Court To Film Director: You Must First Create An Infringing Work Before We Can Discuss Whether Or Not It's Actually Infringing

from the take-this-loaded-gun,-press-it-to-your-temple-and-await-further-instructions dept

Is there anything more gloriously effed-up than IP law? I submit to you there is not. Here's the sub-headline for Eriq Gardner's Hollywood Reporter article, which deftly sums up the predicament facing a filmmaker looking to make a movie based on an old Buck Rogers novella.

Don Murphy can only clear rights if he potentially violates them first.
That's the ruling boiled down to a dozen words. The details, while enlightening, do nothing to change the underlying fact that Murphy may have to get sued for copyright infringement before he's allowed to prove he isn't infringing on anything.

That's not the only conundrum Murphy's facing. The other is this: no studio wants to touch the project until the rights have been sorted out. Murphy announced his plans to make a film based on "Armageddon 2419 A.D." at last year's Comic Con. The book was published in 1928. Murphy believes the copyright on the book and characters expired in 1956.

Quite obviously, the trust presiding over the original publisher's estate feels differently. The Dille Trust told Murphy the property must be licensed -- despite offering no proof that the copyright was still valid and despite one of the trust's beneficiaries (Robert Dille) being on board as a co-writer.

So, Murphy did what others have done: sued to have the work declared in the public domain. The problem is he hasn't infringed on the possibly uninfringeable work. The court, relying on a 2007 Supreme Court decision, basically tells Murphy he must start making this possibly-infringing work before it can start addressing his public domain claims.

Looking at the Buck Rogers case, Conti applies the Supreme Court's holding by questioning whether the dispute rises to an actual controversy from "immediacy" and "reality."
Regarding immediacy, Conti writes:

"In this case, the amended complaint does not contain specific, or even approximate, allegations about when plaintiff could begin film production, let alone release the allegedly infringing film, assuming a declaratory judgment is entered in plaintiff’s favor. A dispute 'lacks immediacy' where there are no allegations about 'when, if ever,' the product will be 'used in a manner that could potentially infringe' the intellectual property rights of another. Plaintiff’s nebulous allegations that 'development of the [film] is well underway' and that 'further production efforts could be undertaken in short order' are conclusory and insufficient to show the immediacy required by Article III."

Examining reality, Conti continues:

"At this early stage, the production and release of plaintiff’s film are 'contingent future event[s]' that may not occur 'as anticipated' or 'indeed may not occur at all.' As pleaded by plaintiff, the film project is still in an inchoate stage. Plaintiff does not allege it hired or entered into preliminary agreements with the parties 'integral to the commencement of production'—let alone the release—of a 'major motion picture.'... Plaintiff received 'preliminar[y,] . . . firm interest' in the project from Warner Brothers and Sony. Without allegations of actual commitment or intent to commit—through, for example, letters of intent—plaintiff’s vague, equivocal assertions fail to demonstrate the reality of this dispute. Plaintiff does not allege it entered into finalized, or even preliminary, financing, acquisition, licensing, or distribution agreements with these companies in connection with its potential film."
The Supreme Court decision being cited to put Murphy in the awkward position of having to roll the dice on copyright infringement has nothing to do with copyright. It's all about patents. And it's actually a good decision.
The latest ruling is in the MedImmune/Genentech case looking at whether or not licensing a patent means you can't challenge its validity. Genentech (and plenty of other patent holders) claimed that once you licensed a patent, you were basically saying that you agreed to its validity, and could no longer challenge it. The lower court agreed. This is problematic in a lot of ways, especially with the rise in patent extortion lawsuits, where it's often cheaper to just license the patent rather than fight it. MedImmune licensed the patent early on, rather than waste money fighting it, but challenged it later on when the patent in question became much more important (and the license much more expensive). With an 8 to 1 decision, the Supreme Court sided with MedImmune, saying that licensing a patent shouldn't preclude challenging that patent's validity. Another small step in the right direction.
And yet, here we are, looking at a director being asked to set himself for a lawsuit by the Dille Trust in order to prove he doesn't owe it anything. And in order to do that, he needs to convince a studio to walk across this IP minefield with him -- something no studio in its right mind would ever be willing to do.

The court has given him permission to file an amended complaint, but it's unclear what purpose that will serve under the Supreme Court's MedImmune decision. The only sensible response is to let the idea die. No studio will back a project based on a disputed property and no director is going to put the work in just to be hit with an injunction and statutory damages if the trust comes up with proof it still holds the copyright.

On the other hand, all the Dille Trust has to do is continue to insist it owns the property… even if it doesn't. That's it. Hail copyright.


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  • identicon
    Anonymous Coward, 24 Mar 2016 @ 9:50am

    A quick way to meet the requirements. Take the book, change the names in the book, republish book. He now has a piece he created that is infringing.

