The Copyright Claim by the Warren Trust
Joe Warren, son of the deceased Hal Warren, has claimed that Manos is not in the public domain because his father registered his copyright in the screenplay with the Library of Congress. In the Catalog of Copyright Entries: Third Series Volume 20, Parts 3-4, Number 1, Dramas and Works Prepared for Oral Delivery there is the following entry on page 17 :
FINGERS OF FATE, by Harold P. Warren.
66 1. A screenplay. © Harold P.
Warren; 18May66; DU65701
DU65701 is the Registration Number, with the D standing for "dramatic or dramatico-musical works" and the U standing for Unpublished work. Registering unpublished works was far from uncommon, there were 1,452 registrations of unpublished dramatic works in that volume alone. A screenwriter would be well-advised to register his unpublished screenplay prior to the days of automatic copyright protection when peddling it around Hollywood. Although Harold P. (Paul) Warren died on December 26, 1985, however, because the work was registered in 1966, the life of the author plus seventy years term does not apply. Only works created in 1978 or later enjoy that term of protection.
In 1966 when the copyright was registered in the screenplay, Harold P. Warren was entitled to enjoy a protection period of 28 years from the date of publication. In 1978, the copyright law was amended to provide for a renewal term of 47 years. In 1992, the term was automatically granted for works copyrighted between 1964-1977 (inclusive). Therefore, Warren's copyright in the Fingers of Fate screenplay was automatically renewed, even though he was dead. The Supreme Court's decision in Stewart v. Abend, 495 U.S. 207, 110 S. Ct. 1750 (1990), held that renewal rights are vested in the heirs of the copyright holder despite any previous assignment made during the copyright holder's lifetime. In 1998, the current copyright extension act added another 20 years for works registered between 1964-1977, bringing the term to 95 years. Therefore, the screenplay will be protected until the year 2061.
As the screenplay is listed in the Catalog of Copyright Entries, that is prima facie evidence that the copyright was validly registered. Prima facie evidence is evidence deemed legally sufficient for a jury to find for a party on that issue. Once a plaintiff has shown the registration as given in the Volume cited above, the burden shifts to the defendant to show that the registration was invalid.
"Finggrs [sic] of Fate" was the title Ben Solovey found on the workprint leader when he obtained the 16mm workprint of the film. Solovey then restored the film using the workprint and released his Restored Workprint version through Synapse Films, as indicated in the previous blog entry. Joe Warren has claimed that the film is a derivative work of the screenplay.
While the screenplay was registered with the copyright office, thereby satisfying the formalities for a written work, the film was neither registered nor published with a copyright notice. Joe Warren, Hal Warren's heir and Trustee of the Harold P. Warren Irrevocable Trust (the Trust) has argued that the film is a derivative work of the screenplay and thus the Trust may prohibit the the unauthorized distribution of the film.
The Argument against the Copyright Claim
Of course, it is interesting to note that Hal Warren authored the derivative work in question and failed to follow the formalities to protect it. Having authorized the derivative work and allowed it to lapse into the public domain, can the author of the original work or his heirs exercise control over it?
One factor that cannot be overlooked is the time lapse between the time from when the derivative work entered the public domain, 1966, and when the Trust began some measure of enforcement activities in 2012. For 46 years it and its predecessors sat on its rights. Of course between the time it was shown in West Texas drive-ins and the MST3K episode in 1993, it was not shown or made available for viewing, so there was no need to assert or defend rights. When MST3K picked the film up from a pile of public domain movies on tape, as far as I know it did not seek permission from anybody to essentially create a derivative work.
The MST3K version of Manos is clearly a derivative work of the Manos film and possibly the Fingers of Fate screenplay. It edits the film, taking the essential portion of it and mocks it both as it is being screened before Joel and the bots and during the host segments. No one from the Warren family or the Trust (most likely not in existence at the time) sent a cease and desist letter to Best Brains Inc, the corporate entity behind MST3K. MTS3K revived interest in the film and the episode was released on a nationally-available cable channel in 1993. Between 1993 and 2012, no enforcement activity was taken regarding the copyrighted screenplay. The film has been made available on Youtube, the Internet Archive and had been released at least four times on home video between those two years. Other riffing of the film in the MST3K vein (not including Rifftrax) has also been done.
