Tuesday, October 09, 2007

Urinetown producers pissed off

In a case that one couldn’t make up, the producers of the Chicago version of the Broadway play “Urinetown” sought a declaratory judgment that their version didn’t infringe the original. This delicious dispute didn’t get off the ground, because the Chicagoans named the wrong party, Mullen v, Society of Stage Directors & Choreographers, 2007 WL 2892654 (N.D. Ill. Sept. 30, 2007). Now that’s funny!

Here is the relevant (edited) part of the court’s opinion:

Plaintiffs seek a declaratory judgment that their Chicago production (the “Chicago Production”) of “Urinetown!” the Musical (the “Work”) was original and unique and did not copy any of Defendant's creative authorship present in Defendant's Broadway production of the Work (the “Broadway Production”) under the Copyright Act. Plaintiffs also seek a declaratory judgment that the Chicago Production did not constitute “passing off” Defendants' creative authorship, if any, in the Broadway Production as Plaintiffs' own, in violation of the Lanham Act. Lastly, Plaintiffs seek damages for Defendants' knowingly false public statement that Plaintiffs staging of the Work in Chicago “plagiarized” substantial elements of the Broadway Production.

On or about November 9, 2005, Blue Dog Entertainment, LLC entered into a licensing agreement with Music Theatre International (“MTI”), whereby the Chicago Team was granted a license to use the script and music for Urinetown the Musical (“Urinetown”). The Work was first staged in 1999 at the New York International Fringe Fest by Joseph P. McDonnell, who directed the original production of the Work. A copyright claim to the book and lyrics of Urinetown was registered with the U.S. Copyright Office on August 12, 1998, by Greg Kotis and Mark Hollmann. A copyright claim to the lighting design of Urinetown was registered with the U.S. Copyright Office on August 21, 2006, by Brian MacDevitt. No other copyright claims associated with Urinetown have been registered with the U.S. Copyright Office. In order to make the satire of musical theater conventions successful, it is necessary to borrow heavily from the parodied works themselves, including such elements as stage direction, choreography, scenic design, costumes and lighting. In 2001, the Work was staged again on Broadway by Defendants Rando, Carrafa, Pask, MacDevitt and Gale (the “Broadway Team”). Defendant Rando won the 2001 Tony Award for “Best Director” for his direction of the Work and Defendant Carrafa, was nominated for, but did not win the Tony Award. In 2006, the Work was staged at the Mercury Theatre in Chicago, Illinois by the Chicago Team.

On November 13, 2006 each member of the Chicago Team received a “cease and desist” letter (the “letter”) from lawyers representing the Broadway Team, the SSDC and the USA Guild. A true and correct copy of the November 13, 2006 letter was attached to the Amended Complaint. The letter stated that “original contributions” of each member of the Broadway Team were “copied willfully, blatantly and practically wholesale” by each member of the Chicago Team. The letter further stated that the Chicago Team “set out to willfully duplicate [the Broadway Team's creative elements] in their entirety and with extraordinary precision.” The letter demanded that within ten days the Chicago Team represent in writing that they agree to cease performing Urinetown (the show closed in May 2006), that Mr. Loeffler “decline and remit” the Jefferson Award and After Dark Award, and that the Chicago team provide an accounting to “assess license fees and damages.” The letter closed with an admonition to Plaintiffs that the Defendants authorized their lawyers to “vigorously and promptly pursue their rights in the United States District Court in the event [Plaintiffs] do not comply with the terms of this letter.”

On November 14, 2006, the Broadway Team, Defendant Hauptman, representing the SSDC, and USA held a press conference in the SSDC's offices in New York City, where the Defendants publicly released the letter and publicly stated that the Chicago Team plagiarized stage direction, choreography, scenic design, costumes and lighting from the Broadway Team. During the press conference, the Defendants publicly stated that the Chicago Production was “nearly identical” to the Broadway Production, that the Act I Finale was “copied exactly” and the Defendant's called the Chicago Team “plagiarists.” Attached to the Amended Complaint is an article in which the Chicago Team is accused of plagiarism. On December 7, 2006, McDonnell, the original director and choreographer of the Work, publicly stated that the Broadway Team had copied substantial portions of McDonnell's creative authorship present in the original staging of the Work.

