Source: Grill IP patents news
Last week, the Central District Court of California dismissed a claim of copyright infringement by actor and musician Jared Leto against TMZ.com in Sisyphus Touring Inc. v. TMZ Productions Inc. The suit was over a video that the website posted, featuring Leto criticizing musician Taylor Swift. The Court ruled that Leto copyright claims were invalid, since he was not the owner of the video, and the videographer had validly transferred the copyright to the celebrity news website.
Sisyphus Touring Inc., a company co-owned by Leto, filed a claim of infringement against MLBC Productions Inc. (formerly TMZ Productions Inc.), Warner Brothers Entertainment Inc., EHM Productions Inc. and TMZ.com over a video featuring Leto talking negatively about Swift. The clip was shot by videographer Naeem Munaf, for the promotion of Leto’s band Thirty Seconds to Mars. At the time the video was recorded, no agreement was signed between Leto and Munaf, indicating its ownership. Using a pseudonym, Munaf contacted TMZ.com and made a deal to exchange the video for a payment of $2000.
After discovering that TMZ.com planned to post the video online, Leto’s representative had Munaf sign a nondisclosure agreement. Sisyphus proceeded to register the video with the US Copyright Office, filing an infringement suit two days after it was posted on TMZ.com.
The defendants moved for summary judgment and default judgment in their cross-complaint against Munaf, while Sisyphus moved for partial summary judgment.
Sisyphus maintained that it owned the copyright to the video, and in providing it to TMZ, Munaf stole the video. It argued that since the clip was part of a work made for hire, Sisyphus was the exclusive author and owner of the copyright. The Central District Court of California came to an opposing view. According to 17 US Code Section 101, a work must be prepared by an employee within the scope of his or her employment or be commissioned for use as a contribution to particular kinds of collective works to qualify as a work made for hire. Additionally, the parties involved must expressly agree, in writing, that the work in question is to be considered a work made for hire.
Since Munaf was not an employee of Sisyphus, the video could not be considered a work made for hire according to the first part of the statute. Although the video was commissioned as an audiovisual work, the parties disputed whether the requirement of a written agreement had been satisfied. Sisyphus holds that it reached an oral agreement with Munaf before the shoot, in which Leto’s company was to own the video, and the nondisclosure agreement (signed after Munaf delivered the video to TMZ.com) established that agreement.
Citing opinions from the Central District of California and the Seventh Circuit, the Court sided with the defendants, maintaining that the written agreement had to have been made prior to the work’s creation. Alternatively, Sisyphus argued that the nondisclosure agreement with Munaf transferred ownership of the copyright to Leto’s company. Again, the Court pointed out that since Munaf had already transferred the copyright to TMZ.com, he could not have later transferred the copyright to Sisyphus. For, when TMZ representatives sent Munaf (who was using a pseudonym at the time) a contract to buy the video, asking him to send an email response stating “I agree,” the rights were transferred. The Court established that such a message transferring a copyright only needs to evidence a partys intent to transfer the copyright in the video from Munaf to TMZ. The Court confirmed that this transfer was possible via email, and an electronic signature constitutes as valid.
In sum, the District Court granted the defendants’ motion for summary judgment, deeming Sisyphus lacked ownership rights to the video, and deemed all other motions before the Court moot. While a loss for Leto, this decision serves as a warning for those looking to levy claims of infringement without clearly established work for hire agreements in place.Tags: 17 US Code Section 101, Central District Court of California, Copyright Infringement, copyright law, Jared Leto, MLBC Productions Inc., Naeem Munaf, Sisyphus Touring Inc., Sisyphus Touring Inc. v. TMZ Productions Inc., Taylor Smith, Thirty Seconds to Mars, TMZ.com, US IP law, Warner Brothers Entertainment Inc.