The Petrella Decision
However, the Supreme Court's decision in Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. ___, 134 S. Ct. 1962 (2014) nullifies the above argument. The facts in Petrella have marked similarities to the situation in Manos. In Petrella, former middleweight boxing champion Jake LaMotta and his friend Frank Petrella copyrighted a pair of screenplays in 1963 and 1973 and a book in 1970 about LaMotta's life and career. LaMotta's story was acquired by United Artists, a subsidiary of MGM and turned into the award-winning movie Raging Bull, directed by Martin Scorcese and starring Robert DeNiro. Petrella's estate was able to renew copyright timely to the screenplay registered in 1963, but not the book registered in 1970 or the screenplay registered in 1973. (The parties disputed which of the three works was published first, and there is no automatic renewal for works published in 1963 or earlier). The estate warned MGM in 1998 that continued exploitation of the work constituted copyright infringement, and after years of negotiations and threats, filed suit in 2009.
The statute of limitations on a copyright infringement claim is three years from the date which the cause of action accrued. A cause of action accrues when there is an infringing act such as an "unauthorized" showing of a film or when an unauthorized video release of the film is made for sale. Each violation can lead to a separate period of limitations during which the copyright holder can seek redress in the courts. Moreover, even if an earlier infringement had occurred and no action had been taken within the limitations period, it does not cover subsequent infringing activities. An example can be found with Ben Solovey's activities. Solovey created a kickstarter campaign to raise money to restore the film. The kickstarter campaign ended on February 4, 2012 after raising $48,130. Assuming the kickstarter campaign to restore the film was an infringement on Warren's claimed copyrights, the Trust is too late to sue for it. However, Solovey presented a "90% complete" version of his workprint version in theaters in August, 2013, and the Trust may still be able to file suit for that act. More recently, the disc release of the workprint version in October, 2015 is well within the statute of limitations for a copyright infringement claim.
Returning to Petrella, the District Court and the Court of Appeals held that doctrine of laches barred Patricia Petrella's, (Frank Petrella's daughter and heir), claim because she had waited for an unreasonable eighteen years to file suit. Laches is a judicial doctrine that allows a court to dismiss a lawsuit if there has been unreasonable delay in bringing it. Her claim would have been dismissed had the Supreme Court not granted her petition for a writ of certiorari. (Certiorari is the procedure by which the Supreme Court takes appellate cases which it is not obligated to hear). The Court of Appeals noted that Petrella had not filed suit primarily because the film had not made money in years. Raging Bull's release on DVD and Blu-ray in the 21st Century helped change that.
The Supreme Court, in a 6-to-3 decision, held that the three year statute of limitations, not laches, governed the ability of a copyright holder to file suit in the face of an infringing act. Therefore, Petrella's claim should not have been dissmissed because she was guilty of laches. However, it recognized three umbstantial limitations on Petrella's ability to recover for copyright infringement.
First, Petrella, who filed against MGM in 2009, could only look to MGM's profits from 2006 to 2009. Any money MGM made on Raging Bull prior to that date was its to keep.
Second, MGM would be entitled to offset its deductible expenses against the profits earned. In other words, a defendant can point to the expenses incurred to generate the profits and use them to reduce a damages award. In other words, if Petrella had released Raging Bull, she would have had to incur those costs to generate the profits, so she cannot claim the gross sales of the DVD or the Blu-ray releases. I could mention that studio accounting practices are notoriously creative in short changing people entitled to shares in the film's profit.
Third, MGM would be able claim that portion of the profit attributable to its efforts separate and distinct from the value of the copyrighted work. MGM could show that the bulk of the profits from the sales of Raging Bull came primarily from its efforts in producing an award-winning and widely-recognized feature film which is still held in high public esteem today, not from Petrella's screenplay. If the film did not have Martin Scorcese as a director, its stellar cast or beautiful, yet daring B&W cinematography, it may not have been the success it became. MGM could also point to its efforts to market a high-quality disc with restored video and audio and included extra features.
Congress enacted the three-year statute of limitations for copyright infringement claims in 1957. Prior to that, the federal courts looked to analogous state court statute of limitations, if there were any, thus allowing room for laches. Laches, the Supreme Court recognized, was an equitable doctrine developed by the courts to address issues of fairness and inequity. The Court further recognized that Congress had, as described above, taken steps to provide for a distinct time frame for which infringement may lie and limitations on remedies to prevent a plaintiff's windfall. Laches has no place when the legislature has taken affirmative steps to act.
Responding to MGM's argument that the Supreme Court should not award Petrella for sitting on her claims until Raging Bull started to make money, the Court recognized that copyright holders do not have to challenge each and every actionable enforcement. The Court noted that the harm from many infringements would be too small to justify the cost of litigation. Moreover, the Plaintiff's delay may cause her to lose critical evidence to her case from the passage of time. She bears the burden of proving the infringement.
