Counsel Concerns

Attorney in Film Talks Cannot Transfer Copyright

By Stan Soocher

The Court of Appeal of California, Second Appellate District, decided that a transactional attorney wasn't the “duly authorized agent” of book author Mark Frost under copyright law for purposes of transferring the right to make a film of Frost's book. MVP Entertainment Inc. v. Frost, B235100.

Frost is author of The Match: The Day the Game of Golf Changed Forever. Following communications between MVP Entertainment's attorney William Jacobson and Frost's lawyer Alan Wertheimer, in April 2009 Jacobson sent Wertheimer an e-mail with proposed terms for MVP to acquire the film rights to The Match. Jacobson's e-mail stated, “Let me know if this is okay and we'll send paperwork,” to which Wertheimer replied, “done ' thanks! Werth.”

Frost subsequently sent MVP's president Robert Frederick a pitch memorandum and book copies of The Match. Frost also approved a MVP draft of a marketing brochure for the movie. But Frost soon informed Frederick that he actually didn't want MVP to produce the movie. MVP in turn sued Frost in Los Angeles Superior Court. The complaint alleged breach of contract, declaratory relief, promissory estoppel and negligent misrepresentation. The trial court granted summary judgment for Frost.

Section 204(a) of the Copyright Act requires a transfer of exclusive rights to be in a writing signed by the copyright owner or the owner's “duly authorized agent.” Citing Wertheimer's e-mailed “done ' thanks!”, MVP argued Wertheimer had ostensible authority from Frost sufficient to seal the deal. California Civil Code '2317 sees ostensible authority where “a principal, intentionally or by want of ordinary care, causes or allows a third person to believe the agent to possess” it.

MVP counsel Jacobson insisted that ostensible authority existed in this case because “[i]t is industry custom and practice for transactional attorneys to routinely enter into agreements on behalf of their clients. An entertainment attorney's indication that a deal is closed is typically understood to mean (correctly) that he or she has been authorized by the client to consummate the transaction, sometimes followed by the drafting of a written long form agreement.”

But in affirming the grant of summary judgment against MVP, the California Court of Appeal noted “an attorney cannot transfer a copyright without the owner's signature 'or some express authorization' from the owner.” Thus, the court found, “Assuming Wertheimer had ostensible authority, such authority was insufficient to effectuate a transfer of the copyright in The Match. MVP's and Jacobson's belief (whether or not reasonable) that Wertheimer was Frost's duly authorized agent is irrelevant.”

The court of appeal then concluded that the lack of a triable issue of fact regarding the requirements of '204(a) ended all of MVP's claims.

By Christine Simmons

The record company TufAmerica has filed a malpractice suit against the law firms Gibbons; Troutman Sanders; and Baker & Hostetler in New York. TufAmerica alleges it was prevented from recouping legal fees because Oren Warshavsky, a litigator who practiced at all three firms, failed to properly keep billing records.

New York-based TufAmerica Inc. filed the suit against the firms and Warshavsky, an intellectual property and litigation partner now at Baker & Hostetler. Warshavsky practiced at Gibbons from 2001 to 2006 and then at Troutman Sanders from 2006 to 2008 before joining Baker & Hostetler, the complaint states.

“Because Warshavsky failed to maintain proper records ' records that would have included copies of his firms' billing statements ' TufAmerica was unable to prove to the satisfaction of the [court] that it had incurred attorney fees, and that those fees were reasonably related to its defense” in another case, according to the complaint in TufAmerica v. Warshavsky, 157795-2012, filed in Manhattan Supreme Court in November. TufAmerica, which owns the Tuff City Music Group hip-hop record label, states it retained Warshavsky in August 1999 and that the conduct described in the suit spanned his time at all three firms.

According to the suit, Warshavsky defended TufAmerica in two related lawsuits, one in Louisiana state court and one in New Orleans federal court, filed by the same musician plaintiffs. TufAmerica claims the state court case was an attempt to negate contracts between the plaintiffs and TufAmerica that were upheld in the federal suit.

