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`13‐3865
`16 Casa Duse, LLC v. Alex Merkin & Maurice A. Reichman
`
`
`
`UNITED STATES COURT OF APPEALS
`FOR THE SECOND CIRCUIT
`August Term, 2014
`(Argued: September 3, 2014 Decided: June 29, 2015)
`Docket No. 13‐3865
`
`16 Casa Duse, LLC,
`Plaintiff‐Counter‐Defendant‐Appellee,
`
`
`
`v.
`
`Alex Merkin,
`Defendant‐Counter‐Claimant‐Appellant,
`Maurice A. Reichman, Esq.,
`Appellant,
`A. Merkin Entertainment, LLC,
`Defendant.*
`
`
`KATZMANN, Chief Judge, SACK and LYNCH, Circuit Judges.
`Before:
`The defendant appeals from a September 27, 2013, judgment of the United
`
`States District Court for the Southern District of New York (Richard J. Sullivan,
`
`Judge) granting summary judgment to the plaintiff on its copyright and state‐law
`
`claims related to a film entitled Heads Up, dismissing the defendantʹs
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`counterclaims, and awarding the plaintiff costs and attorneyʹs fees. Because we
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`agree that the plaintiff owns the relevant copyright interests, we conclude that
`
`the district court properly granted summary judgment to the plaintiff on its
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`* The Clerk of Court is respectfully directed to amend the official caption in this case to conform
`with the caption above.
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`13‐3865
`16 Casa Duse, LLC v. Alex Merkin & Maurice A. Reichman
`
`
`
`UNITED STATES COURT OF APPEALS
`FOR THE SECOND CIRCUIT
`August Term, 2014
`(Argued: September 3, 2014 Decided: June 29, 2015)
`Docket No. 13‐3865
`
`16 Casa Duse, LLC,
`Plaintiff‐Counter‐Defendant‐Appellee,
`
`
`
`v.
`
`Alex Merkin,
`Defendant‐Counter‐Claimant‐Appellant,
`Maurice A. Reichman, Esq.,
`Appellant,
`A. Merkin Entertainment, LLC,
`Defendant.*
`
`
`KATZMANN, Chief Judge, SACK and LYNCH, Circuit Judges.
`Before:
`The defendant appeals from a September 27, 2013, judgment of the United
`
`States District Court for the Southern District of New York (Richard J. Sullivan,
`
`Judge) granting summary judgment to the plaintiff on its copyright and state‐law
`
`claims related to a film entitled Heads Up, dismissing the defendantʹs
`
`counterclaims, and awarding the plaintiff costs and attorneyʹs fees. Because we
`
`agree that the plaintiff owns the relevant copyright interests, we conclude that
`
`the district court properly granted summary judgment to the plaintiff on its
`
`* The Clerk of Court is respectfully directed to amend the official caption in this case to conform
`with the caption above.
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`copyright claims and properly enjoined the defendant from interfering with the
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`No. 13‐3865
`16 Casa Duse v. Alex Merkin & Maurice Reichman
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`plaintiffʹs use of the work in question. We conclude, though, that the defendant,
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`not the plaintiff, was entitled to summary judgment on the plaintiffʹs claim for
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`tortious interference with business relations under New York law. The judgment
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`of the district court is therefore:
`
`AFFIRMED in part, REVERSED in part, and REMANDED.
`
`ELEANOR M. LACKMAN (Joshua S.
`Wolkoff, on the brief), Cowan, DeBaets,
`Abrahams & Sheppard LLP, New York, NY
`for Plaintiff–Counter‐Defendant‐Appellee.
`
`MAURICE A. REICHMAN, New York, NY,
`for Defendant‐Counter‐Claimant‐Appellant &
`Appellant.
