13‐3865 16 Casa Duse, LLC v. Alex Merkin & Maurice A. Reichman
1 UNITED STATES COURT OF APPEALS 2 FOR THE SECOND CIRCUIT 3 August Term, 2014 4 (Argued: September 3, 2014 Decided: June 29, 2015) 5 Docket No. 13‐3865
6 7 16 Casa Duse, LLC, 8 Plaintiff‐Counter‐Defendant‐Appellee,
9 v.
10 Alex Merkin, 11 Defendant‐Counter‐Claimant‐Appellant, 12 Maurice A. Reichman, Esq., 13 Appellant, 14 A. Merkin Entertainment, LLC, 15 Defendant.* 16 17 Before: KATZMANN, Chief Judge, SACK and LYNCH, Circuit Judges. 18 The defendant appeals from a September 27, 2013, judgment of the United
19 States District Court for the Southern District of New York (Richard J. Sullivan,
20 Judge) granting summary judgment to the plaintiff on its copyright and state‐law
21 claims related to a film entitled Heads Up, dismissing the defendantʹs
22 counterclaims, and awarding the plaintiff costs and attorneyʹs fees. Because we
23 agree that the plaintiff owns the relevant copyright interests, we conclude that
24 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. No. 13‐3865 16 Casa Duse v. Alex Merkin & Maurice Reichman
1 copyright claims and properly enjoined the defendant from interfering with the
2 plaintiffʹs use of the work in question. We conclude, though, that the defendant,
3 not the plaintiff, was entitled to summary judgment on the plaintiffʹs claim for
4 tortious interference with business relations under New York law. The judgment
5 of the district court is therefore:
6 AFFIRMED in part, REVERSED in part, and REMANDED.
7 ELEANOR M. LACKMAN (Joshua S. 8 Wolkoff, on the brief), Cowan, DeBaets, 9 Abrahams & Sheppard LLP, New York, NY 10 for Plaintiff–Counter‐Defendant‐Appellee. 11 12 MAURICE A. REICHMAN, New York, NY, 13 for Defendant‐Counter‐Claimant‐Appellant & 14 Appellant. 15 SACK, Circuit Judge: 16 This is an appeal from a judgment of the United States District Court for
17 the Southern District of New York (Richard J. Sullivan, Judge) granting summary
18 judgment to the plaintiff on its copyright and state‐law claims, dismissing the
19 defendantʹs copyright counterclaims, and awarding the plaintiff costs and
20 attorneyʹs fees. Because we agree with the district court that the plaintiff owns
21 the copyright to all versions of the work in question, a film entitled Heads Up,
22 and that copyright does not subsist in individual contributions to that film, we
No. 13‐3865 16 Casa Duse v. Alex Merkin & Maurice Reichman
1 conclude that the district court properly granted summary judgment to the
2 plaintiff on its copyright claims and did not abuse its discretion in enjoining the
3 defendant from interfering with the plaintiffʹs use of the film. We also conclude,
4 however, that the defendant, not the plaintiff, was entitled to summary judgment
5 on the plaintiffʹs claim for tortious interference with business relations under
6 New York law. We therefore affirm in part, reverse in part, and remand the case
7 to the district court with instructions for it to grant the defendantʹs motion for
8 summary judgment on the tortious interference claim and for such further
9 proceedings as are warranted.
10 BACKGROUND
11 Appellee 16 Casa Duse, LLC, (ʺCasa Duseʺ) is a film‐production company
12 based in Brooklyn, New York. The company is owned and operated by Robert
13 Krakovski. Appellant Alex Merkin is a film director, producer, and editor.
14 Appellant Maurice Reichman is an attorney who represented Merkin in some of
15 his dealings with Casa Duse.
16 In September 2010, Krakovski, acting at all relevant times as the principal
17 of Casa Duse, purchased the rights to a screenplay entitled Heads Up from the
18 workʹs author, Ben Carlin. Krakovski, who planned to finance and produce a
1 short film based on the screenplay, asked Merkin whether he would be willing to
2 direct the film. Merkin agreed, and the two settled informally on a fee of $1,500
3 for Merkinʹs services.
4 In the ensuing months, Krakovski assembled a cast and crew for the film,
5 also entitled Heads Up. He hired additional producers, a script supervisor, a
6 photography director, camera operators, various designers and technicians, and
7 actors, creating an ensemble of about thirty members. Although Merkin
8 recommended that Krakovski employ some persons as crew members,
9 Krakovski made the ultimate hiring decisions. In the meantime, Krakovski,
10 Merkin, and others involved with the project planned various aspects of the
11 production, including props, locations, and scheduling.
12 Each cast and crew member other than Merkin entered into an
13 ʺIndependent Contractor [] Agreementʺ with Casa Duse. The agreements
14 contained statements that Casa Duse would ʺengage the services [of the cast or
15 crew member] as ʹwork for hireʹ of an independent contractor,ʺ J.A. 485, and set
16 out terms for compensation, performance standards, and other matters. The
17 work‐for‐hire agreements also stated that Casa Duse would retain ʺcomplete
18 controlʺ of the filmʹs production and ʺown all of the results and proceeds of [the
1 cast and crewʹs] services in connection with the [film] . . . including, but not
2 limited to, all rights throughout the world of . . . copyright . . . .ʺ J.A. 487.
3 In February 2011, Krakovski sent Merkin a draft work‐for‐hire agreement
4 entitled ʺDirector Employment Agreement.ʺ Its terms were similar to those in
5 the agreements signed by other cast and crew. It provided, inter alia, that Casa
6 Duse would own all rights in the film. Merkin acknowledged his receipt of the
7 draft by e‐mail, noting that he would ask his lawyer to review it.
8 Some two‐and‐a‐half months later, on May 9, 2011, Krakovski sent Merkin
9 an e‐mail reminding him to execute the agreement. Merkin did not respond.
10 Krakovski contacted Merkin again on May 16, a week before production
11 was scheduled to start, reminding him again of the importance of completing the
12 agreement before work on the film began. Merkin again failed to reply. On May
13 18, Krakovski e‐mailed again asking for a completed agreement, to no avail.
14 Despite the lack of a completed agreement, production began later that
15 month. During production, which included three days of filming, Merkin
16 performed his role as director by advising and instructing the filmʹs cast and
17 crew on matters ranging from camera angles and lighting to wardrobe and
1 makeup to the actorsʹ dialogue and movement. Merkin completed his direction
2 of the film by the end of May.
3 In June 2011, Krakovski gave Merkin a hard drive containing the raw film
4 footage in the hope that Merkin would be able to edit the footage. In the absence
5 of a work‐for‐hire agreement, the parties entered into a ʺMedia Agreementʺ
6 under which Merkin would edit but not license, sell, or copy the footage for any
7 purpose without the permission of Casa Duse.
