Copyrights, Derivative Rights and Electronic Signatures

QUESTION FOR FILMTVLAW.COM:

I did a page-one rewrite on a script for a producer who never paid me for my work. Later he sent me a text message giving me rights to the project. Now like 2 years later I’m actually casting the movie and the producer says he never gave me the project and that a text is not a written contract. Can I use a series of texts as proof he gave me the rights?

ANSWER BY BRANDON BLAKE, ENTERTAINMENT LAWYER:

Great question. There are a lot of rights questions here but I want to focus on two issues, one is the idea of the “derivative work”, and the other is about the US Copyright Act requirement for a “signed writing.” In addition to this article I have nearly a hundred other articles covering all facets of film and television development and production at ww.filmtvlaw.com/entertainment-lawyer-qa/

First of all, we need to look at how many different versions of the creative work exist. In film and television we usually talk about 1) the “underlying work,” such as a book, short story, comic book, etc., 2) the script, and 3) the film or television production itself. Each of these three works has a copyright, and none of these works need to be owned by the same party.

The underlying work is considered to be the original work. It was not based on a previous property and is copyrighted solely in the name of the author or of the company that commissioned the work. A script or teleplay could also be an original work if it was written without reference to an underlying story or other creative work.

Each of the subsequent works based on the original work are “derivative works”, meaning that they are based on other copyrightable works and that they therefore must be licensed from the original author.

In this case, there are multiple derivative works. If there was a story or property the first script was based on, then that would be the original work, the first script is a derivative work, and your rewrite is a derivative work, based on both of the two previous works. In order to precede you would need to license the rights from both the original story and also the other screenplay. If the first script was an original screenplay, then you would only have to deal with the ownership of that work.

Now the next question deals with how a creative work can be licensed. The Copyright Act specifies that a “signed writing” is required to transfer those rights. But it does not provide any more detail or a template for what is required. There have been cases where even a check was used as evidence of a transfer, although the writing must be signed by the party transferring the rights.

But electronic communications create a whole new issue regarding what “signing” means. The federal ESIGN Act clarified a few things, making it federal law that digital signatures are considered to be as binding as ink on paper signatures. The ESIGN Act provides a number of steps that help to confirm that a signature is binding, but it specifically does not require any one technical step to complete an electronic signature.

So then that creates a gray area with regard to emails and text messages. Emails are often “signed” by the party sending the email, although email communication can certainly be easily altered.

Text messages, Facebook and Twitter posts are even more difficult, because they could be considered signed writings in some ways, although certainly are not expected to be formal contracts by the parties sending them.

So the best advice is to be cautious with sending electronic communications. Do not assume that what is said by email or text is “not binding”, because under federal law it can be held to be a signed writing. On the other hand, a writer or producer should not rely on an email or text to be a final disposition of the underlying rights either, given that there are not all the formal steps needed to confirm a signature under the ESIGN Act.

When it comes to the underlying rights to your film or television project, writers and producers should not take chances. Every project has the potential to become valuable property in the future. Have a formal contract drafted, or if a contract is presented, have it reviewed. Many producers only focus on the transfer of rights and the overall division of royalties and profits, but there are a lot of other legal issues that should be resolved as part of a rights agreement as well.

As with any legal matter, please do not make a decision about complex matters without consulting an experienced entertainment attorney first. I have been representing feature film projects and television series for more than 18 years. Please feel free to contact my office about a quote. Feel free to contact my office at www.filmtvlaw.com about a quote.