Equivocal Email Exchanges Don’t Transfer Copyright Ownership
The Tjeknavorians collaborated with Mardirossian to make a film about the Armenian genocide. They never signed a paper agreement, although they had a bunch of correspondence regarding the film. Mardirossian contributed funds to the project on an ongoing basis (up to a certain limit). Several years into the project, the relationship deteriorated and Mardirossian demanded the in-progress materials from the Tjeknavorians. The Tjeknavorians refused, and Mardirossian filed suit in state court. The Tjeknavorians filed a separate federal court lawsuit. The key issue in the federal court case was whether the numerous email exchanges between the parties were sufficient to transfer ownership from the Tjeknavorians to Mardirossian. (The cases have an odd procedural relationship. The Tjeknavorians attempted to remove the state court lawsuit to federal court on the basis that the claims arose under the Copyright Act, but Mardirossian successfully moved to remand that case.)
The court looks to the writing requirement of Section 204, which says that a transfer must be supported by “an instrument of conveyance, or a note or memorandum of the transfer . . . in writing and signed by the owner of the rights conveyed,” and says it’s not satisfied here. While there is no requirement that the document be lengthy, it must contain transfer language. In this respect, it’s different from the statute of frauds, which merely requires a writing reflecting the existence of an agreement.
For some reason, neither side produced the correspondence in question, but Mardirossian’s filings contained an admission that he did not have in his possession any document assigning the copyright in the film to him. The court says this decides the case. The court cites to cases saying that email exchanges and even agreement via terms of service can be sufficient, but this case is different from those finding a transfer because no writing exists which contains transfer language.
Mardirossian tried to argue the equities and sought the court’s mercy, but the court says that its decision doesn’t leave Mardirossian entirely out of luck. While he does not have a copyright remedy, he could still argue that he was duped or that the Tjeknavorians breached their agreement by giving him nothing. He would have to raise these issues in the pending state court proceeding.
We have blogged before about contract modifications and transfers of copyright ownership by email and other similar means. My favorite is the case where a contract was modified (materially) through a series of instant message conversations. Copyright cases are unique because they require language reflecting intent to transfer, despite cases saying no “magic language” is required. As to the threshold question of whether an email is a “writing” in this context, the court doesn’t spend much time on it. Hermosilla, from the 11th Circuit, is a great case that looks at the interplay between copyright and the E-Sign act, and assumes that emails satisfy the writing requirement. The MRIS case from the Fourth Circuit is another.
Here, it’s unclear what went wrong. The parties strangely did not include the correspondence in their submissions. Presumably they were unfavorable to Mardirossian, or else he would have included them. The case is also in a strange procedural posture, with a chunk of it continuing where it originally started, in state court.
Case citation: Tjeknavorian v. Mardirossian, 14-cv-5723 (SAS) (S.D.N.Y. Oct. 22, 2014)