8 On June 16, Krakovski sent an e‐mail to Merkin proposing changes to the
9 Media Agreement in order to ʺclarify,ʺ first, that Casa Duse and not Merkin
10 owned the footage and hard drive, and, second, that Casa Duseʹs entry into the
11 Media Agreement had not relinquished ʺany directorial/editorial terms [or]
12 rightsʺ that would be finally allocated by a work‐for‐hire agreement. J.A. 580.
13 Merkin replied, saying that the proposed changes seemed acceptable but also
14 ʺclarify[ing],ʺ for his part, that he was ʺnot giving up any creative or artistic
15 rightsʺ he had in the project and ʺall of [his] creative work . . . is still [his] work
16 and not the property of 16 Casa Duse, LLC.ʺ J.A. 581. Krakovski responded,
17 asserting that he had never intended the film to be ʺa ʹJoint Ventureʹʺ and instead
1 had intended to obtain Merkinʹs services pursuant to a work‐for‐hire agreement.
2 J.A. 521.
3 From July to October 2011, Krakovski and Merkin continued to negotiate
4 the terms of the Media Agreement and a work‐for‐hire agreement. The parties
5 communicated directly—via e‐mail—and through their attorneys. From time to
6 time, they appeared to reach agreement on some key terms, including Casa
7 Duseʹs ownership of the film, Merkinʹs authority to make a ʺdirectorʹs cut,ʺ and
8 Merkinʹs ability to remove his name from the final product if he so desired, but
9 negotiations ultimately collapsed. Krakovski demanded the return of the hard
10 drive containing the raw film footage. Merkin refused and warned Krakovski
11 that, without an agreement in place, Casa Duse could not, in his view, release the
12 film.
13 In November 2011, Merkin sent Krakovski a letter ʺputting [Krakovski] on
14 notice that [Merkin] forb[ade] any use whatsoever of the raw footage.ʺ J.A. 400.
15 The letter conceded that Krakovski owned the screenplay but insisted that
16 Merkin owned the ʺraw footage.ʺ Id. In December 2011, Krakovski responded
17 through counsel, who, by e‐mail, proposed that Casa Duse pay Merkin the
18 agreed‐upon $1,500 for his directorial services, allow him to complete his desired
1 ʺdirectorʹs cut,ʺ and ensure his opportunity to remove his name from the finished
2 product if he wished. In exchange, Merkin would agree to deem his directorial
3 services a ʺwork for hireʺ for Casa Duse. The e‐mail also advised that Casa Duse
4 had, by then, retained a different editor. Merkin responded and reiterated his
5 position that Casa Duse was ʺnot permitted to use [his] work in any edit without
6 [his] involvement.ʺ J.A. 403. Merkin threatened to contact film festivals to
7 inform them that Casa Duse lacked rights to the film in the event Krakovski did
8 not assent. Krakovskiʹs attorney responded by sending an e‐mail to Merkinʹs
9 attorney, disputing Merkinʹs position and warning that any interference with
10 screening of the film would potentially subject Merkin to liability.
11 In January 2012, as the dispute continued to simmer, Merkin registered a
12 copyright in the film with the United States Copyright Office. The title of the
13 registration was ʺRaw footage for film ʹHeads Upʹ Disks 1‐4,ʺ reflecting the fact
14 that Merkin had copied the footage from the hard drive onto four DVDs. J.A. 71.
15 The registration listed the type of work as ʺMotion Pictureʺ and asserted that
16 Merkin was its sole author. Merkin did not obtain Casa Duseʹs permission to
17 register the copyright, and Krakovski was unaware of the registration.
1 In March 2012, Krakovski began submitting Heads Up to film festivals and
2 making plans to publicize the film. To that end, he scheduled an invitation‐only
3 screening for approximately seventy persons at the New York Film Academy
4 (ʺNYFAʺ) on April 18, 2012. Krakovski also organized a reception to follow at a
5 nearby restaurant, City Crab, for which he paid a non‐refundable deposit of
6 $1,956.58.
7 On the date of the event, the NYFA chairperson contacted Krakovski to tell
8 him that Merkinʹs attorney (Reichman) had threatened the NYFA with a cease‐
9 and‐desist order to prevent the screening from proceeding. According to
10 Reichman, it was Merkin—not Reichman—who contacted the NYFA and
11 mentioned a cease and desist ʺnotice,ʺ not an order, at which point the NYFA
12 contacted Reichman. In any event, the NYFA cancelled the screening in response
13 to these threats, and Casa Duse lost its restaurant deposit. Casa Duse
14 subsequently missed at least four film festival submission deadlines as a result of
15 the dispute. Merkin did not return the hard drive, the DVDs, or the raw footage
16 in any form.
17 Casa Duse brought suit against Merkin and his limited liability company,
18 A. Merkin Entertainment, LLC, (ʺAMEʺ) in May 2012 seeking, inter alia, a
1 temporary restraining order and injunction enjoining Merkin from interfering
2 with its use of the film. The district court granted the temporary restraining
3 order and issued an order to show cause why a preliminary injunction should
4 not issue. After briefing, on May 18, 2012, the court issued the preliminary
5 injunction that Casa Duse sought.
6 Some two months later, in July 2012, Casa Duse filed an amended
7 complaint requesting a judgment declaring that (1) Casa Duse was not liable to
8 Merkin or AME for copyright infringement; (2) Neither Merkin nor AME owned
9 a copyright interest in the film; and (3) Merkinʹs copyright registration was
10 invalid. Casa Duse also asserted claims for breach of contract, tortious
11 interference with business relations, and conversion. It sought relief in the form
12 of compensatory damages; an order requiring Merkin to withdraw his copyright
13 registration, return all forms of the footage, and refrain from interfering with
14 Casa Duseʹs use of the film; and costs and attorneyʹs fees as a sanction under 28
15 U.S.C. § 1927 and pursuant to the Copyright Actʹs fees provision, 17 U.S.C. § 505.
16 The defendants filed an Amended Answer and counterclaims in August
17 2012, requesting a judgment declaring that (1) ʺA Motion Picture Director Is An
18 Author,ʺ (2) ʺ17 U.S.C. Has No Provision Of, Or For, A ʹMerged Work,ʹʺ (3)
1 ʺThere Can Be No Work For Hire Or Assignment Without An Express Writing,ʺ
2 (4) Merkinʹs copyright registration was valid, (5) attorneyʹs fees pursuant to 17
3 U.S.C. § 505 were unavailable in the absence of a copyright infringement claim,
4 and (6) it was ʺimproperʺ for Casa Duseʹs complaint to include a request for
5 sanctions pursuant to 28 U.S.C. § 1927. J.A. 318‐23. Merkin also asserted a claim
6 for breach of contract based on Casa Duseʹs failure to pay him for his services.