`
`SACK, Circuit Judge:
`This is an appeal from a judgment of the United States District Court for
`
`the Southern District of New York (Richard J. Sullivan, Judge) granting summary
`
`judgment to the plaintiff on its copyright and state‐law claims, dismissing the
`
`defendantʹs copyright counterclaims, and awarding the plaintiff costs and
`
`attorneyʹs fees. Because we agree with the district court that the plaintiff owns
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`the copyright to all versions of the work in question, a film entitled Heads Up,
`
`and that copyright does not subsist in individual contributions to that film, we
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`conclude that the district court properly granted summary judgment to the
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`No. 13‐3865
`16 Casa Duse v. Alex Merkin & Maurice Reichman
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`plaintiff on its copyright claims and did not abuse its discretion in enjoining the
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`defendant from interfering with the plaintiffʹs use of the film. We also conclude,
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`however, that the defendant, not the plaintiff, was entitled to summary judgment
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`on the plaintiffʹs claim for tortious interference with business relations under
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`New York law. We therefore affirm in part, reverse in part, and remand the case
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`to the district court with instructions for it to grant the defendantʹs motion for
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`summary judgment on the tortious interference claim and for such further
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`proceedings as are warranted.
`
`BACKGROUND
`
`Appellee 16 Casa Duse, LLC, (ʺCasa Duseʺ) is a film‐production company
`
`based in Brooklyn, New York. The company is owned and operated by Robert
`
`Krakovski. Appellant Alex Merkin is a film director, producer, and editor.
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`Appellant Maurice Reichman is an attorney who represented Merkin in some of
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`his dealings with Casa Duse.
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`In September 2010, Krakovski, acting at all relevant times as the principal
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`of Casa Duse, purchased the rights to a screenplay entitled Heads Up from the
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`workʹs author, Ben Carlin. Krakovski, who planned to finance and produce a
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`short film based on the screenplay, asked Merkin whether he would be willing to
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`No. 13‐3865
`16 Casa Duse v. Alex Merkin & Maurice Reichman
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`direct the film. Merkin agreed, and the two settled informally on a fee of $1,500
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`for Merkinʹs services.
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`In the ensuing months, Krakovski assembled a cast and crew for the film,
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`also entitled Heads Up. He hired additional producers, a script supervisor, a
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`photography director, camera operators, various designers and technicians, and
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`actors, creating an ensemble of about thirty members. Although Merkin
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`recommended that Krakovski employ some persons as crew members,
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`Krakovski made the ultimate hiring decisions. In the meantime, Krakovski,
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`Merkin, and others involved with the project planned various aspects of the
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`production, including props, locations, and scheduling.
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`Each cast and crew member other than Merkin entered into an
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`ʺIndependent Contractor [] Agreementʺ with Casa Duse. The agreements
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`contained statements that Casa Duse would ʺengage the services [of the cast or
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`crew member] as ʹwork for hireʹ of an independent contractor,ʺ J.A. 485, and set
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`out terms for compensation, performance standards, and other matters. The
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`work‐for‐hire agreements also stated that Casa Duse would retain ʺcomplete
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`controlʺ of the filmʹs production and ʺown all of the results and proceeds of [the
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`cast and crewʹs] services in connection with the [film] . . . including, but not
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`No. 13‐3865
`16 Casa Duse v. Alex Merkin & Maurice Reichman
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`limited to, all rights throughout the world of . . . copyright . . . .ʺ J.A. 487.
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`In February 2011, Krakovski sent Merkin a draft work‐for‐hire agreement
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`entitled ʺDirector Employment Agreement.ʺ Its terms were similar to those in
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`the agreements signed by other cast and crew. It provided, inter alia, that Casa
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`Duse would own all rights in the film. Merkin acknowledged his receipt of the
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`draft by e‐mail, noting that he would ask his lawyer to review it.
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`Some two‐and‐a‐half months later, on May 9, 2011, Krakovski sent Merkin
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`an e‐mail reminding him to execute the agreement. Merkin did not respond.
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`Krakovski contacted Merkin again on May 16, a week before production
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`was scheduled to start, reminding him again of the importance of completing the
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`agreement before work on the film began. Merkin again failed to reply. On May
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`18, Krakovski e‐mailed again asking for a completed agreement, to no avail.
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`Despite the lack of a completed agreement, production began later that
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`month. During production, which included three days of filming, Merkin
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`performed his role as director by advising and instructing the filmʹs cast and
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`crew on matters ranging from camera angles and lighting to wardrobe and
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`makeup to the actorsʹ dialogue and movement. Merkin completed his direction
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`No. 13‐3865
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`of the film by the end of May.
