Monday, March 3, 2014
About one-third of the time while teaching copyright, I realize we are actually dealing with contract issues. This is particularly true when one party has been granted rights at one time and then technology changes meaning whatever term was used now may have a different and broader meaning. Plus, the Copyright Act has its own Statute of Frauds provision requiring transfer of ownership to be in writing.
Here is were the film The Stuff comes in. (Effects Asociates v. Cohen, 908 F.2d 555 (9th Cir. 1990)). Haven't heard of it? That's understandable; it's not exactly Oscar material. If you want to see what I mean, take a look here.
The creator of the very special effects for The Stuff (yogurt taking over the world) felt that the producers of the film had infringed the copyright on the special effects sequences. There was no written grant of permission to use the segments made by the special effects specialist and, supposedly, no grant of permission.
The film producer evidently found writings to be silly. As Judge Kosinski describes it, the position taken by the defendant was something like,"Moviemakers do lunch, not contracts." (I often feel the same way about contracts teachers.)
Although there was no writing, it was also clear that the special effects creator had done the work at the request of the producer and turned it over to the producer with the understanding that it would used in the film.
Still, the Copyright Act could not be clearer -- no writing, no transfer. But, there is a narrow exception. The writing requirement does not apply to nonexclusive licenses. Accordingly, Kosinski bails out the fim maker by finding an implied grant of a non exclusive license. Of course, had there been a writing, it almost certainly would have been for exclusive use. Almost certainly, that is what the parties intended.
There is a happy ending. For those of you interested in enriching your contracts or copyright classes with serious American made art, The Stuff is available from Netflix. Or, if you are teaching Law and Trivia (aren't we all), you should know that it stars Garrett Morris.