7 Casa Duse moved for summary judgment on its claims and its requests for
8 fees and sanctions. Merkin cross‐moved for summary judgment on all of his
9 claims and most of Casa Duseʹs claims, including its claim for tortious
10 interference with business relations. Merkin also requested that the court vacate
11 the preliminary injunction and strike the fees and sanctions request. AME
12 moved to dismiss the complaint as to AME in its entirety.
13 The district court declined to vacate the injunction. It granted summary
14 judgment to Casa Duse on all claims, along with fees against Merkin and
15 sanctions against Reichman. 16 Casa Duse, LLC v. Merkin, No. 12 CIV. 3492 RJS,
16 2013 WL 5510770, at *20‐21, 2013 U.S. Dist. LEXIS 143958, at *63‐64 (S.D.N.Y.
17 Sept. 27, 2013). The court granted AMEʹs motion to dismiss. Id., 2013 WL
1 5510770, at *20, 2013 U.S. Dist. LEXIS 143958, at *64.1 The court also dismissed all
2 of Merkinʹs counterclaims except for his claim for breach of contract. Id. The
3 court subsequently granted Merkinʹs motion, agreed to by Casa Duse, to
4 voluntarily dismiss his breach of contract claim without prejudice. After
5 accepting additional submissions from the parties as to the proper amount of
6 costs and fees, the court entered its final judgment on December 19, 2013,
7 awarding Casa Duse (1) $1,956.58 in damages resulting from Merkinʹs
8 interference with the screening event; and (2) $185,579.65 in attorneyʹs fees and
9 costs, of which Merkin and Reichman would be jointly and severally liable for
10 $175,634 and Reichman would be solely liable for the remaining $9,945.65.
11 Merkin and Reichman appealed.
1 Casa Duse does not challenge this dismissal.
1 DISCUSSION 2 This case requires us to answer a question of first impression in this
3 Circuit: May a contributor to a creative work whose contributions are
4 inseparable from, and integrated into, the work maintain a copyright interest in
5 his or her contributions alone? We conclude that, at least on the facts of the
6 present case, he or she may not.
7 I. Standard of Review 8 ʺWe review a district courtʹs grant of summary judgment de novo.ʺ Blanch
9 v. Koons, 467 F.3d 244, 249 (2d Cir. 2006). Summary judgment is appropriate
10 when ʺthere is no genuine issue as to any material fact and . . . the moving party
11 is entitled to a judgment as a matter of law.ʺ Id. at 250 (alteration in original)
12 (quoting Fed. R. Civ. P. 56).
13 ʺWe review the District Courtʹs entry of a permanent injunction for abuse
14 of discretion, which may be found where the Court, in issuing the injunction,
15 relied on clearly erroneous findings of fact or an error of law.ʺ Knox v. Salinas,
16 193 F.3d 123, 128‐29 (2d Cir. 1999) (per curiam).
17 We review a district courtʹs award of costs and attorneyʹs fees under 17
18 U.S.C. § 505 and its imposition of sanctions under 28 U.S.C. § 1927 for abuse of
1 discretion. See Medforms, Inc. v. Healthcare Mgmt. Solutions, Inc., 290 F.3d 98, 117
2 (2d Cir. 2002) (17 U.S.C. § 505); In re 60 E. 80th St. Equities, Inc., 218 F.3d 109, 115
3 (2d Cir. 2000) (28 U.S.C. § 1927).
4 II. Jurisdiction 5 We must determine, as a threshold matter, whether we have the authority
6 to hear the merits of this case on appeal. We generally lack jurisdiction, under 28
7 U.S.C. § 1291,2 over appeals from nonfinal orders of the district courts. This
8 ʺfinal judgment ruleʺ promotes judicial economy by ʺforbidding piecemeal
9 disposition on appeal of what for practical purposes is a single controversy.ʺ
10 Cobbledick v. United States, 309 U.S. 323, 325 (1940). Accordingly, ʺimmediate
11 appeal is unavailable to a plaintiff who seeks review of an adverse decision on
12 some of its claims by voluntarily dismissing the others without prejudice.ʺ Rabbi
13 Jacob Joseph Sch. v. Province of Mendoza, 425 F.3d 207, 210 (2d Cir. 2005) (emphasis
14 in original). Were the rule otherwise, such a plaintiff would ʺeffectively have
15 secured an otherwise unavailable interlocutory appeal.ʺ Id. (quoting Chappelle v.
16 Beacon Commcʹns Corp., 84 F.3d 652, 654 (2d Cir. 1996)).
Section 1291 provides in pertinent part: ʺThe courts of appeals . . . shall have 2
jurisdiction of appeals from all final decisions of the district courts of the United States . . . .ʺ
1 In the case before us, the district court entered judgment after dismissing
2 Merkinʹs breach of contract claim without prejudice at the partiesʹ request. The
3 courtʹs judgment would thus ordinarily be nonfinal, depriving us of jurisdiction
4 over the merits.
5 At argument before us, however, Merkin agreed to a dismissal of his
6 remaining claim, for breach of contract, with prejudice. ʺA party who loses on a
7 dispositive issue that affects only a portion of his claims may elect to abandon
8 the unaffected claims, invite a final judgment, and thereby secure review of the
9 adverse ruling.ʺ Atlanta Shipping Corp. v. Chemical Bank, 818 F.2d 240, 246 (2d Cir.
10 1987). We may therefore treat the district courtʹs order as final. See Rabbi Jacob
11 Joseph Sch., 425 F.3d at 211 (refusing to treat order as final when ʺthe [plaintiff]
12 expressly declined to abandon [its] claim with prejudiceʺ at oral argument); see
13 also JTC Petroleum Co. v. Piasa Motor Fuels, Inc., 190 F.3d 775, 776‐77 (7th Cir. 1999)
14 (ʺ[A]t argument, the plaintiffʹs lawyer quickly agreed that we could treat the
15 dismissal of the two claims [which the district court had dismissed without
16 prejudice] as having been with prejudice, thus winding up the litigation and
17 eliminating the bar to our jurisdiction.ʺ). We therefore proceed to the merits.
1 III. Copyright Claims
2 Merkin argues that the district court erred in concluding, first, that Merkin
3 could not copyright his creative contributions to the film, and, second, that he
4 lacks copyright ownership of the ʺraw film footage.ʺ Casa Duse responds that
5 individual contributions to a film, such as direction, are not themselves subject to
6 copyright protection and that Casa Duse retains sole copyright ownership of the
7 film and the ʺraw footage,ʺ to the extent the two are distinguishable for copyright
8 purposes.