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`In June 2011, Krakovski gave Merkin a hard drive containing the raw film
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`footage in the hope that Merkin would be able to edit the footage. In the absence
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`of a work‐for‐hire agreement, the parties entered into a ʺMedia Agreementʺ
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`under which Merkin would edit but not license, sell, or copy the footage for any
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`purpose without the permission of Casa Duse.
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`On June 16, Krakovski sent an e‐mail to Merkin proposing changes to the
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`Media Agreement in order to ʺclarify,ʺ first, that Casa Duse and not Merkin
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`owned the footage and hard drive, and, second, that Casa Duseʹs entry into the
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`Media Agreement had not relinquished ʺany directorial/editorial terms [or]
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`rightsʺ that would be finally allocated by a work‐for‐hire agreement. J.A. 580.
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`Merkin replied, saying that the proposed changes seemed acceptable but also
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`ʺclarify[ing],ʺ for his part, that he was ʺnot giving up any creative or artistic
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`rightsʺ he had in the project and ʺall of [his] creative work . . . is still [his] work
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`and not the property of 16 Casa Duse, LLC.ʺ J.A. 581. Krakovski responded,
`
`asserting that he had never intended the film to be ʺa ʹJoint Ventureʹʺ and instead
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`had intended to obtain Merkinʹs services pursuant to a work‐for‐hire agreement.
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`No. 13‐3865
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`J.A. 521.
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`From July to October 2011, Krakovski and Merkin continued to negotiate
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`the terms of the Media Agreement and a work‐for‐hire agreement. The parties
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`communicated directly—via e‐mail—and through their attorneys. From time to
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`time, they appeared to reach agreement on some key terms, including Casa
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`Duseʹs ownership of the film, Merkinʹs authority to make a ʺdirectorʹs cut,ʺ and
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`Merkinʹs ability to remove his name from the final product if he so desired, but
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`negotiations ultimately collapsed. Krakovski demanded the return of the hard
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`drive containing the raw film footage. Merkin refused and warned Krakovski
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`that, without an agreement in place, Casa Duse could not, in his view, release the
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`film.
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`In November 2011, Merkin sent Krakovski a letter ʺputting [Krakovski] on
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`notice that [Merkin] forb[ade] any use whatsoever of the raw footage.ʺ J.A. 400.
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`The letter conceded that Krakovski owned the screenplay but insisted that
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`Merkin owned the ʺraw footage.ʺ Id. In December 2011, Krakovski responded
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`through counsel, who, by e‐mail, proposed that Casa Duse pay Merkin the
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`agreed‐upon $1,500 for his directorial services, allow him to complete his desired
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`ʺdirectorʹs cut,ʺ and ensure his opportunity to remove his name from the finished
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`No. 13‐3865
`16 Casa Duse v. Alex Merkin & Maurice Reichman
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`product if he wished. In exchange, Merkin would agree to deem his directorial
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`services a ʺwork for hireʺ for Casa Duse. The e‐mail also advised that Casa Duse
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`had, by then, retained a different editor. Merkin responded and reiterated his
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`position that Casa Duse was ʺnot permitted to use [his] work in any edit without
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`[his] involvement.ʺ J.A. 403. Merkin threatened to contact film festivals to
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`inform them that Casa Duse lacked rights to the film in the event Krakovski did
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`not assent. Krakovskiʹs attorney responded by sending an e‐mail to Merkinʹs
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`attorney, disputing Merkinʹs position and warning that any interference with
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`In January 2012, as the dispute continued to simmer, Merkin registered a
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`copyright in the film with the United States Copyright Office. The title of the
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`registration was ʺRaw footage for film ʹHeads Upʹ Disks 1‐4,ʺ reflecting the fact
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`that Merkin had copied the footage from the hard drive onto four DVDs. J.A. 71.
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`The registration listed the type of work as ʺMotion Pictureʺ and asserted that
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`Merkin was its sole author. Merkin did not obtain Casa Duseʹs permission to
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`register the copyright, and Krakovski was unaware of the registration.
