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LLC v. Merkin

United States Court of Appeals, Second Circuit

June 29, 2015

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.

Argued September 3, 2014

Page 248

[Copyrighted Material Omitted]

Page 249

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 defendant's counterclaims, and awarding the plaintiff costs and attorney's 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 copyright claims and properly enjoined the defendant from interfering with the plaintiff's use of the work in question. We conclude, though, that the defendant, not the plaintiff, was entitled to summary judgment on the plaintiff's claim for tortious interference with business relations under New York law. The judgment of the district court is therefore.

ELEANOR M. LACKMAN (Joshua S. Wolkoff, on the brief), Cowan, DeBaets, Abrahams & Sheppard LLP, New York, N.Y. for Plaintiff--Counter-Defendant-Appellee.

MAURICE A. REICHMAN, New York, NY, for Defendant-Counter-Claimant-Appellant & Appellant.

Before: KATZMANN, Chief Judge, SACK and LYNCH, Circuit Judges.

OPINION

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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 defendant's copyright counterclaims, and awarding the plaintiff costs and attorney's fees. Because we agree with the district court that the plaintiff owns 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 conclude that the district court properly granted summary judgment to the plaintiff on its copyright claims and did not abuse its discretion in enjoining the defendant from interfering with the plaintiff's use of the film. We also conclude, however, that the defendant, not the plaintiff, was entitled to summary judgment on the plaintiff's claim for tortious interference with business relations under New York law. We therefore affirm in part, reverse in part, and remand the case to the district court with instructions for it to

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grant the defendant's motion for summary judgment on the tortious interference claim and for such further proceedings as are warranted.

BACKGROUND

Appellee 16 Casa Duse, LLC, (" Casa Duse" ) 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. Appellant Maurice Reichman is an attorney who represented Merkin in some of his dealings with Casa Duse.

In September 2010, Krakovski, acting at all relevant times as the principal of Casa Duse, purchased the rights to a screenplay entitled Heads Up from the work's author, Ben Carlin. Krakovski, who planned to finance and produce a short film based on the screenplay, asked Merkin whether he would be willing to direct the film. Merkin agreed, and the two settled informally on a fee of $1,500 for Merkin's services.

In the ensuing months, Krakovski assembled a cast and crew for the film, also entitled Heads Up. He hired additional producers, a script supervisor, a photography director, camera operators, various designers and technicians, and actors, creating an ensemble of about thirty members. Although Merkin recommended that Krakovski employ some persons as crew members, Krakovski made the ultimate hiring decisions. In the meantime, Krakovski, Merkin, and others involved with the project planned various aspects of the production, including props, locations, and scheduling.

Each cast and crew member other than Merkin entered into an " Independent Contractor [] Agreement" with Casa Duse. The agreements contained statements that Casa Duse would " engage the services [of the cast or crew member] as 'work for hire' of an independent contractor," J.A. 485, and set out terms for compensation, performance standards, and other matters. The work-for-hire agreements also stated that Casa Duse would retain " complete control" of the film's production and " own all of the results and proceeds of [the cast and crew's] services in connection with the [film] . . . including, but not limited to, all rights throughout the world of . . . copyright . . . ." J.A. 487.

In February 2011, Krakovski sent Merkin a draft work-for-hire agreement entitled " Director Employment Agreement." Its terms were similar to those in the agreements signed by other cast and crew. It provided, inter alia, that Casa Duse would own all rights in the film. Merkin acknowledged his receipt of the draft by e-mail, noting that he would ask his lawyer to review it.

Some two-and-a-half months later, on May 9, 2011, Krakovski sent Merkin an e-mail reminding him to execute the agreement. Merkin did not respond.

Krakovski contacted Merkin again on May 16, a week before production was scheduled to start, reminding him again of the importance of completing the agreement before work on the film began. Merkin again failed to reply. On May 18, Krakovski e-mailed again asking for a completed agreement, to no avail.

Despite the lack of a completed agreement, production began later that month. During production, which included three days of filming, Merkin performed his role as director by advising and instructing the film's cast and crew on matters ranging from camera angles and lighting to wardrobe and makeup to the actors ' dialogue and movement. Merkin completed his direction of the film by the end of May.

In June 2011, Krakovski gave Merkin a hard drive containing the raw film footage

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in the hope that Merkin would be able to edit the footage. In the absence of a work-for-hire agreement, the parties entered into a " Media Agreement" under which Merkin would edit but not license, sell, or copy the footage for any purpose without the permission of Casa Duse.