9 Two points merit mention at the outset.
10 First, the parties agree that Merkin is not a ʺjoint authorʺ or ʺco‐authorʺ of
11 the film under the 1976 Copyright Act. See 17 U.S.C. § 101 (ʺA ʹjoint workʹ is a
12 work prepared by two or more authors with the intention that their contributions
13 be merged into inseparable or interdependent parts of a unitary whole.ʺ). If he
14 were, that fact would likely prohibit his interference with Casa Duseʹs use and
15 display of the film, because ʺ[o]ne joint owner cannot be liable for copyright
16 infringement to another joint owner.ʺ 1 Melville B. Nimmer & David Nimmer,
17 Nimmer on Copyright § 6.10[A] (2015). A co‐authorship claimant in our Circuit
18 generally must show that ʺeach of the putative co‐authors (1) made
1 independently copyrightable contributions to the work; and (2) fully intended to
2 be co‐authors.ʺ Thomson v. Larson, 147 F.3d 195, 200 (2d Cir. 1998) (citing
3 Childress v. Taylor, 945 F.2d 500, 507‐08 (2d Cir. 1991)). Even assuming the first
4 prong3 is met here, we agree with the district court that ʺthe record uniformly
5 establishes that [Casa Duse], through its principal, Krakovski, never intended to
6 share authorship of the film with Merkin or anyone else,ʺ and ʺ[t]here is also
7 considerable evidence that Merkin never intended to be [Casa Duseʹs] co‐author.ʺ
8 16 Casa Duse, LLC, 2013 WL 5510770, at *8‐9, 2013 U.S. Dist. LEXIS 143958, at *23‐
9 25.4
10 Second, the parties also agree that Merkinʹs efforts cannot be deemed a
11 ʺwork made for hire.ʺ See 17 U.S.C. § 201(b) (ʺ[T]he . . . person for whom the
12 work[‐for‐hire] was prepared is considered the author . . . and, unless the parties
13 have expressly agreed otherwise in a written instrument signed by them, owns
It seems likely that ʺ[b]y ʹcopyrightableʹ [the Childress court] meant only to say that 3
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. We noted in Thomson that ʺthe test of co‐authorship intent will vary depending on the 4
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.
1 all of the rights comprised in the copyright.ʺ). A work‐for‐hire arrangement
2 requires:
3 (1) a work prepared by an employee within the scope of his or her 4 employment; or (2) a work specially ordered or commissioned for 5 use as a contribution to a collective work, as a part of a motion 6 picture[, or for other specified purposes] . . . if the parties expressly 7 agree in a written instrument signed by them that the work shall be 8 considered a work made for hire. 9 Id. § 101. Merkin was not Casa Duseʹs employee, see Cmty. for Creative Non‐
10 Violence v. Reid, 490 U.S. 730, 740‐41 (1989) (ʺ[T]he term ʹemployeeʹ [in section
11 101] should be understood in light of the general common law of agency.ʺ), and
12 the parties failed to execute a written agreement.
13 A. Copyright in Creative Contributions to a Work
14 ʺCopyright protection subsists . . . in original works of authorship fixed in
15 any tangible medium of expression, now known or later developed, from which
16 they can be perceived, reproduced, or otherwise communicated, either directly
17 or with the aid of a machine or device.ʺ 17 U.S.C. § 102(a). We have never
18 decided whether an individualʹs non‐de minimis creative contributions to a work
19 in which copyright protection subsists, such as a film, fall within the subject
20 matter of copyright, when the contributions are inseparable from the work and
21 the individual is neither the sole nor a joint author of the work and is not a party
1 to a work‐for‐hire arrangement. See Thomson, 147 F.3d at 206 (acknowledging
2 open question and resolving case on alternative grounds). We answer that
3 question in the negative on the facts of the present case, finding that the
4 Copyright Actʹs terms, structure, and history support the conclusion that
5 Merkinʹs contributions to the film do not themselves constitute a ʺwork of
6 authorshipʺ amenable to copyright protection.
7 The Copyright Act does not define the term ʺworks of authorship.ʺ Section
8 102 of the Act, however, lists examples of categories of ʺworks of authorship,ʺ
9 including ʺliterary works,ʺ 17 U.S.C. § 102(a)(1), ʺmusical works,ʺ id. § 102(a)(2),
10 and—most relevant here—ʺmotion pictures and other audiovisual works,ʺ id.
11 § 102(a)(6). This list is not exhaustive, but as we have previously observed,
12 categories of creative efforts that are not ʺsimilar []or analogous to any of the
13 listed categoriesʺ are unlikely to fall within the subject matter of federal
14 copyright protection. Natʹl Basketball Assʹn v. Motorola, Inc., 105 F.3d 841, 846 (2d
15 Cir. 1997) (concluding that ʺbasketball games do not fall within the subject matter
16 of federal copyright protection because they do not constitute ʹoriginal works of
17 authorshipʹ under 17 U.S.C. § 102(a).ʺ). Motion pictures, like ʺpantomimes,ʺ 17
18 U.S.C. § 102(a)(4), and ʺdramatic works,ʺ id. § 102(a)(3), are works that may be
1 expected to contain contributions from multiple individuals. See Richlin v. Metro‐
2 Goldwyn‐Mayer Pictures, Inc., 531 F.3d 962, 975 (9th Cir. 2008) (ʺA motion picture
3 is a work to which many contribute; however, those contributions ultimately
4 merge to create a unitary whole.ʺ). But the Act lists none of the constituent parts
5 of any of these kinds of works as ʺworks of authorship.ʺ This uniform absence of
6 explicit protection suggests that non‐freestanding contributions to works of
7 authorship are not ordinarily themselves works of authorship.
8 Other provisions of the Act support this conclusion. The Actʹs definition
9 of ʺjoint work,ʺ a work prepared by multiple authors ʺwith the intention that
10 their contributions be merged into inseparable or interdependent parts of a
11 unitary whole,ʺ 17 U.S.C. § 101 (emphasis added), suggests that such inseparable
12 contributions are not themselves ʺworks of authorship.ʺ Copyright may subsist
13 in contributions to a collective work, see id. § 201(c) (ʺCopyright in each separate
14 contribution to a collective work is distinct from copyright in the collective work
15 as a whole.ʺ), but only when such contributions constitute ʺseparate and
16 independentʺ works. Id. § 101 (ʺA ʹcollective workʹ is a work, such as a periodical
17 issue, anthology, or encyclopedia, in which a number of contributions,
18 constituting separate and independent works in themselves, are assembled into a
1 collective whole.ʺ (emphasis added)). The requirement that contributions be
2 ʺseparate and independentʺ in order to obtain their own copyright protection
3 also indicates that inseparable contributions integrated into a single work cannot
4 separately obtain such protection.
5 The legislative history of the Copyright Act further supports this reading.
6 According to the House Report on the 1976 Act:
7 [A] motion picture would normally be a joint rather than a collective 8 work with respect to those authors who actually work on the film, 9 although their usual status as employees for hire would keep the 10 question of coownership from coming up. On the other hand, 11 although a novelist, playwright, or songwriter may write a work 12 with the hope or expectation that it will be used in a motion picture, 13 this is clearly a case of separate or independent authorship rather 14 than one where the basic intention behind the writing of the work 15 was for motion picture use. 16 H.R. Rep. No. 94‐1476, at 120 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5736.