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`No. 13‐3865
`16 Casa Duse v. Alex Merkin & Maurice Reichman
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`In March 2012, Krakovski began submitting Heads Up to film festivals and
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`making plans to publicize the film. To that end, he scheduled an invitation‐only
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`screening for approximately seventy persons at the New York Film Academy
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`(ʺNYFAʺ) on April 18, 2012. Krakovski also organized a reception to follow at a
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`nearby restaurant, City Crab, for which he paid a non‐refundable deposit of
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`$1,956.58.
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`On the date of the event, the NYFA chairperson contacted Krakovski to tell
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`him that Merkinʹs attorney (Reichman) had threatened the NYFA with a cease‐
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`and‐desist order to prevent the screening from proceeding. According to
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`Reichman, it was Merkin—not Reichman—who contacted the NYFA and
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`mentioned a cease and desist ʺnotice,ʺ not an order, at which point the NYFA
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`contacted Reichman. In any event, the NYFA cancelled the screening in response
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`to these threats, and Casa Duse lost its restaurant deposit. Casa Duse
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`subsequently missed at least four film festival submission deadlines as a result of
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`the dispute. Merkin did not return the hard drive, the DVDs, or the raw footage
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`in any form.
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`Casa Duse brought suit against Merkin and his limited liability company,
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`A. Merkin Entertainment, LLC, (ʺAMEʺ) in May 2012 seeking, inter alia, a
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`temporary restraining order and injunction enjoining Merkin from interfering
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`No. 13‐3865
`16 Casa Duse v. Alex Merkin & Maurice Reichman
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`with its use of the film. The district court granted the temporary restraining
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`order and issued an order to show cause why a preliminary injunction should
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`not issue. After briefing, on May 18, 2012, the court issued the preliminary
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`injunction that Casa Duse sought.
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`Some two months later, in July 2012, Casa Duse filed an amended
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`complaint requesting a judgment declaring that (1) Casa Duse was not liable to
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`Merkin or AME for copyright infringement; (2) Neither Merkin nor AME owned
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`a copyright interest in the film; and (3) Merkinʹs copyright registration was
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`invalid. Casa Duse also asserted claims for breach of contract, tortious
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`interference with business relations, and conversion. It sought relief in the form
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`of compensatory damages; an order requiring Merkin to withdraw his copyright
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`registration, return all forms of the footage, and refrain from interfering with
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`Casa Duseʹs use of the film; and costs and attorneyʹs fees as a sanction under 28
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`U.S.C. § 1927 and pursuant to the Copyright Actʹs fees provision, 17 U.S.C. § 505.
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`The defendants filed an Amended Answer and counterclaims in August
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`2012, requesting a judgment declaring that (1) ʺA Motion Picture Director Is An
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`Author,ʺ (2) ʺ17 U.S.C. Has No Provision Of, Or For, A ʹMerged Work,ʹʺ (3)
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`ʺThere Can Be No Work For Hire Or Assignment Without An Express Writing,ʺ
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`No. 13‐3865
`16 Casa Duse v. Alex Merkin & Maurice Reichman
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`(4) Merkinʹs copyright registration was valid, (5) attorneyʹs fees pursuant to 17
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`U.S.C. § 505 were unavailable in the absence of a copyright infringement claim,
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`and (6) it was ʺimproperʺ for Casa Duseʹs complaint to include a request for
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`sanctions pursuant to 28 U.S.C. § 1927. J.A. 318‐23. Merkin also asserted a claim
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`for breach of contract based on Casa Duseʹs failure to pay him for his services.
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`Casa Duse moved for summary judgment on its claims and its requests for
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`fees and sanctions. Merkin cross‐moved for summary judgment on all of his
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`claims and most of Casa Duseʹs claims, including its claim for tortious
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`interference with business relations. Merkin also requested that the court vacate
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`the preliminary injunction and strike the fees and sanctions request. AME
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`moved to dismiss the complaint as to AME in its entirety.
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`The district court declined to vacate the injunction. It granted summary
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`judgment to Casa Duse on all claims, along with fees against Merkin and
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`sanctions against Reichman. 16 Casa Duse, LLC v. Merkin, No. 12 CIV. 3492 RJS,
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`2013 WL 5510770, at *20‐21, 2013 U.S. Dist. LEXIS 143958, at *63‐64 (S.D.N.Y.