Plaintiffs allege that the Defendants made public statements that the Chicago Production was “nearly identical” to the Broadway Production, that the Act I Finale was “copied exactly” and that the Chicago Team are “plagiarists” are false and defamatory. According to Plaintiffs, the term “plagiarist” has an objective and factual meaning in the creative arts profession. The clear and unequivocal effect of Defendants' statements is that the Chicago Team intentionally committed professional and intellectual theft. Moreover, the statements were not expressions of opinion. Lastly, the statements were defamatory per se because they attacked the professional honesty, integrity and ability of each member of the Chicago Team and damaged the reputations of each member of the Chicago Team in the eyes of the creative arts community in which they work and in the minds of thousands of writers, directors, choreographers, designers, actors, producers and millions of theatre patrons. The statements were made with actual malice, with the knowledge that they are false or reckless disregard for whether they are false and in with the knowledge that the allegations would likely cause actual harm to the Plaintiffs professional reputations. The allegations were made within sixteen hours of sending the letter to Plaintiffs, in the offices of the very union to which several of the parties belong, giving the allegations and Defendants' a false air of legitimacy and unfairly attacking the Plaintiffs' in such a manner that it would be nearly impossible for the Plaintiffs to defend against such charges.

Plaintiffs request that this Court issue a declaratory judgment that Plaintiffs' production of the Work was unique and not copied protectable creative authorship lawfully owned by the Defendants; issue a declaratory judgment that Plaintiffs' production of the Work was unique and that Plaintiffs did not pass off Defendants' work as their own; issue a permanent injunction against Defendants, jointly and severally, enjoining and prohibiting Defendants, their agents, servants, employees, officers, attorneys, successors and assigns from making any further public statements inconsistent with the judgments of non-infringement; order Defendants, jointly and severally, to place a minimum one-quarter (1/4) page advertisement in Variety Magazine recant their allegations and apologizing to Plaintiffs; order an award of damages against the Defendants, jointly and severally, in an amount to be determined at trial ... Plaintiffs conceded in their reply brief that USA had no ownership interests in any copyrights at issue in the Copyright Act and Lanham Act claims.

A. Non-Infringement under the Copyright Act and Lanham Act

Plaintiffs claim they are entitled to declaratory judgment of non-infringement of the Copyright Act and the Lanham Act for their use of certain works registered with the Copyright Office and owned by the Defendants. However, Plaintiffs concede that USA does not own “the proprietary rights” at issue in the claims involving the Copyright Act and the Lanham Act. They simply argue that USA has a sufficient legal interest in the proprietary rights of its members. In doing so, Plaintiffs cite nothingno case law, no law review articles, nothingsupporting the proposition that a suit seeking declaration of non-infringement can be maintained against parties who are unable to assert infringement themselves. Plaintiffs merely contend that USA has a legal interest in the outcome of this lawsuit as well as the proprietary rights at issue by virtue of the copyrights.

The Seventh Circuit has noted that “[t]he purposes of declaratory judgments are to ‘clarify[ ] and settl[e] the legal relations at issue’ and to ‘terminate and afford relief from the uncertainty, insecurity, and controversy giving rise to the proceeding.’ “... Here, Plaintiffs have no legal relations with USA that require clarification or settlement. Thus, in the instant case, declaratory judgment against USA serves no real purpose other to satisfy Plaintiffs' thirst for revenge against USA for siding with the other Defendants.

Furthermore, if USA sought a declaratory judgment of copyright infringement or damages for copyright infringement against Plaintiffs, it would surely fail for lack of standing because it is an “owner” nor is it a “beneficial owner” (e.g.a licensee) of any copyright at issue under the Copyright Act. ... To prove copyright infringement, a plaintiff must first demonstrate the she owns a valid copyright.... Therefore here, it is fairly evident that there is nothing to declare against USA, as it is incapable of pursuing a copyright infringement action against Plaintiffs.

Therefore, counts I and II are dismissed against USA.


Anonymous said...

Wow, what a story! Just one question: what does USA Guild stand for? Is it in there and I just missed it?

William Patry said...

United Scenic Artists

Anonymous said...

Wow, Bill I think you need to check your facts, both cases in Chicago and Ohio are still full steam ahead. The Chicago team, sued the creative team and both unions and USA did not get dismissed on the third and final count leaving them still in the middle of the case. Yikes!

William Patry said...

Dear Anon., I think the end of the post, which states the court's holding, is pretty clear on what the actual holding is, but I quote it here:

"Therefore, counts I and II are dismissed against USA."