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 24 Mar 2016 @ 10:04am

      Re:

      I just was thinking the same

      reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 24 Mar 2016 @ 10:04am

      Re:

      ...change the names in the book...

      Ruck Bogers?

      reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 24 Mar 2016 @ 10:19am

      Re: Republishing an intentional ripoff

      The problem with this idea is that even if it creates the controversy the court insists is a prerequisite to standing, it still sets him up for a copyright infringement suit and associated losses if the Dille Trust somehow does have a copyright on it. The potential losses are too large to risk it, particularly since it would likely be considered willful infringement, since he created it just to create a controversy, rather than a negligent infringement.

      Given how screwed up copyright law is, particularly for old works (e.g. pre-1976), being confident that the work ought to be public domain is not enough. The only safe way for this work to be made is to succeed in the lawsuit that he just lost: get a court to declare the work's status, hopefully informed by any evidence the Dille Trust has and will submit as sworn records.

      reply to this | link to this | view in chronology ]

      • identicon
        Anonymous Coward, 24 Mar 2016 @ 10:24am

        Re: Re: Republishing an intentional ripoff

        But if there's no registration, then statutory damages are off the table for the Trust, so they would be limited to their actual damages from any infringement. Which would be roughly zero for a republication of the novella. The Trust also couldn't recover their attorneys' fees absent a viable registration... although the filmmaker likely could.

        reply to this | link to this | view in chronology ]

    • icon
      PRMan (profile), 24 Mar 2016 @ 12:38pm

      Re:

      Sell a single copy for $1.

      reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 24 Mar 2016 @ 1:06pm

      Re:

      yeah I was going to say write the first few pages of the script and use that.

      reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 24 Mar 2016 @ 10:19am

    Project Gutenberg thinks it's public domain already

    http://www.gutenberg.org/ebooks/32530

    I don't know if he's allowed to submit this as evidence though.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 24 Mar 2016 @ 10:19am

    Why not just create a real case or controversy?

    AC @ 9:50am, that's actually an excellent idea, but no need to change the names. The filmmaker could just re-publish the 1928 work--without changing anything--and then ask the putative owner to acknowledge he has the right to do this and they won't sue him over it. If they say he doesn't have the right to publish, there's a case or controversy, and he should have standing to sue for a declaratory judgment as to the novella: not that it's in the public domain, but that the Dille Trust lacks standing to sue him.

    reply to this | link to this | view in chronology ]

  • identicon
    Anon, 24 Mar 2016 @ 10:23am

    Publish

    Publishing 10 copies of a book (some places have self-publishing) should mean damages of a few dozen dollars.

    Just take the file from Gutenberg, run it off a local Xerox a few times. Sell one to his lawyer's friend. Petition the court.

    reply to this | link to this | view in chronology ]

  • identicon
    Yes, I know I'm commenting anonymously, 24 Mar 2016 @ 10:29am

    create a case but be smart about it

    Take the Gutenberg text linked above, print it out and sell it to your co-producer for $1,- and get proof of the transaction. Your co-producer does nothing with it.
    You have a good argument to get the actual damages set to one dollar if you get convicted and if not, you can make your film. And the judge gets a little bit of infringement to allow the case.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 24 Mar 2016 @ 10:29am

    Having to go to court to prove that it's in the public domain is already punishment. This is why the system is broken. Only those who can afford lawyers are able to afford rights.

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 24 Mar 2016 @ 10:36am

      Re:

      Only those who can afford lawyers are able to afford rights.

      That's not a problem with U.S. IP law, that's a universal feature of every legal system in history, right? Just making sure we're on the same page here...

      reply to this | link to this | view in chronology ]

    • icon
      jupiterkansas (profile), 24 Mar 2016 @ 10:56am

      Re:

      If the government is going to institute copyright, it's the government's responsibility to also institute a database that accurately tells what is actually covered under copyright and for exactly how long. Without that, the whole system doesn't work.

      reply to this | link to this | view in chronology ]

      • identicon
        Anonymous Coward, 24 Mar 2016 @ 11:23am

        Re: Re:

        The system "works" fine. It just doesn't do anything useful.

        reply to this | link to this | view in chronology ]

      • icon
        That One Guy (profile), 24 Mar 2016 @ 11:38am

        Re: Re:

        Try suggesting mandatory registration requirements though and you get people whining about how it's just too much work, and an unfair burden and all that rot, as though the idea that copyright owners might actually have to do something to gain all the perks of copyright ownership is just asking too much.

        reply to this | link to this | view in chronology ]

        • identicon
          Anonymous Coward, 24 Mar 2016 @ 1:18pm

          This is a constitutional issue, not a copyright issue

          Try suggesting mandatory registration requirements though and you get people whining...