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`Sept. 27, 2013). The court granted AMEʹs motion to dismiss. Id., 2013 WL
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`5510770, at *20, 2013 U.S. Dist. LEXIS 143958, at *64.1 The court also dismissed all
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`No. 13‐3865
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`of Merkinʹs counterclaims except for his claim for breach of contract. Id. The
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`court subsequently granted Merkinʹs motion, agreed to by Casa Duse, to
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`voluntarily dismiss his breach of contract claim without prejudice. After
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`accepting additional submissions from the parties as to the proper amount of
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`costs and fees, the court entered its final judgment on December 19, 2013,
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`awarding Casa Duse (1) $1,956.58 in damages resulting from Merkinʹs
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`interference with the screening event; and (2) $185,579.65 in attorneyʹs fees and
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`costs, of which Merkin and Reichman would be jointly and severally liable for
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`$175,634 and Reichman would be solely liable for the remaining $9,945.65.
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`Merkin and Reichman appealed.
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`1 Casa Duse does not challenge this dismissal.
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`No. 13‐3865
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` DISCUSSION
`This case requires us to answer a question of first impression in this
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`
`
`
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`Circuit: May a contributor to a creative work whose contributions are
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`inseparable from, and integrated into, the work maintain a copyright interest in
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`his or her contributions alone? We conclude that, at least on the facts of the
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`present case, he or she may not.
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`I.
`Standard of Review
`ʺWe review a district courtʹs grant of summary judgment de novo.ʺ Blanch
`
`v. Koons, 467 F.3d 244, 249 (2d Cir. 2006). Summary judgment is appropriate
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`when ʺthere is no genuine issue as to any material fact and . . . the moving party
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`is entitled to a judgment as a matter of law.ʺ Id. at 250 (alteration in original)
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`(quoting Fed. R. Civ. P. 56).
`
`ʺWe review the District Courtʹs entry of a permanent injunction for abuse
`
`of discretion, which may be found where the Court, in issuing the injunction,
`
`relied on clearly erroneous findings of fact or an error of law.ʺ Knox v. Salinas,
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`193 F.3d 123, 128‐29 (2d Cir. 1999) (per curiam).
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`We review a district courtʹs award of costs and attorneyʹs fees under 17
`
`U.S.C. § 505 and its imposition of sanctions under 28 U.S.C. § 1927 for abuse of
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`discretion. See Medforms, Inc. v. Healthcare Mgmt. Solutions, Inc., 290 F.3d 98, 117
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`No. 13‐3865
`16 Casa Duse v. Alex Merkin & Maurice Reichman
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`(2d Cir. 2002) (17 U.S.C. § 505); In re 60 E. 80th St. Equities, Inc., 218 F.3d 109, 115
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`(2d Cir. 2000) (28 U.S.C. § 1927).
`
`II.
`Jurisdiction
`We must determine, as a threshold matter, whether we have the authority
`
`to hear the merits of this case on appeal. We generally lack jurisdiction, under 28
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`U.S.C. § 1291,2 over appeals from nonfinal orders of the district courts. This
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`ʺfinal judgment ruleʺ promotes judicial economy by ʺforbidding piecemeal
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`disposition on appeal of what for practical purposes is a single controversy.ʺ
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`Cobbledick v. United States, 309 U.S. 323, 325 (1940). Accordingly, ʺimmediate
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`appeal is unavailable to a plaintiff who seeks review of an adverse decision on
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`some of its claims by voluntarily dismissing the others without prejudice.ʺ Rabbi
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`Jacob Joseph Sch. v. Province of Mendoza, 425 F.3d 207, 210 (2d Cir. 2005) (emphasis
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`in original). Were the rule otherwise, such a plaintiff would ʺeffectively have
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`secured an otherwise unavailable interlocutory appeal.ʺ Id. (quoting Chappelle v.
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`Beacon Commcʹns Corp., 84 F.3d 652, 654 (2d Cir. 1996)).
