. Google (en banc), 786 F.3d 733 (9th Cir. 2015) (en banc rejection of actor’s claim to standalone copyright in a film performance)
- Weissmann v. Freeman, 868 F.2d 1313 (2d Cir. 1989) (protection vests in a work at the moment of fixation)
- Carvel Corp. v. Noonan, 3 N.Y.3d 182 (N.Y. 2004) (standard for tortious interference with prospective business relations)
- Bryant v. Media Right Prods., Inc., 603 F.3d 135 (2d Cir. 2010) (factors for awarding fees under the Copyright Act)