the "Sunshine" Logroño case
Copyright law applied to local TV sitcom
Copyright protects the original expression of an author, but the suggestion of ideas and concepts does not suffice to turn the person making them into an author for copyright purposes. TMTV, Corp. v. Mass Productions, 345 F.Supp.2d 196 (D.P.R. 2004).
Antonio Mojena filed suit in the U.S. District Court alleging authorship of a television situation comedy entitled 20 Pisos de Historia. Co-defendant Emmanuel ("Sunshine") Logroño participated in the series until he moved to a different station, where he aired El Condominio, which the plaintiff claimed was based on 20 Pisos. The legal issues presented were two: (1) authorship of 20 Pisos and (2) whether El Condominio was an unauthorized derivative work of 20 Pisos.
Plaintiff TMTV Corp. (Mojena) was the producer of 20 Pisos. The sitcom commenced airing in 1997 as part of a two-hour long television program called De Noche con Iris y Sunshine. Hosts were co-defendant Logroño and Iris Chacón. Mojena agreed to pay Chacón and Logroño a fixed sum per program plus a share of advertising revenue. In planning the program, Logroño and scriptwriters Miguel Morales and Roberto Jiménez participated in a brainstorming session to come up with ideas. It was there that Morales and Jiménez suggested a sitcom segment dealing with life in a condominium. However, there was no agreement whereby Mojena would share ownership of the program or the copyright thereto.
Morales and Jiménez wrote the first three scripts. Logroño made minor suggestions to the scripts and proceeded to format them with a special computer program. Morales and Jiménez were paid for their script writing work by Mojena. Starting with the fourth program, Logroño also began to write scripts. He did not receive, nor did he request, additional remuneration.
After approximately two years of airing the program, Logroño and six other actors, without prior approval from Mojena, moved to a different television channel, and have since produced and participated in El Condominio, another condominium-related sitcom.
Copyright protects the original expression of an author, whether found in books, computer programs, TV scripts, sound recordings, movies, paintings, photographs, or any other conceivable medium from which that expression can be perceived. Protection extends only to original works fixed in a tangible medium of expression, not to general concepts or ideas.
The originality requirement has been held to mean that the work was not copied from previously existing works. Such requirement is easily met as long as the original elements of the work are not minimal. Literary works are fixed in a medium when they are for the first time transferred from ideas to fixed and written form, containing an original expression of ideas, and not the ideas themselves. The fixation requirement is satisfied in audiovisual works if the live broadcast is simultaneously recorded in a fixed media, such as videotape. Accordingly, the District Court held that 20 Pisos de Historia was a copyrightable and copyrighted work.
The suggestion of any number of ideas and concepts does not suffice to turn persons into authors for copyright purposes. To qualify as an author, a person must supply more than mere direction or ideas, as ideas, refinements and suggestions, standing alone, are not the subject of copyright. The District Court gave no credibility to Logroño's allegation that he wrote an outline for the first three scripts at the brainstorming session. Nonetheless, even if he had, the court found that a general outline would merely constitute unprotected ideas.
The District Court also analyzed the original scripts written by Morales and Jiménez, together with Logroño's retyped versions of those scripts, and found that the changes made by Logroño were minor and not significant. Such minor editorial revisions to original works do not constitute authorship. Accordingly, the court held that Morales and Jiménez, and not Logroño, were the authors of the subject scripts. They were the first persons who translated the original idea of a condominium sitcom into a fixed, tangible expression entitled to copyright protection.
Work for hire
Central to this case was the concept of "work for hire." A work for hire contract executed by an author can vest another person with the authorship of the work product, provided that the work (original scripts) was commissioned for use in the production of an audiovisual work. After determining that the work for hire contracts with Morales and Jiménez were valid, the court concluded that Mojena was the owner of the programs.
Co-authorship of a work may only occur if there is an intent by the original copyright holder to admit another party as co-author. A person may not become a co-author of a derivative work by default, without the knowledge, consent and agreement of the author.
The court found no evidence or intent of such agreement between Logroño and Mojena. Subsequent scripts were not prepared with plaintiff's intention of granting co-authorship rights to Logroño. Based on this, the District Court held that Mojena owned the copyrights of the entire two-year series, with the concomitant right to claim infringement if a substantially similar program were to be aired copying therefrom.
The Copyright Act establishes the exclusive rights enjoyed by the copyright holder, which include reproduction of the copyrighted work, preparation of derivative works, distribution of copies, performance and public display. "Derivative works" are those based upon a previous copyrighted work.
The District Court found that the 20 Pisos programs broadcast after the initial pilot programs were substantially similar derivative works. Accordingly it held that Mojena also was the sole copyright holder of all subsequent programs.
In order to establish copyright infringement, a plaintiff must present evidence of both ownership of a valid copyright and illicit copying. In order for a court to ascertain whether illicit copying has occurred, it must initially determine that the defendant copied the protected work and, if so, that both the original and copied works are substantially similar. Since direct evidence of copying is not readily available, copying is usually established by proving that the defendant had access to the original work and that both articles are substantially similar.
Substantial similarity is determined using the "ordinary observer" test: whether the accused work is so similar to the plaintiff's work that an ordinary, reasonable person would conclude that the defendant unlawfully appropriated the plaintiff's protected expression by taking material of substance and value. Since the District Court held that Mojena was the sole copyright owner of all scripts, the next step was to determine substantial similarity between both sitcoms.
In finding that El Condominio was an unauthorized derivative work of 20 Pisos, the court stated that an ordinary observer would inevitably conclude that the two sitcoms were basically the same program, with only a difference in name and transmission via a different channel. The setting, character names, costumes, character interaction, comedy line, mood and camera angles were virtually identical in both sitcoms. Consequently, the court held plaintiff Mojena to be the sole owner of El Condominio, as it was an unauthorized derivative work of 20 Pisos de Historia. ◙
© 2005 Goldman Antonetti & Cordova, LLC