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`2 Section 1291 provides in pertinent part: ʺThe courts of appeals . . . shall have
`jurisdiction of appeals from all final decisions of the district courts of the United
`States . . . .ʺ
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`No. 13‐3865
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`In the case before us, the district court entered judgment after dismissing
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`Merkinʹs breach of contract claim without prejudice at the partiesʹ request. The
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`courtʹs judgment would thus ordinarily be nonfinal, depriving us of jurisdiction
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`over the merits.
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`At argument before us, however, Merkin agreed to a dismissal of his
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`remaining claim, for breach of contract, with prejudice. ʺA party who loses on a
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`dispositive issue that affects only a portion of his claims may elect to abandon
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`the unaffected claims, invite a final judgment, and thereby secure review of the
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`adverse ruling.ʺ Atlanta Shipping Corp. v. Chemical Bank, 818 F.2d 240, 246 (2d Cir.
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`1987). We may therefore treat the district courtʹs order as final. See Rabbi Jacob
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`Joseph Sch., 425 F.3d at 211 (refusing to treat order as final when ʺthe [plaintiff]
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`expressly declined to abandon [its] claim with prejudiceʺ at oral argument); see
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`also JTC Petroleum Co. v. Piasa Motor Fuels, Inc., 190 F.3d 775, 776‐77 (7th Cir. 1999)
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`(ʺ[A]t argument, the plaintiffʹs lawyer quickly agreed that we could treat the
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`dismissal of the two claims [which the district court had dismissed without
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`prejudice] as having been with prejudice, thus winding up the litigation and
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`eliminating the bar to our jurisdiction.ʺ). We therefore proceed to the merits.
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`III. Copyright Claims
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`No. 13‐3865
`16 Casa Duse v. Alex Merkin & Maurice Reichman
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`Merkin argues that the district court erred in concluding, first, that Merkin
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`could not copyright his creative contributions to the film, and, second, that he
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`lacks copyright ownership of the ʺraw film footage.ʺ Casa Duse responds that
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`individual contributions to a film, such as direction, are not themselves subject to
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`copyright protection and that Casa Duse retains sole copyright ownership of the
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`film and the ʺraw footage,ʺ to the extent the two are distinguishable for copyright
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`purposes.
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`Two points merit mention at the outset.
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`First, the parties agree that Merkin is not a ʺjoint authorʺ or ʺco‐authorʺ of
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`the film under the 1976 Copyright Act. See 17 U.S.C. § 101 (ʺA ʹjoint workʹ is a
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`work prepared by two or more authors with the intention that their contributions
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`be merged into inseparable or interdependent parts of a unitary whole.ʺ). If he
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`were, that fact would likely prohibit his interference with Casa Duseʹs use and
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`display of the film, because ʺ[o]ne joint owner cannot be liable for copyright
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`infringement to another joint owner.ʺ 1 Melville B. Nimmer & David Nimmer,
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`Nimmer on Copyright § 6.10[A] (2015). A co‐authorship claimant in our Circuit
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`generally must show that ʺeach of the putative co‐authors (1) made
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`independently copyrightable contributions to the work; and (2) fully intended to
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`No. 13‐3865
`16 Casa Duse v. Alex Merkin & Maurice Reichman
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`be co‐authors.ʺ Thomson v. Larson, 147 F.3d 195, 200 (2d Cir. 1998) (citing
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`Childress v. Taylor, 945 F.2d 500, 507‐08 (2d Cir. 1991)). Even assuming the first
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`prong3 is met here, we agree with the district court that ʺthe record uniformly
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`establishes that [Casa Duse], through its principal, Krakovski, never intended to
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`share authorship of the film with Merkin or anyone else,ʺ and ʺ[t]here is also
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`considerable evidence that Merkin never intended to be [Casa Duseʹs] co‐author.ʺ
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`16 Casa Duse, LLC, 2013 WL 5510770, at *8‐9, 2013 U.S. Dist. LEXIS 143958, at *23‐
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`25.4
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`Second, the parties also agree that Merkinʹs efforts cannot be deemed a
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`ʺwork made for hire.ʺ See 17 U.S.C. § 201(b) (ʺ[T]he . . . person for whom the
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`work[‐for‐hire] was prepared is considered the author . . . and, unless the parties
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`have expressly agreed otherwise in a written instrument signed by them, owns
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`3 It seems likely that ʺ[b]y ʹcopyrightableʹ [the Childress court] meant only to say that
`the coauthorʹs contribution must be the product of authorship, i.e., expression. [The
`court] did not mean that in order to be a coauthor one must be able to obtain a
`copyright on his or her separate contribution,ʺ 2 Patry on Copyright § 5:15, or even that
`such would be possible.