17 While issues of ʺcoownershipʺ of a copyright may arise in the motion picture
18 context, the question of separate contributions meriting separate copyrights as
19 ʺworksʺ ordinarily would not, unless the motion picture incorporates separate,
20 freestanding pieces that independently constitute ʺworks of authorship.ʺ In a
21 joint work, ʺthe separate elements [comprising the work] merge into a unified
22 whole,ʺ whereas in a collective work, individualsʹ contributions ʺremain
1 unintegrated and disparate.ʺ Id., H.R. Rep. No. 94‐1476, at 122, 1976
2 U.S.C.C.A.N., at 5738.
3 As Casa Duse observes, the Copyright Office has, in an unrelated case,
4 suggested a similar interpretation of the Act. The Office has stated that an
5 individual who lacks a work‐for‐hire agreement but who ʺintend[s] her
6 contribution or performance to ʹbe merged into inseparable or interdependent
7 parts of a unitary whole[,]ʹ 17 U.S.C. § 101[,] . . . may assert a claim in joint
8 authorship in the motion picture, but not sole authorship of her performance in a
9 portion of the work.ʺ Letter from Robert J. Kasunic, Assoc. Register of
10 Copyrights and Dir. of Registration Policy and Practices, U.S. Copyright Office,
11 to M. Cris Armenta, The Armenta Law Firm (Mar. 6, 2014) (attached as appendix
12 to Brief in Response to Suggestion of Rehearing En Banc [Dkt. 54] at ADD47,
13 Garcia v. Google, No. 12‐57302 (9th Cir. Mar. 12, 2014)). We need not defer to the
14 Copyright Officeʹs interpretation as a general matter, see Carol Barnhart Inc. v.
15 Econ. Cover Corp., 773 F.2d 411, 414 (2d Cir. 1985), or under the factually distinct
16 circumstances of the present case. We find its analysis persuasive nonetheless.
17 There was, until recently, some authority apparently to the contrary. The
18 majority of a three‐judge panel of the Ninth Circuit concluded that copyright
1 protection may subsist in an actorʹs performance in a motion picture. See Garcia
2 v. Google, Inc., 766 F.3d 929, 933‐36 (9th Cir.), revʹd en banc, ‐‐‐ F.3d ‐‐‐, No. 12‐
3 57302, 2015 WL 2343586, 2015 U.S. App. LEXIS 8105 (9th Cir. May 18, 2015)
4 (ʺGarcia (en banc)ʺ). In Garcia, as in the present case, an individual who made a
5 contribution to a finished film—in that case, an actor—claimed ownership of a
6 copyright interest in her contribution. The court reasoned that the actorʹs
7 performance exhibited at least a ʺminimal degree of creativityʺ such that the
8 actor had probably engaged in an original act of authorship. Id. at 934 (quoting
9 Feist Publʹns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991)). And the
10 performance was, in the courtʹs view, ʺfixedʺ in a tangible medium as part of the
11 finished film. Id.
12 An en banc panel reversed, however, adhering to the Copyright Officeʹs
13 view and, based thereon, concluding that the actorʹs ʺtheory of copyright law
14 would result in [a] legal morass[,] . . . [making] Swiss cheese of copyrights.ʺ
15 Garcia (en banc), ‐‐‐ F.3d at ‐‐‐, 2015 WL 2343586, at *6, 2015 U.S. App. LEXIS 8105,
16 at *23 (internal quotation marks omitted). We agree. Filmmaking is a
17 collaborative process typically involving artistic contributions from large
18 numbers of people, including—in addition to producers, directors, and
1 screenwriters—actors, designers, cinematographers, camera operators, and a
2 host of skilled technical contributors. If copyright subsisted separately in each of
3 their contributions to the completed film, the copyright in the film itself, which is
4 recognized by statute as a work of authorship, could be undermined by any
5 number of individual claims. These various contributors may make original
6 artistic expressions, which are arguably fixed in the medium of film footage. But
7 while originality and fixation are necessary prerequisites to obtaining copyright
8 protection, see 17 U.S.C. § 102(a), they are not alone sufficient: Authors are not
9 entitled to copyright protection except for the ʺworks of authorshipʺ they create
10 and fix. See id.; see also Garcia, 766 F.3d at 941 (N.R. Smith, J., dissenting).
11 Our conclusion in the present case does not suggest that motion picture
12 directors such as Merkin may never achieve copyright protection for their
13 creative efforts. The director of a film may, of course, be the sole or joint author
14 of that film, such that she or he can secure copyright protection for the work. See
15 Cmty. for Creative Non‐Violence, 490 U.S. at 737 (ʺAs a general rule, the author is
16 the party who actually creates the work, that is, the person who translates an
17 idea into a fixed, tangible expression entitled to copyright protection.ʺ); see also F.
18 Jay Dougherty, Not A Spike Lee Joint? Issues in the Authorship of Motion Pictures
1 Under U.S. Copyright Law, 49 UCLA L. Rev. 225, 312 (2001) (ʺ[T]he director of the
2 film is certainly potentially one of its most important authors.ʺ). And authors of
3 freestanding works that are incorporated into a film, such as dance performances
4 or songs, may copyright these ʺseparate and independent work[s].ʺ 17 U.S.C.
5 § 101 (defining ʺcollective workʺ). But a directorʹs contribution to an integrated
6 ʺwork of authorshipʺ such as a film is not itself a ʺwork of authorshipʺ subject to
7 its own copyright protection.
8 A final observation: A conclusion other than the one we adopt would
9 grant contributors like Merkin greater rights than joint authors, who, as we have
10 noted, have no right to interfere with a co‐authorʹs use of the copyrighted work.
11 See Childress, 945 F.2d at 508 (ʺJoint authorship entitles the co‐authors to equal
12 undivided interests in the work.ʺ). We doubt that Congress intended for
13 contributors who are not joint authors to have greater rights enabling them to
14 hamstring authorsʹ use of copyrighted works, as apparently occurred in the case
15 at bar. We agree with the en banc Ninth Circuit, then, that the creation of
16 ʺthousands of standalone copyrightsʺ in a given work was likely not intended.
17 Garcia (en banc), ‐‐‐ F.3d at ‐‐‐, 2015 WL 2343586, at *7, 2015 U.S. App. LEXIS 8105,
18 at *26.
1 We conclude that Merkin did not obtain and does not possess a copyright
2 in his directorial contributions to the finished film.5
3 B. Copyright in Raw Film Footage
4 Merkin also contends that he and not Casa Duse owns all copyright
5 interests in the ʺraw film footageʺ which was contained on the hard drive and
6 DVDs and from which the final film Heads Up was or will be produced.
7 Unlike Merkinʹs creative contributions to the film, the film footage is
8 subject to copyright protection. An original motion picture is surely a ʺwork of
9 authorshipʺ in which copyright protection ʺsubsistsʺ under the Copyright Act.