The Court held that there were was an absence of extraordinary facts that would entitle MGM to automatic relief. This was not a case where the remedy would include the total destruction of the work even though the plaintiff had prior notice of the infringing conduct and did not seek an injunction prior to the defendant investing substantial sums in the project. In those cases, destruction would have worked an unjust hardship on the defendant and innocent third parties, so the relief was limited to damages. Finally, when fashioning an equitable remedy such as an injunction, the Court may look to any factors which may arise from the conduct of the parties.
Impact of the Petrella Decision
The similarities of the facts in Petrella and Manos are striking. Both involve a registered copyright in a screenplay that was later turned, with permission, into a feature film. Both films, Manos and Raging Bull, were released and thereafter entered into a twilight phase where each film had limited commercial value. At some point, the original authors of the screenplays died and their rights to renewal of their copyrights passed to their heirs. Later, these films began to acquire commercial value, however modest in Manos' case. Finally, the heirs of the screenplay authors have indicated their willingness to make legal threats or file a lawsuit to prevent "unauthorized" distribution of a claimed derivative work (the film).
In Manos' case, there is no distinction to be made in the fact that Hal Warren allowed the film to enter the public domain through his inattentiveness to the copyright formalities. The film's status as a derivative work of the screenplay is the issue. If the film is a derivative work of the screenplay, then the Trust has a valid claim to prohibit unauthorized distribution. The Trust may have a copy of the screenplay, but because it was never published I cannot say how closely the film follows it. The Trust has probably claimed that because of the multiple hats Hal Warren was wearing during 1966, Screenwriter, Male Lead, Producer and Director, the limited time, talent and resources available to him and the fact that the workprint was labeled "Finggrs [sic] of Fate", the screenplay hews very closely to the finished film. It is well-known there was no time for reshoots, leading to many of the errors remaining in the Restored Workprint and Theatrical Release version, so it is doubtful there would there be time for rewrites. (The make out couple is the only example of an ad-hoc addition made during filming due to one of the actresses playing the Master's Wives breaking her leg or foot). If so, it is governed by Petrella and the three year statute of limitations on copyright claims. However, if it is more of a rough guide to the plot with liberal revisions made before or when it was being filmed, then it may not be a derivative work but an independent work which was allowed to fall into the public domain and be used by all.
Manos is not the only movie which is in this unique category of a film in the public domain which is controlled as a derivative work from an earlier source. The classic holiday film It's a Wonderful Life has a similar situation. The film was based on a short story called the "The Greatest Gift." The film itself, released in 1946, fell into the public domain in 1974 when the copyright was not renewed due to a clerical error. The story was published in 1943 privately and 1944 publicly. Its registration was properly renewed in 1971 by the author. Thereafter, the author apparently assigned its rights to Republic Pictures, which then was able to regulate the previously-unrestrained TV airings of the film. Republic also secured rights to the film's soundtrack and held the original negative in its possession, bolstering its claim. Republic's assets are now owned by Paramount and licenses the rights to show the film. It's a Wonderful Life will probably fall into the public domain in 2039.
Assuming the Trust files a lawsuit and shows that the film is a derivative work of the screenplay, the real issue is what would happen to the unauthorized versions like the Restored Workprint version? Based on the Supreme Court's language at the end of Petrella, a trial court would likely confine the remedies to the issue of damages. The Trust could have filed for an injunction to prevent the release of the film either at the film festivals or on disc, but no more than threats were made. Having waited until after Solovey and Synapse went to the expense of preparing and distributing materials, an permanent injunction against further distribution of the film would not likely be granted. See New Era Publs. Int'l, ApS v. Henry Holt & Co., 873 F.2d 576, 584-85 (2d Cir. 1989). Petrella made the distinction that while laches cannot be a bar to suit, it can be considered as an equitable factor when determining the remedy to be granted.
Does Publication of the Unpublished Screenplay Defeat the Unpublished Screenplay's Copyright?
It is also important to note that even though the unpublished screenplay probably was published in the form of the film, the screenplay does not lose protection because the film did. This is not the situation that was presented in Batjac Prods. v. Goodtimes Home Video Corp., 160 F.3d 1223 (9th Cir. 1998), where the portions of the screenplay for the movie McClintock! that were filmed were deemed to have been published by the film, which had entered the public domain by failure of the film's producers to renew the copyright. McClintock! The film McClintock!, starring John Wayne, was published in 1963. Drafts of the screenplay, the rights to which were assigned to Wayne's production company Batjac, was drafted in 1962 and 1963. While the copyright was successfully established when the film premiered, it lapsed into the public domain when Batjac failed to renew the copyright by the end of 1991.