`4 We noted in Thomson that ʺthe test of co‐authorship intent will vary depending on the
`specific factual circumstances.ʺ Thomson, 147 F.3d at 201 n.16. We need not determine
`the ways in which the test might vary in the circumstances presented by this case,
`because the parties disclaim joint authorship.
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`all of the rights comprised in the copyright.ʺ). A work‐for‐hire arrangement
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`No. 13‐3865
`16 Casa Duse v. Alex Merkin & Maurice Reichman
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`requires:
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`(1) a work prepared by an employee within the scope of his or her
`employment; or (2) a work specially ordered or commissioned for
`use as a contribution to a collective work, as a part of a motion
`picture[, or for other specified purposes] . . . if the parties expressly
`agree in a written instrument signed by them that the work shall be
`considered a work made for hire.
`Id. § 101. Merkin was not Casa Duseʹs employee, see Cmty. for Creative Non‐
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`Violence v. Reid, 490 U.S. 730, 740‐41 (1989) (ʺ[T]he term ʹemployeeʹ [in section
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`101] should be understood in light of the general common law of agency.ʺ), and
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`the parties failed to execute a written agreement.
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`A.
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`Copyright in Creative Contributions to a Work
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`ʺCopyright protection subsists . . . in original works of authorship fixed in
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`any tangible medium of expression, now known or later developed, from which
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`they can be perceived, reproduced, or otherwise communicated, either directly
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`or with the aid of a machine or device.ʺ 17 U.S.C. § 102(a). We have never
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`decided whether an individualʹs non‐de minimis creative contributions to a work
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`in which copyright protection subsists, such as a film, fall within the subject
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`matter of copyright, when the contributions are inseparable from the work and
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`the individual is neither the sole nor a joint author of the work and is not a party
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`to a work‐for‐hire arrangement. See Thomson, 147 F.3d at 206 (acknowledging
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`No. 13‐3865
`16 Casa Duse v. Alex Merkin & Maurice Reichman
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`open question and resolving case on alternative grounds). We answer that
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`question in the negative on the facts of the present case, finding that the
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`Copyright Actʹs terms, structure, and history support the conclusion that
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`Merkinʹs contributions to the film do not themselves constitute a ʺwork of
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`authorshipʺ amenable to copyright protection.
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`The Copyright Act does not define the term ʺworks of authorship.ʺ Section
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`102 of the Act, however, lists examples of categories of ʺworks of authorship,ʺ
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`including ʺliterary works,ʺ 17 U.S.C. § 102(a)(1), ʺmusical works,ʺ id. § 102(a)(2),
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`and—most relevant here—ʺmotion pictures and other audiovisual works,ʺ id.
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`§ 102(a)(6). This list is not exhaustive, but as we have previously observed,
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`categories of creative efforts that are not ʺsimilar []or analogous to any of the
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`listed categoriesʺ are unlikely to fall within the subject matter of federal
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`copyright protection. Natʹl Basketball Assʹn v. Motorola, Inc., 105 F.3d 841, 846 (2d
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`Cir. 1997) (concluding that ʺbasketball games do not fall within the subject matter
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`of federal copyright protection because they do not constitute ʹoriginal works of
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`authorshipʹ under 17 U.S.C. § 102(a).ʺ). Motion pictures, like ʺpantomimes,ʺ 17
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`U.S.C. § 102(a)(4), and ʺdramatic works,ʺ id. § 102(a)(3), are works that may be
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`expected to contain contributions from multiple individuals. See Richlin v. Metro‐
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`No. 13‐3865
`16 Casa Duse v. Alex Merkin & Maurice Reichman
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`Goldwyn‐Mayer Pictures, Inc., 531 F.3d 962, 975 (9th Cir. 2008) (ʺA motion picture
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`is a work to which many contribute; however, those contributions ultimately
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`merge to create a unitary whole.ʺ). But the Act lists none of the constituent parts
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`of any of these kinds of works as ʺworks of authorship.ʺ This uniform absence of
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`explicit protection suggests that non‐freestanding contributions to works of
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`authorship are not ordinarily themselves works of authorship.