On June 16, Krakovski sent an e-mail to Merkin proposing changes to the Media Agreement in order to " clarify," first, that Casa Duse and not Merkin owned the footage and hard drive, and, second, that Casa Duse's entry into the Media Agreement had not relinquished " any directorial/editorial terms [or] rights" that would be finally allocated by a work-for-hire agreement. J.A. 580. Merkin replied, saying that the proposed changes seemed acceptable but also " clarify[ing]," for his part, that he was " not giving up any creative or artistic rights" he had in the project and " all of [his] creative work . . . is still [his] work and not the property of 16 Casa Duse, LLC." J.A. 581. Krakovski responded, asserting that he had never intended the film to be " a 'Joint Venture'" and instead had intended to obtain Merkin 's services pursuant to a work-for-hire agreement. J.A. 521.

From July to October 2011, Krakovski and Merkin continued to negotiate the terms of the Media Agreement and a work-for-hire agreement. The parties communicated directly--via e-mail--and through their attorneys. From time to time, they appeared to reach agreement on some key terms, including Casa Duse's ownership of the film, Merkin's authority to make a " director's cut," and Merkin's ability to remove his name from the final product if he so desired, but negotiations ultimately collapsed. Krakovski demanded the return of the hard drive containing the raw film footage. Merkin refused and warned Krakovski that, without an agreement in place, Casa Duse could not, in his view, release the film.

In November 2011, Merkin sent Krakovski a letter " putting [Krakovski] on notice that [Merkin] forb[ade] any use whatsoever of the raw footage." J.A. 400. The letter conceded that Krakovski owned the screenplay but insisted that Merkin owned the " raw footage." Id. In December 2011, Krakovski responded through counsel, who, by e-mail, proposed that Casa Duse pay Merkin the agreed-upon $1,500 for his directorial services, allow him to complete his desired " director's cut," and ensure his opportunity to remove his name from the finished product if he wished. In exchange, Merkin would agree to deem his directorial services a " work for hire" for Casa Duse. The e-mail also advised that Casa Duse had, by then, retained a different editor. Merkin responded and reiterated his position that Casa Duse was " not permitted to use [his] work in any edit without [his] involvement." J.A. 403. Merkin threatened to contact film festivals to inform them that Casa Duse lacked rights to the film in the event Krakovski did not assent. Krakovski's attorney responded by sending an e-mail to Merkin's attorney, disputing Merkin's position and warning that any interference with screening of the film would potentially subject Merkin to liability.

In January 2012, as the dispute continued to simmer, Merkin registered a copyright in the film with the United States Copyright Office. The title of the registration was " Raw footage for film 'Heads Up' Disks 1-4," reflecting the fact that Merkin had copied the footage from the hard drive onto four DVDs. J.A. 71. The registration listed the type of work as " Motion Picture" and asserted that Merkin was its sole author. Merkin did not obtain Casa Duse's permission to register the

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copyright, and Krakovski was unaware of the registration.

In March 2012, Krakovski began submitting Heads Up to film festivals and making plans to publicize the film. To that end, he scheduled an invitation-only screening for approximately seventy persons at the New York Film Academy (" NYFA" ) on April 18, 2012. Krakovski also organized a reception to follow at a nearby restaurant, City Crab, for which he paid a non-refundable deposit of $1,956.58.

On the date of the event, the NYFA chairperson contacted Krakovski to tell him that Merkin's attorney (Reichman) had threatened the NYFA with a cease-and-desist order to prevent the screening from proceeding. According to Reichman, it was Merkin--not Reichman--who contacted the NYFA and mentioned a cease and desist " notice," not an order, at which point the NYFA contacted Reichman. In any event, the NYFA cancelled the screening in response to these threats, and Casa Duse lost its restaurant deposit. Casa Duse subsequently missed at least four film festival submission deadlines as a result of the dispute. Merkin did not return the hard drive, the DVDs, or the raw footage in any form.

Casa Duse brought suit against Merkin and his limited liability company, A. Merkin Entertainment, LLC, (" AME" ) in May 2012 seeking, inter alia, a temporary restraining order and injunction enjoining Merkin from interfering with its use of the film. The district court granted the temporary restraining order and issued an order to show cause why a preliminary injunction should not issue. After briefing, on May 18, 2012, the court issued the preliminary injunction that Casa Duse sought.

Some two months later, in July 2012, Casa Duse filed an amended complaint requesting a judgment declaring that (1) Casa Duse was not liable to Merkin or AME for copyright infringement; (2) Neither Merkin nor AME owned a copyright interest in the film; and (3) Merkin's copyright registration was invalid. Casa Duse also asserted claims for breach of contract, tortious interference with business relations, and conversion. It sought relief in the form of compensatory damages; an order requiring Merkin to withdraw his copyright registration, return all forms of the footage, and refrain from interfering with Casa Duse's ...


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