16 Casa Duse, LLC v. Merkin, No. 12-cv-3492-RJS, 2013 WL 5510770 (S.D.N.Y. Sept. 27, 2013).

Applying the Second Circuit’s dominant-author test, the Southern District of New York granted summary judgment to the plaintiff production company, finding that the defendant director of the short film “Head’s Up” had no copyright ownership interest in the film because he was not an author.

The parties reached an informal agreement that the defendant would serve as the film’s director. The plaintiff then sent the defendant a draft work-fore-hire agreement, which the defendant never returned. Despite not having a written agreement in place, the defendant began work as the director of the film. When the film reached the editing stage, the parties’ relative understanding of the defendant’s role became apparent: the defendant believed that he held creative and artistic rights in the film, whereas the plaintiff understood defendant’s directorial services to be works for hire. When the plaintiff hired someone else to edit the film, the parties’ relationship became contentious with the defendant warning the plaintiff that he would sue if his raw footage was used without his consent and filing a copyright registration for the raw footage, listing himself as the author.

The plaintiff filed a declaratory judgment action, seeking a declaration on non-infringement for use of the footage in the film.

In assessing the plaintiff’s claim, the court first found that the plaintiff was an author by virtue of his work-for-hire relationships with the cast and crew (minus the defendant). Because co-authors cannot infringe their own works, the plaintiff could not infringe any rights defendant might have in the film.

Next, the court determined that even though the defendant had made copyrightable contributions to the film, he was not a joint author because the evidence was that neither party intended to be joint authors. Encountering the situation where, absent a work-for-hire agreement, two parties each made more than a minimal contribution to a work and yet did not mutually intend to be co-authors, the court applied the Second Circuit’s dominant-author test, which holds that the dominant author is the sole author. Here, the plaintiff was the dominant author and therefore the sole author of the film.

Ultimately, even though the defendant did not have a work-for-hire agreement with the plaintiff, the result was the same as if he had: he was not an author and had no ownership interest in the film.

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