          In this case, registration was mandatory. The problem here isn't a copyright issue, it's a constitutional issue. The federal courts won't give what they call "advisory opinions" not because copyright law won't let them, but because the constitution says they only have jurisdiction over a present "case or controversy."

          It wouldn't (necessarily) be unconstitutional for executive or legislative branch entities (like the PTO or... say... the Copyright Office) to do something similar, though.

          reply to this | link to this | view in chronology ]

        • identicon
          Anonymous Coward, 25 Mar 2016 @ 8:45am

          Re: Re: Re:

          "Try suggesting mandatory registration requirements though and you get people whining about how it's just too much work, and an unfair burden and all that rot, as though the idea that copyright owners might actually have to do something to gain all the perks of copyright ownership is just asking too much."

          Prior to the 1970s, it WAS the law that you HAD to register (and pay a fee) to receive copyright protection or your project was PD at publication...which is why so many never renewed their copyrights at the 28-year point for the second 28-year period.
          Not worth the cost and too much effort.

          reply to this | link to this | view in chronology ]

          • icon
            That One Guy (profile), 25 Mar 2016 @ 8:55am

            Re: Re: Re: Re:

            Which rather neatly destroys the idea that copyright is just so valuable and needs to be 'protected' for over a century, given that before it was automatic and actually required work the majority of copyright holders didn't feel that it was worth filing for an extension.

            If it was really that valuable then you'd think that failure to file for an extension would the the minority, but if memory serves it was actually dead opposite, with the overwhelming majority not even bothering to do so.

            reply to this | link to this | view in chronology ]

          • icon
            That One Guy (profile), 25 Mar 2016 @ 9:01am

            Re: Re: Re: Re:

            And a quick search allowed me to find the stats I was thinking of.

            Copyright Renewal Rates 1958-1959
            Books - 7%
            Periodicals - 11%
            Lectures, Sermons and other Oral Works - 0.4%
            Dramatic Works - 11%
            Music - 35%
            Maps - 48%
            Works of Art - 4%
            Technical Drawings - 0.4%
            Art Prints - 4%
            Movies - 74%

            reply to this | link to this | view in chronology ]

      • identicon
        Alan, 25 Mar 2016 @ 10:13pm

        Re: Re:

        Given the way that copyright laws work (at least in the US) the MOMENT you write/paint/record anything creative it is automatically copyrighted - it is not something you need to register with the government to count as "copyrighted" (although if you do that would certainly make it easier to prove in court). You merely have to show that the material someone else is trying to use was your own creation and/or that you purchased the rights to it from someone else legally able to sell them to you.

        Thus, it would literally be impossible for the government to provide a database of copyrighted material in the way you suggest.

        reply to this | link to this | view in chronology ]

        • icon
          John Fenderson (profile), 26 Mar 2016 @ 5:31am

          Re: Re: Re:

          Yes, but that's a relatively recent change in US copyright law (part of a whole batch of terrible changes). Copyright used to require registration. The law needs to be fixed to require it again. The entire point of registration is so that people can find out if something is under copyright and, if so, who owns it.

          In the absence of registration, the entire system becomes even more unworkable.

          reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 24 Mar 2016 @ 10:33am

    Anthony Rogers, not Buck Rogers

    According to Wikipedia, the main character in Armageddon 2419 A.D. is named "Anthony Rogers." The character only became "Buck Rogers" later on. So query whether some kind of nebulous "character copyright" might still be at issue if they call him "Buck" in the movie... or if they use elements of the character that a court (eventually) determines to be protected.

    reply to this | link to this | view in chronology ]

  • identicon
    Median Wilfred, 24 Mar 2016 @ 10:41am

    Looks like a conspiracy to me

    Why is it that copyright laws, and for the most part case law about copyright, just make it harder and harder to create anything? It looks like a huge conspiracy to me, a not-lawyer. It looks like a conspiracy to use copyrights, patents and trademarks ("intellectual property") to put an effective aristocracy in place. The aristocracy in question isn't hereditary nobility or some such archaic concept, but rather the class of "rightsholders". Even more strictly, the class of "rightsholders" of something that's popular right now. This new aristocracy wants to screw civilization in place, so that only they get money from popular "intellectual property", only they get to create new "intellectual property", and that they get to say yes or no to any changes in technology.

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 24 Mar 2016 @ 10:52am

      Re: Looks like a conspiracy to me

      You omitted the most important point, these rights holders are not the creators themselves, but rather the beneficiaries of the work of their serfs.

      reply to this | link to this | view in chronology ]

  • icon
    Nina Paley (profile), 24 Mar 2016 @ 11:08am

    Isn't this also the problem with Fair Use?

