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IP/Entertainment Case Law Updates

Stiletto Television, Inc., v. Hastings, Clayton & Tucker, Incorporated

In dispute over ownership of copyrights in Barry Manilow concert films, district court grants summary judgment dismissing production company’s claim for declaratory judgment, finding it did not co-author films notwithstanding its various creative contributions.

In 2004, American singer-songwriter Barry Manilow began headlining a successful Las Vegas concert residency called “Barry Manilow: Music and Passion,” and later created a concert film consisting of his 100th and 101st performances of the show, called Barry Manilow: Music and PassionLive from Las Vegas. Director David Mallet directed the cameras, lighting and stage placement; ran production during the film; and edited the film after production. Paul Morphos, a producer on the film, oversaw preproduction and physical production, including grips and lighting. Production company Stiletto Television Inc. handled various aspects of production, including production logistics for the film’s DVD, managing the film’s budget, filming behind-the-scenes footage and interviews with Manilow, negotiating contracts with third parties relating to filming, and assisting in editing, among other facets of production. In 2016, Hastings, Clayton & Tucker Inc., a management company for Barry Manilow, registered the copyright in Music and Passion, and in 2019, Manilow, Morphos and Mallet assigned their copyright interests in the film to HCT.

In addition to Music and Passion, Manilow also created a film of concert performances in front of a limited audience, called Songs from the Seventies. Once again, Mallet was hired to direct the film and worked with Manilow to create its content. Manilow had sole control over the set list and choreography, and rejected an initial version of the film before settling on its final cut. STV was involved in production, including pitching the project to PBS, negotiating agreements with third parties, hiring Mallet and other crew, scouting locations, coordinating logistics, providing feedback, and assisting with editing. Manilow, Morphos and Mallet assigned their copyright interests in both films to HCT. For neither film did STV enter into a work-for-hire agreement with Manilow, Mallet or Morphos.

In 2018, STV applied to register a copyright in Songs from the Seventies. Shortly thereafter, it filed suit against HCT seeking declaratory judgment that it owns a copyright interest in both concert films. HCT moved for summary judgment dismissing the claim on the ground that Manilow, Morphos and Mallet are the only persons who could have held a copyright interest in the films and that each of them assigned their copyright interests to HCT. STV countered that HCT’s claim to ownership was time-barred and the aforementioned assignments to HCT were invalid. In the alternative, STV argued that it is a co-author of both works or that the works were made for hire. The district court agreed with HCT and granted summary judgment dismissing STV’s claim.

The court first rejected STV’s argument that HCT is time-barred from claiming it owns the films. According to the court, there is no authority supporting the contention that a defendant is time-barred from asserting copyright ownership when its ownership is challenged by a plaintiff. 

The court next rejected STV’s argument that the assignments by Manilow, Morphos and Mallet to HCT were invalid. STV argued that Manilow, Mallet and Morphos possessed no rights in the works capable of being assigned to HCT because they had previously assigned their rights to STV and, further, that the assignments to HCT were obtained by fraud. But, as the court noted, STV adduced no evidence to support these contentions. For example, although Morphos claimed he did not know what he was signing when presented with the assignment to HCT, the court found that there was no evidence he was misled and that the assignment was unambiguous in any event.

Regarding STV’s joint authorship claim, the court acknowledged that Ninth Circuit law requires courts to consider three criteria in determining whether a work is co-authored: (1) whether the putative co-authors made objective manifestations of a shared intent to be co-authors; (2) whether the alleged author superintended the work by exercising control; and (3) whether the audience appeal of the work can be attributed to both authors and whether the share of each in its success cannot be appraised. Taking into account those criteria, the court held that STV’s contributions were insufficient to qualify it as a co-author. 

As to Music and Passion in particular, the court stated: “STV’s involvement amounts to operating logistics, financing, behind-the-scene footage, and assistance in editing. There are no citations to testimony or other evidence that [STV] had artistic control over [the film] and their contributions fall short of being a ‘master mind’ of the work.” Similarly, as to Songs from the Seventies, the court stated, “The undisputed evidence shows that Manilow was the master mind of the work, and at most shared authorship with Mallet.” The court cited to several examples of Manilow and Mallet exercising chief creative control over the films — Manilow by creating their content and requesting edits, and Mallet by directing the films and leading key aspects of their production and postproduction. “Though STV’s contributions were clearly valuable,” the court stated, “valuable contributions (even copyrightable contributions) are not sufficient to create authorship.” In any event, the court emphasized, there was no written agreement evincing an intent for STV to co-author the films with Manilow and Mallet. 

Finally, the court rejected STV’s contention that the films constituted works made for hire. Although STV had hired Mallet to direct the films, as the court explained, hiring alone is insufficient to confer copyright interests under the work-for-hire doctrine; absent an express agreement in writing, of which there was none here, Mallet’s work did not belong to STV.

Summary prepared by Frank D’Angelo and Mariah Volk