We thus need not reach Casa Duseʹs alternative contention, which the district court 5
did not address, that even if Merkin maintained some copyright interest in his contributions, he granted Casa Duse an implied license to use those contributions. See Graham v. James, 144 F.3d 229, 236 (2d Cir. 1998) (ʺA copyright owner who grants a nonexclusive license to use his copyrighted material waives his right to sue the licensee for copyright infringement.ʺ). We note, however, that while one commentator has suggested that ʺ[t]he correct approach to resolving the situation where an individual . . . contributes expression to a work but is found not to be a joint author is to find an implied license,ʺ 2 Patry on Copyright § 5:17, there are at least some circumstances in which the implied license approach may not permanently resolve the dispute. ʺ[U]nder federal and state law a material breach of a licensing agreement gives rise to a right of rescission which allows the nonbreaching party to terminate the agreement.ʺ Rano v. Sipa Press, Inc., 987 F.2d 580, 586 (9th Cir. 1993), as amended, Mar. 24, 1993. If, for example, Casa Duse had materially breached any implied licensing agreement it had with Merkin (by, for example, failing to pay him), Merkinʹs subsequent refusal to ʺgiv[e] up any creative or artistic rightsʺ he held, J.A. 581, may have constituted justifiable rescission of the license.
1 See 17 U.S.C. § 102(a)(6). And ʺwhere a work is prepared over a period of time,
2 the portion of it that has been fixed at any particular time constitutes the work as
3 of that time.ʺ Id. § 101. The unedited film footage at issue in this case seems to
4 us to be an early version of the finished product, constituting the film ʺas of that
5 time.ʺ Because ʺthe Copyright Act [] affords protection to each work at the
6 moment of its creation,ʺ Weissmann v. Freeman, 868 F.2d 1313, 1317 (2d Cir. 1989),
7 copyright subsists even in such an unfinished work.6
8 With respect to the ownership of any such copyright, ʺ[c]opyright in a
9 work protected under this title vests initially in the author or authors of the
10 work.ʺ 17 U.S.C. § 201(a). The Copyright Act contemplates instances in which
11 multiple authors of a single work may maintain some form of copyright
12 ownership in that work, but the parties agree that Heads Up fits into none of
13 those categories.7 In cases in which none of the multiple‐author scenarios
14 specifically identified by the Copyright Act applies, but multiple individuals lay
For this reason, we do not share the concern of the dissenting judge in Garcia (en banc) 6
that ʺ[i]f Garciaʹs scene is not a work, then every take of every scene of, say, Lord of the Rings is not a work, and thus not protected by copyright, unless and until the clips become part of the final movie.ʺ Garcia (en banc), ‐‐‐ F.3d at ‐‐‐, 2015 WL 2343586, at *13, 2015 U.S. App. LEXIS 8105, at *43 (Kozinski, J., dissenting). Copyright subsists in a single work at any stage of its creation, even at points at which the work is not yet complete. 7 The parties agree, for example, that they are not joint authors. See 17 U.S.C. § 201(a).
1 claim to the copyright in a single work, the dispositive inquiry is which of the
2 putative authors is the ʺdominant author.ʺ See Childress, 945 F.2d at 508.
3 The district court concluded, and we agree, that Casa Duse was that
4 ʺdominant author.ʺ See 16 Casa Duse, 2013 WL 5510770 at *10, 2013 U.S. Dist.
5 LEXIS 143958 at *29. Our Circuit has not proffered rules for determining which
6 of multiple authors is ʺdominant.ʺ See Childress, 945 F.2d at 508 (discussing joint
7 authorship inquiry ʺwhere one person [] is indisputably the dominant author of
8 the work and the only issue is whether that person is the sole author or she and
9 another [] are joint authorsʺ). We have, however, identified ʺfactual indicia of
10 ownership and authorshipʺ relevant to the joint‐author inquiry. Thomson, 147
11 F.3d at 202. These factors—including decisionmaking authority, billing, and
12 written agreements with third parties, see id. at 202‐04—are also relevant to our
13 dominant‐author inquiry.
14 As to decisionmaking authority, which refers to the partiesʹ relative control
15 ʺover what changes are made and what is included in a work,ʺ id. at 202, the
16 parties agree that Merkin exercised a significant degree of control over many of
17 the creative decisions underlying both the raw film footage and the finished
18 product. As director, Merkin made a variety of creative decisions related to
1 camera work, lighting, blocking, and actorsʹ wardrobe, makeup, and dialogue
2 delivery, particularly during the three days of filming. But in the context of the
3 project as a whole, Casa Duse exercised far more decisionmaking authority. Cf.
4 id. at 198 n.10 (putative co‐authorʹs claim to have ʺdeveloped [a playʹs] plot and
5 theme, contributed extensively to the story, created many character elements,
6 [and written] a significant portion of the dialogue and song lyricsʺ did not render
7 her a joint, let alone dominant, author of play). Casa Duse initiated the project;
8 acquired the rights to the screenplay; selected the cast, crew and director;
9 controlled the production schedule; and coordinated (or attempted to
10 coordinate) the filmʹs publicity and release. Cf. Aalmuhammed v. Lee, 202 F.3d
11 1227, 1234 (9th Cir. 2000) (ʺ[A]n author superintend[s] the work by exercising
12 control. This will likely be . . . the inventive or master mind who creates, or gives
13 effect to the idea.ʺ (second alteration in original) (footnotes and internal
14 quotation marks omitted)).
15 The second factor is ʺthe way in which the parties bill or credit
16 themselves,ʺ which provides evidence of intent of authorship. Thomson, 147 F.3d
17 at 203. Although Merkin evidently sought to retain the right to remove his name
18 from the finished film, both parties initially intended to take some credit for the
1 final product. The billing inquiry as to the raw footage, then, appears to us to be
2 essentially neutral, as we understand will often be the case in the context of a
3 motion picture. See Dougherty, supra at 264 (explaining that this factor ʺis less
4 helpful in evidencing the contributorsʹ intent for works such as motion picturesʺ).
5 The third factor, ʺthe partiesʹ agreements with outsiders,ʺ Thomson, 147
6 F.3d at 204, points decisively in Casa Duseʹs favor. Casa Duse obtained written
7 work‐for‐hire agreements from every cast and crew member other than Merkin.
8 Merkin did not, so far as the record shows, enter into any third party agreements.
9 Indeed, nothing in the record suggests he had any intention to do so. Casa Duse
10 also entered into an agreement with the screenwriter, authorizing the very
11 creation of the film as a derivative work. See 17 U.S.C. § 101 (ʺA ʹderivative workʹ
12 is a work based upon one or more preexisting works . . . .ʺ). Thus Casa Duse
13 executed all of the relevant third‐party agreements.
14 We agree with the district court that in this case, Casa Duse was the
15 dominant author of the film. The record does not reflect any developments that
16 occurred between the creation of the raw film footage and Casa Duseʹs attempts
17 to create a finished product that would alter this analysis as to the raw footage.