    That you can't KNOW a use is Fair unless someone sues you for infringing?

    reply to this | link to this | view in chronology ]

  • icon
    Steerpike (profile), 24 Mar 2016 @ 1:30pm

    This isn't really a role for the courts, who are supposed to be with "cases and controversies." Doesn't seem like there's even a basis for a Declaratory Judgment at this point. Why doesn't Murphy research (or have researched) the copyright registration and renewal data to get an idea of whether the underlying work is still protected. If that comes back favorably, then you take the risk of proceeding and having to deal with the trust.

    reply to this | link to this | view in chronology ]

  • identicon
    Toro, 24 Mar 2016 @ 1:52pm

    Copyright law

    And here we all though the intent of Copyright was to be an inducement to create works.

    Go figure

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 24 Mar 2016 @ 7:40pm

    Cost Benifit

    The Problem Murphy Has, that to get to this useless Court Ruling he has paid out $$$ to lawyers, costs that are applied against any film or other 'art' work made around Buck Rodgers, this means the production budget is already clipped. Further fighting the copyright spider web in ways suggested above bu others might work, but for Murphy it would be a Pyrric Victory at best, leaving no money to make a film and the field clear for someone else to make a film, perhaps the Fox-Disney-Sony-Paramount mega-studio

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 24 Mar 2016 @ 9:00pm

    "You're only allowed to complain about punishment if you let us punish you first."

    reply to this | link to this | view in chronology ]

  • icon
    bwburke94 (profile), 24 Mar 2016 @ 10:52pm

    Another idea to loophole around this

    Why can't the filmmaker just make a five-minute ashcan thing as the "potential" infringement?

    reply to this | link to this | view in chronology ]

    • icon
      John Fenderson (profile), 25 Mar 2016 @ 3:41pm

      Re: Another idea to loophole around this

      Wouldn't work.

      What would happen is some variation of this: the trust would not press a complaint about the cheapie short, but would about a commercially viable film.

      The filmmaker might be able to get a preliminary ruling, but the trust would just say that the ruling only applied to the short and the commercially viable film must be considered separately.

      reply to this | link to this | view in chronology ]

  • icon
    That Anonymous Coward (profile), 24 Mar 2016 @ 11:04pm

    One wonders how many other new things have been lost because no one will back someone because someone might sue over rights they may or may not have.

    It is time that copyrights are actually registered with useful information. That all claims and subrights are clearly spelled out in 1 place, and failure to have these on file means you surrender them.

    Everyone pretended that 'Happy Birthday' was owned, millions of dollars were collected for it.... and oh hey look.

    They insist that everyone else bear the costs of protecting their copyrights online, the least they can do is show clear ownership so if someone wants to do things the right way it isn't down to 'well we might have some of the rights but we dunno and won't bother to look until you make it and then we can swoop in and demand huge rewards'.

    Imagine a 10 yr program, update all of the copyright info in the central database or surrender them. You then only have to look in 1 place to see if you need to obtain rights, and who can authorize or deny your use of them.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 25 Mar 2016 @ 6:55am

    It is hard to call yourself a public service institution,

    if you refuse to defend public interests when they are threatened by private interests. If the police worked the way the USPTO does, they would all be mercenaries.

    The position of the court is likely based on a deprecated economic viewpoint. A more modern view might be that public domain IP can be regarded similarly to "natural capital", and it's defense therefore a duty of the public trust.

    The public wealth created in IP every year in the U.S. is huge. Open source software alone contributes billions of dollars in off-book national asset value to the public trust. This later contributes to on-book capital (GDP) in thousands of ways by facilitating commercial projects.

    The issue is not whether public value is created, but whether it is recognized legally. The pushback against such recognition, is that business's are dependent on externalized expenses. (archaically termed "tradgedy of commons") And it hard to conceal crimes against the public, when you are compelled to account for externalized expenses. (think pollution)

    Proprieterization of wealth inherent in public domain IP by means of false prosecution is no less a crime than polluting a public waterway. If he tore out the pages of the novel and threw them on the ground, could he not be cited for littering? Apparently the collectively owned soil is legally distinctive from the collectively owned speech on the individual pages?

    This is not just a problem with IP, but with GAAP. This stuff is not being accounted for, because to do so would shine a light on so many criminal activities that exposing them would crash the economy.

    So the courts play Captain Klink, and the economic bubble gets bigger. Needle anyone?

    Overturn Citizens United. Reinstate Glass Steagal. Bust the Trusts.

    reply to this | link to this | view in chronology ]

  • icon
    TRX (profile), 25 Mar 2016 @ 12:36pm

    So. Create a "Murphy" version of the original text or a screenplay proposal, slap it up on Amazon as an e-book for $0.99, and tell Dille to come and get it.

    reply to this | link to this | view in chronology ]

  • identicon
    carlitomaitim, 29 Mar 2016 @ 8:56am

    APUS

    Deleted my app from myphone

    reply to this | link to this | view in chronology ]


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