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`Other provisions of the Act support this conclusion. The Actʹs definition
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`of ʺjoint work,ʺ a work prepared by multiple authors ʺwith the intention that
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`their contributions be merged into inseparable or interdependent parts of a
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`unitary whole,ʺ 17 U.S.C. § 101 (emphasis added), suggests that such inseparable
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`contributions are not themselves ʺworks of authorship.ʺ Copyright may subsist
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`in contributions to a collective work, see id. § 201(c) (ʺCopyright in each separate
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`contribution to a collective work is distinct from copyright in the collective work
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`as a whole.ʺ), but only when such contributions constitute ʺseparate and
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`independentʺ works. Id. § 101 (ʺA ʹcollective workʹ is a work, such as a periodical
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`issue, anthology, or encyclopedia, in which a number of contributions,
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`constituting separate and independent works in themselves, are assembled into a
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`collective whole.ʺ (emphasis added)). The requirement that contributions be
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`No. 13‐3865
`16 Casa Duse v. Alex Merkin & Maurice Reichman
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`ʺseparate and independentʺ in order to obtain their own copyright protection
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`also indicates that inseparable contributions integrated into a single work cannot
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`separately obtain such protection.
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`The legislative history of the Copyright Act further supports this reading.
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`According to the House Report on the 1976 Act:
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`[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 from coming up. On the other hand,
`although a novelist, playwright, or songwriter may write a work
`with the hope or expectation that it will be used in a motion picture,
`this is clearly a case of separate or independent authorship rather
`than one where the basic intention behind the writing of the work
`was for motion picture use.
`H.R. Rep. No. 94‐1476, at 120 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5736.
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`While issues of ʺcoownershipʺ of a copyright may arise in the motion picture
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`context, the question of separate contributions meriting separate copyrights as
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`ʺworksʺ ordinarily would not, unless the motion picture incorporates separate,
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`freestanding pieces that independently constitute ʺworks of authorship.ʺ In a
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`joint work, ʺthe separate elements [comprising the work] merge into a unified
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`whole,ʺ whereas in a collective work, individualsʹ contributions ʺremain
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`unintegrated and disparate.ʺ Id., H.R. Rep. No. 94‐1476, at 122, 1976
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`No. 13‐3865
`16 Casa Duse v. Alex Merkin & Maurice Reichman
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`U.S.C.C.A.N., at 5738.
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`As Casa Duse observes, the Copyright Office has, in an unrelated case,
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`suggested a similar interpretation of the Act. The Office has stated that an
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`individual who lacks a work‐for‐hire agreement but who ʺintend[s] her
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`contribution or performance to ʹbe merged into inseparable or interdependent
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`parts of a unitary whole[,]ʹ 17 U.S.C. § 101[,] . . . may assert a claim in joint
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`authorship in the motion picture, but not sole authorship of her performance in a
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`portion of the work.ʺ Letter from Robert J. Kasunic, Assoc. Register of
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`Copyrights and Dir. of Registration Policy and Practices, U.S. Copyright Office,
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`to M. Cris Armenta, The Armenta Law Firm (Mar. 6, 2014) (attached as appendix
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`to Brief in Response to Suggestion of Rehearing En Banc [Dkt. 54] at ADD47,
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`Garcia v. Google, No. 12‐57302 (9th Cir. Mar. 12, 2014)). We need not defer to the
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`Copyright Officeʹs interpretation as a general matter, see Carol Barnhart Inc. v.
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`Econ. Cover Corp., 773 F.2d 411, 414 (2d Cir. 1985), or under the factually distinct
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`circumstances of the present case. We find its analysis persuasive nonetheless.
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`There was, until recently, some authority apparently to the contrary. The
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`majority of a three‐judge panel of the Ninth Circuit concluded that copyright
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`1
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