The screenplay was not separately unpublished and the author did not apply for copyright protection for an unpublished work. The Register of Copyrights refused to register the screenplay for copyright protection. In the meantime Goodtimes Home Video had released a pan&scan version of the film on video. Batjac sued Goodtimes on the basis of its copyright in the unpublished screenplay. The District Court and the 9th Circuit Court of Appeals held that the screenplay only obtained protection when published in the form of the film and lost that protection when Batjack failed to renew the copyright.
What distinguishes McClintock!'s unpublished screenplay from Fingers of Fate's unpublished screenplay is that Warren had a valid copyright for his unpublished screenplay before he made his film. McClintock!'s unpublished screenplay did have state common law protection until the Copyright Act of 1976 superseded all state common law protections except as to pre-1972 sound recordings. The U.S. Copyright Office's Board of Appeals specifically recognized this distinction in its 2002 decision dealing with the film and unregistered screenplay for the film "Husbands" by John Cassavettes. As recognized and cited by the court in Richlin v. MGM Pictures, Inc., 531 F.3d 962, 975 (9th Cir. 2008), the Board of Appeals' reasoning in its Husbands decision is entitled to deference.
There is scant evidence that Warren abandoned his copyright in Manos. Although the premiere was disastrous, he did consider redubbing it and re-releasing it as a comedy. It also played contemporaneously in some west Texas drive-ins. Although he did forfeit his right to copyright the film by failing to place a copyright notice on it, an affirmative, overt act is required before a court will deem that he abandoned his copyright to his film or his screenplay. Nat'l Comics Publs., Inc. v. Fawcett Publs., Inc., 191 F.2d 594, 598 (2d Cir. 1951).
But consider the protection afforded to the unpublished screenplay under the applicable law in 1966 when Warren deposited a copy of it, which is the 1909 Copyright Act (as amended). Section 11 of that act provides for copy protection for works "not reproduced for sale" by depositing one copy of the work if it is a dramatic or musical composition. But Section 11 continues "But the privilege of registration of copyright secured hereunder shall not exempt the copyright proprietor from the deposit of copies under sections twelve and thirteen of this Act where the work is later reproduced in copies for sale." Section 13 provides that if two copies of the work is not deposited within three or six months after a demand from the register of copyrights, the copyright will become void. In the 1976 Copyright Act, 17 U.S.C. § 408(e) no longer requires this : "Published edition of previously registered work. Registration for the first published edition of a work previously registered in unpublished form may be made even though the work as published is substantially the same as the unpublished version."
The text of the 1909 act does not dispossess an author of copyright protection unless and until the register makes a demand. Even if the Fingers of Fate screenplay was published when the film Manos The Hands of Fate was first shown, unless a demand was made, Manos' screenplay would not fall outside the protection of the statute. Given Manos' was a very obscure film, a demand for it would be extremely unlikely.
Before we conclude with this issue, one thing that must be addressed is the effect that a proper registration has on an action for copyright infringement. Simply put, without registration there can be no copyright infringement claim. The only claim a copyright holder can make without registration is against someone who has falsely attributed the authorship of the work or to prevent attacks to the integrity of the work. In this case, two copies of the screenplay must be deposited with the LoC. As the Restoration does not do either of those things, the Trust must produce the screenplay. Alternatively, it could try to persuade the Copyright Office to accept the film as the screenplay.
Even though the film Manos: The Hands of Fate may be in the public domain, the Trust may still be able to maintain control over the exploitation of the film to the extent that it is a derivative work of the copyrighted screenplay. However, it bears the burden of proving the infringement, which also means it bears the burden of either producing the screenplay or otherwise proving its contents. Assuming that it can do this and show that the film is a derivative work of the screenplay, what would happen?
The Trust may end up arguing in Court that it is entitled to the profits from the Synapse films release and perhaps an injunction against further dissemination of the film in any form from Solovey and Synapse. In court it may well have a serious difficulty in showing that the screenplay entitles it to profit. The screenplay is but one part of Manos' charm and reasons for the public's continued interest in the film. The restoration, which the Trust had no part of, was the driving factor behind the sales. Indeed, had it not been for the MTS3K episode so memorably mocking it back in 1993, Manos would have been confined to a footnote in El Paso's local history. The lack of any substantial financial incentive is what may save the Restored Workprint version from being taken out of circulation. (Rifftrax came to an arrangement with the Trust, http://www.playboy.com/articles/the-battle-over-the-worst-movie-ever, so its version is in no jeopardy. I do not know about the MST3K version currently released by Shout Factory!).