1 We thus conclude that Casa Duse, not Merkin, owns the copyright in the finished
2 film and its prior versions, including the disputed ʺraw film footage.ʺ
3 IV. Tortious Interference with Business Relations 4 Merkin does not challenge the district courtʹs grant of summary judgment
5 to Casa Duse on two of its three state law claims.8 He argues, however, that the
6 court erred in granting summary judgment to Casa Duse on its claim for tortious
7 interference with business relations. The court concluded that Merkinʹs
8 interference with Casa Duseʹs planned screening and post‐screening reception,
9 which resulted in the cancellation of the events and the loss of Casa Duseʹs
10 restaurant deposit, constituted tortious interference under New York law. We
11 disagree and conclude that the undisputed material facts require judgment as a
12 matter of law in Merkinʹs favor. See Fed. R. Civ. P. 56(a).
13 To prevail on a claim for tortious interference with business relations—also
14 known as tortious interference with prospective economic advantage, see Catskill
15 Dev., L.L.C. v. Park Place Entmʹt Corp., 547 F.3d 115, 132 (2d Cir. 2008) —under
The district court concluded that Casa Duseʹs claims for breach of contract and 8
conversion, both of which related to Casa Duseʹs request that Merkin return the hard drive containing the raw film footage, were properly analyzed as a single claim for replevin under New York law. 16 Casa Duse, 2013 WL 5510770 at *12, 2013 U.S. Dist. LEXIS 143958 at *35. Merkin does not challenge the district courtʹs order requiring that he return the hard drive and DVDs to Casa Duse.
1 New York law, a plaintiff must show that ʺ(1) the plaintiff had business relations
2 with a third party; (2) the defendant interfered with those business relations; (3)
3 the defendant acted for a wrongful purpose or used dishonest, unfair, or
4 improper means; and (4) the defendantʹs acts injured the relationship.ʺ Id.
5 Merkin does not contest that to the extent Casa Duse had business
6 relationships with the NYFA and City Crab Restaurant, his actions interfered
7 with those relationships in a way that injured Casa Duse. It is undisputed that
8 Merkinʹs claimed copyright interest, whether communicated by Merkin or
9 Reichman, resulted in the cancellation of the screening and the reception. 16 Casa
10 Duse, 2013 WL 5510770 at *13 n.5, 2013 U.S. Dist. LEXIS 143958 at *40‐41 n.5.
11 Thus the second and fourth requirements for a cause of action were met. Merkin
12 argues, however, that Casa Duse has failed to establish the first and third
13 elements of the claim.
14 As to the first, Merkin argues that Casa Duse has failed to demonstrate the
15 ʺbusiness relationsʺ component of its claim because ʺa one night rental is not a
16 business relationship.ʺ Appellantʹs Br. at 36. Merkin cites no authority for this
17 proposition. New York courts have placed some limits on what constitutes
18 ʺbusiness relationsʺ by rejecting, for example, a claim containing ʺonly a general
1 allegation of interference with customers without any sufficiently particular
2 allegation of interference with a specific contract or business relationship,ʺ McGill
3 v. Parker, 179 A.D.2d 98, 105, 582 N.Y.S.2d 91, 95 (1st Depʹt 1992), but Casa Duse
4 has raised more than such a general allegation by pointing to its business
5 relationships with the NYFA and the restaurant.
6 As to the third element, Merkin argues that Casa Duse has failed to show
7 that he ʺacted for a wrongful purpose or used dishonest, unfair, or improper
8 means.ʺ Catskill Dev., 547 F.3d at 132. We agree. Merkin correctly notes that the
9 ʺwrongful meansʺ element sets a high bar. Unlike a claim for tortious
10 interference with contract, which requires a plaintiff to show no more than that
11 the defendant intentionally and without justification procured a breach of a valid
12 contract of which he was aware, see Lama Holding Co. v. Smith Barney Inc., 88
13 N.Y.2d 413, 424, 668 N.E.2d 1370, 1375 (1996), a claim for tortious interference
14 with business relations requires a plaintiff to show, ʺas a general rule,ʺ that ʺthe
15 defendantʹs conduct . . . amount[ed] to a crime or an independent tort,ʺ Carvel
16 Corp. v. Noonan, 3 N.Y.3d 182, 190, 818 N.E.2d 1100, 1103 (2004). New York
17 courts have recognized an exception to this rule ʺwhere a defendant engages in
18 conduct ʹfor the sole purpose of inflicting intentional harm on plaintiffs.ʹʺ Id.
1 (quoting NBT Bancorp, Inc. v. Fleet/Norstar Fin. Grp., Inc., 215 A.D.2d 990, 990, 628
2 N.Y.S.2d 408 (3d Depʹt 1995), affʹd, 87 N.Y.2d 614, 664 N.E.2d 492 (1996)). But this
3 exception is narrow: When a defendant has acted with a permissible purpose,
4 such as ʺnormal economic self‐interest,ʺ wrongful means have not been shown,
5 even if the defendant was ʺindifferent to the [plaintiffʹs] fate.ʺ Id. The New York
6 Court of Appeals has not yet identified any other exceptions to the general rule.
7 See id., 3 N.Y.3d at 190‐91, 818 N.E.2d at 1103‐04.
8 Merkinʹs interaction with the NYFA director was not criminal, and Casa
9 Duse does not argue that his conduct was independently tortious. Nor does
10 Casa Duse allege that Merkin acted for the sole purpose of harming the
11 company. Casa Duse instead urges us to find that Merkinʹs insistent assertion of
12 his copyright interest in the film constituted wrongful means, because he
13 demonstrated a ʺwillful[] blind[ness] to the factual and legal realities of [his]
14 position.ʺ 16 Casa Duse, 2013 WL 5510770 at *13, 2013 U.S. Dist. LEXIS 143958 at
15 *42.
16 New York courts have left open the possibility that a defendant who has
17 ʺharass[ed]ʺ a plaintiff with ʺmeritless litigationʺ may have utilized ʺwrongful
18 means.ʺ See Carvel Corp., 3 N.Y.3d at 192, 818 N.E.2d at 1104. But although we
1 have concluded that Merkinʹs copyright claims ultimately must fail, we must also
2 conclude, in light of the conclusion of at least one appellate panel, see Garcia, 766
3 F.3d 929, that they were not frivolous, objectively unreasonable, or patently
4 meritless. Garcia is not on all fours with the case before us, but it is close enough
5 for that purpose. There is also no indication in the record that Merkin utterly
6 lacked belief in the merit of his copyright claim or that he intended only to harass
7 Casa Duse. We conclude that his insistence, however misguided, on his
8 copyright interest did not amount to ʺthe sort of egregious wrongdoing that
9 might support a tortious interference claim in the absence of [] an independently
10 unlawful act or evil motive.ʺ Carvel Corp., 3 N.Y.3d at 189, 818 N.E.2d at 1102‐03.