However, let us consider the issue of statutory damages as an alternative to proved damages. There are two categories of statutory damages. The first is where a plaintiff elects to decline to prove damages and the court can award from $750-$30,000 for each infringed work per defendant. 17 U.S.C. § 504. However, courts can by statute award attorney's fees, which can become quite substantial, to the prevailing party. 17 U.S.C. § 505. Moreover, there is an issue of "willful" statutory infringement. If a plaintiff can prove "willful" infringement, namely that the infringement occurred with knowledge of the copyright claim or reckless disregard of the copyright status of the infringed work, the Court can enhance damages up to $150,000. However, if the infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright, then the Court can reduce damages to no less than $200.
In this case, the Trust would argue that its communications with Solovey and other parties should have put them on notice that their activities constituted infringement. Solovey could counter that he secured legal advice indicating that Manos was in the public domain and thus should not be liable for willful infringement. Unless the Trust provided him with a copy of the screenplay prior to his releasing of his restoration or at least a citation to the correct volume of the Copyright Catalog, it may have a difficult time showing he willfully infringed on the Trust's copyright. Without that, Solovey may not have been on notice of a valid copyright claim.
It should not have taken any great insight from an experienced copyright attorney to have considered that the screenplay may have been copyrighted in an unpublished form independently of the film. As I indicated above, this was a very common practice according to the Copyright Catalog during the era in which Manos was made. Having realized the possibility, it would have not been a particularly onerous search to look in the Copyright Catalog covering the year 1966. The Copyright Catalog has an author index and Hal Warren's name is there. The Copyright Catalog is freely available through the Copyright Office, and I was able to locate the citation printed above with no great difficulty.
While the Supreme Court decided Petrella on May 19, 2014, a defense based on the uncertainty of the law prior to the Petrella decision would not likely work. Petrella focused on a defense to copyright, not whether there was a valid copyright claim. If one party had successfully asserted a laches defense against a copyright holder prior to Petrella, that would not necessarily have allowed the copyright to enter the public domain de facto. Laches is always applied on a case by case basis, Kourtis v. Cameron, 419 F.3d 989, 1000 (9th Cir. 2005), so a subsequent infringer cannot simply point to a judgment in favor of a previous infringer and prevail on the basis of collateral estoppel. (Collateal estoppel bars a party from contesting an issue in a subsequent lawsuit that had been previously decided in a prior lawsuit to which it was a party.) Typically a successful laches claim may have the effect of insulating a period of prior infringement activity by anybody. However, it may not have applied to not future activity once the copyright holder had shown renewed vigilance unless there is a fundamental issue regarding proof of the content of the infringing work as discussed in the dissenting opinion in Petrella.
Solovey may argue that his restoration was transformative, which is a type of fair use defense to copyright infringement, namely that by restoring a once-faded and scratchy film into something far superior he has allowed viewers to gain new insight into the original work. His registration of copyright in his restoration would give some weight because registration gives a litigant a legal presumption of a valid copyright claim. This would be a tricky argument to make in the light of a dearth of case law regarding the copyright protections granted to film restorations.
However, the differences between the Restored Workprint and the Original Theatrical Release versions are negligible in terms of the story they tell. The four fair use factors cited in 17 U.S.C. § 107 do not favor the Restored Workprint version. The first factor looks to the purpose and character of the use. The Restored Workprint was released for a commercial purpose, Solovey did not put his work in the public domain but copyrighted it and released it through a commercial film distributor, Synapse. The film presumably takes most, if not all the screenplay and puts it on screen. The second factor, nature of the copyrighted work, tends to distinguish between factual and fictional works, and Manos falls wholly within the fictional category. The third factor, amount and substantiality, and the Restored Workprint probably is a filmed version of the Fingers of Fate screenplay. The Restored Workprint version aimed to be the definitive edition of Manos and would have a non-negligible effect on the value of the screenplay. There was a limited market for the original work and the Restored Workprint version has not helped further efforts to market the original story.
The parody film FELT : The Puppet Hands of Fate would fare better in this regard. If MST3K was able to rely on the transformative exception, then it could release everything it ever broadcast without regard to the rights holders of the underlying films it parodied. MST3K does not, it seeks a license from the rights holders for any non-public domain films before releasing them on DVD or via streaming.