11 V. Fees and Sanctions
12 Merkin and Reichman argue that the district court made legal errors in
13 awarding fees and costs to Casa Duse under the Copyright Act, 17 U.S.C. § 505,
14 and imposing sanctions against Reichman in the form of fees and costs under 28
15 U.S.C. § 1927. We disagree.
16 The district court did not err in granting Casa Duseʹs motion for attorneyʹs
17 fees even though the motion was filed prior to the entry of judgment. A motion
18 for attorneyʹs fees must ʺbe filed no later than 14 days after the entry of
1 judgment.ʺ Fed. R. Civ. P. 54(d)(2)(B)(i) (emphasis added). ʺʹPrompt filing . . .
2 enables the court in appropriate circumstances to make its ruling on a fee request
3 in time for any appellate review of a dispute over fees to proceed at the same
4 time as review on the merits of the case.ʹʺ Weyant v. Okst, 198 F.3d 311, 314 (2d
5 Cir. 1999) (ellipsis in original) (quoting Fed. R. Civ. P. 54 Advisory Committee
6 Note (1993)). But although the 14‐day filing limit runs from the entry of a final
7 judgment, see id., Merkin and Reichman have not explained why the district
8 court could not grant a motion that was filed prior to a final judgment.
9 Nor did the court err in concluding that the Copyright Act allows a party
10 that has not registered a copyright to recover costs and fees under specified
11 circumstances. Under the Act, a court may, in its discretion, ʺallow the recovery
12 of full costs by or against any party other than the United States or an officer
13 thereofʺ in ʺany civil action under [the Copyright Act]ʺ and ʺaward a reasonable
14 attorneyʹs fee to the prevailing party as part of the costs.ʺ 17 U.S.C. § 505.
15 Another section of the Act, entitled ʺRegistration as prerequisite to certain
16 remedies for infringement,ʺ limits recovery in infringement actions, barring
17 recovery for infringement that occurred prior to registration:
18 In any action under this title, [with exceptions not relevant here], no 19 award of statutory damages or of attorneyʹs fees, as provided by . . . 36
1 [section] 505, shall be made for (1) any infringement of copyright in 2 an unpublished work commenced before the effective date of its 3 registration; or (2) any infringement of copyright commenced after 4 first publication of the work and before the effective date of its 5 registration, unless such registration is made within three months 6 after the first publication of the work. 7 17 U.S.C. § 412. Merkin argues that this section of the law prohibits Casa Duse,
8 which did not register a copyright in the film, from collecting fees and costs. But
9 Casa Duse has not brought an ʺinfringement action.ʺ It seeks instead a
10 declaratory judgment that it has not infringed on Merkinʹs putative copyright.
11 ʺ[T]here is nothing in the statute that prohibits fee awards in cases, like this one,
12 of non infringement.ʺ Latin Am. Music Co. v. Am. Socʹy Of Composers, Authors &
13 Publishers (ASCAP), 642 F.3d 87, 90 (1st Cir. 2011) (emphasis in original)
14 (concluding that a defendant in an infringement action may obtain fees and costs
15 under section 505 despite not having registered a copyright).
16 Reichman also argues that the district court erred by finding him jointly
17 and severally liable with Merkin for costs and fees, because the Copyright Act
18 allows for the imposition of costs and fees only against a ʺparty,ʺ not against a
19 partyʹs attorney. 17 U.S.C. § 505. But the court awarded costs and fees to Casa
20 Duse under both the Copyright Act and 28 U.S.C. § 1927. The latter statute
21 allows a court to require an attorney to ʺsatisfy personallyʺ costs and fees. 28
1 U.S.C. § 1927. The district courtʹs allocation of costs and fees was not contrary to
2 law.
3 Merkin and Reichman finally argue that even if fees and costs were
4 available under these statutes, the district court abused its discretion in awarding
5 them to Casa Duse under 17 U.S.C. § 505 and 28 U.S.C. § 1927. As to the former,
6 a district court determining whether to exercise its discretion to award fees under
7 the Copyright Act ʺmay consider such factors as (1) the frivolousness of the non‐
8 prevailing partyʹs claims or defenses; (2) the partyʹs motivation; (3) whether the
9 claims or defenses were objectively unreasonable; and (4) compensation and
10 deterrence.ʺ Bryant v. Media Right Prods., Inc., 603 F.3d 135, 144 (2d Cir. 2010). As
11 to the latter, ʺ[s]anctions may be imposed . . . only when there is a finding of
12 conduct constituting or akin to bad faith . . . . [A]n award under § 1927 is proper
13 when the attorneyʹs actions are so completely without merit as to require the
14 conclusion that they must have been undertaken for some improper purpose
15 such as delay.ʺ In re 60 E. 80th St. Equities, Inc., 218 F.3d at 115 (internal quotation
16 marks omitted).
17 Merkin and Reichman argue that their copyright theory was not
18 ʺobjectively unreasonable,ʺ see Bryant, 603 F.3d at 144 (noting that this factor
1 should be accorded ʺsubstantial weightʺ), let alone ʺso completely without merit
2 as to require the conclusion that they must have been undertaken for some
3 improper purpose such as delay,” In re 60 E. 80th St. Equities, Inc., 218 F.3d at 115
4 (internal quotation marks omitted), because it was based on their reading of the
5 Copyright Officeʹs website. We have concluded, in the context of Casa Duseʹs
6 tortious interference with business relations claim, that the appellants were not
7 evidently motivated solely by the desire to harm Casa Duse. We have also
8 concluded that the defendantsʹ copyright claims are without merit. Given our
9 remand to the district court, which may reconsider its grant of costs and fees and
10 its imposition of sanctions in light of our reversal of the tortious interference
11 judgment, we need not determine whether Merkinʹs and Reichmanʹs reliance on
12 the Copyright Office website was objectively unreasonable, nor whether other
13 factors weigh in favor of granting fees to Casa Duse under the Copyright Act,
14 nor whether Reichmanʹs conduct was ʺakin to bad faithʺ sufficient to sustain the
15 sanctions entered against him. Id. The district court may consider these
16 contentions on remand if and when it is required to calculate costs and fees with
17 respect to the copyright claims only, without reference to the tortious
18 interference claim, which we conclude is without merit.
1 CONCLUSION
2 For the foregoing reasons, we AFFIRM the district courtʹs grant of
3 summary judgment to Casa Duse on its copyright claims and thus the courtʹs
4 entry of a permanent injunction against Merkin, REVERSE the district courtʹs
5 grant of summary judgment to Casa Duse on its tortious interference with
6 business relations claim, and REMAND to the district court with instructions to
7 enter summary judgment in favor of Merkin on that claim, based thereon to
8 reexamine its award of costs and attorneyʹs fees, and for such other proceedings
9 as are warranted.