As part of the record company's defense in the state suit, Warshavsky and Gibbons maintained that TufAmerica had a right to withhold from the plaintiffs the amount of attorney fees the company had incurred in the federal case, according to the malpractice suit. But, TufAmerica alleges, Warshavsky failed to maintain billing records from the federal case that would describe his work and would support the amounts TufAmerica claimed it was entitled to debit the musician plaintiffs against their royalties.

TufAmerica also claims Warshavsky failed to properly communicate with the company and local counsel and alleges he failed to represent TufAmerica adequately for other matters. TufAmerica quotes a local counsel's 2006 e-mail to Warshavsky as allegedly saying, “I am still [trying] to get in touch with you on the Motion to Compel. I have called you everyday for almost two weeks now and have not heard back.”

TufAmerica's suit claims the damages are more than $150,000.

Nassau County, NY, attorney Kelly Talcott represents TufAmerica.

Attorney in Film Talks Cannot Transfer Copyright

By Stan Soocher

The Court of Appeal of California, Second Appellate District, decided that a transactional attorney wasn't the “duly authorized agent” of book author Mark Frost under copyright law for purposes of transferring the right to make a film of Frost's book. MVP Entertainment Inc. v. Frost, B235100.

Frost is author of The Match: The Day the Game of Golf Changed Forever. Following communications between MVP Entertainment's attorney William Jacobson and Frost's lawyer Alan Wertheimer, in April 2009 Jacobson sent Wertheimer an e-mail with proposed terms for MVP to acquire the film rights to The Match. Jacobson's e-mail stated, “Let me know if this is okay and we'll send paperwork,” to which Wertheimer replied, “done ' thanks! Werth.”

Frost subsequently sent MVP's president Robert Frederick a pitch memorandum and book copies of The Match. Frost also approved a MVP draft of a marketing brochure for the movie. But Frost soon informed Frederick that he actually didn't want MVP to produce the movie. MVP in turn sued Frost in Los Angeles Superior Court. The complaint alleged breach of contract, declaratory relief, promissory estoppel and negligent misrepresentation. The trial court granted summary judgment for Frost.

Section 204(a) of the Copyright Act requires a transfer of exclusive rights to be in a writing signed by the copyright owner or the owner's “duly authorized agent.” Citing Wertheimer's e-mailed “done ' thanks!”, MVP argued Wertheimer had ostensible authority from Frost sufficient to seal the deal. California Civil Code '2317 sees ostensible authority where “a principal, intentionally or by want of ordinary care, causes or allows a third person to believe the agent to possess” it.

MVP counsel Jacobson insisted that ostensible authority existed in this case because “[i]t is industry custom and practice for transactional attorneys to routinely enter into agreements on behalf of their clients. An entertainment attorney's indication that a deal is closed is typically understood to mean (correctly) that he or she has been authorized by the client to consummate the transaction, sometimes followed by the drafting of a written long form agreement.”

But in affirming the grant of summary judgment against MVP, the California Court of Appeal noted “an attorney cannot transfer a copyright without the owner's signature 'or some express authorization' from the owner.” Thus, the court found, “Assuming Wertheimer had ostensible authority, such authority was insufficient to effectuate a transfer of the copyright in The Match. MVP's and Jacobson's belief (whether or not reasonable) that Wertheimer was Frost's duly authorized agent is irrelevant.”

The court of appeal then concluded that the lack of a triable issue of fact regarding the requirements of '204(a) ended all of MVP's claims.

By Christine Simmons

The record company TufAmerica has filed a malpractice suit against the law firms Gibbons; Troutman Sanders; and Baker & Hostetler in New York. TufAmerica alleges it was prevented from recouping legal fees because Oren Warshavsky, a litigator who practiced at all three firms, failed to properly keep billing records.

New York-based TufAmerica Inc. filed the suit against the firms and Warshavsky, an intellectual property and litigation partner now at Baker & Hostetler. Warshavsky practiced at Gibbons from 2001 to 2006 and then at Troutman Sanders from 2006 to 2008 before joining Baker & Hostetler, the complaint states.

“Because Warshavsky failed to maintain proper records ' records that would have included copies of his firms' billing statements ' TufAmerica was unable to prove to the satisfaction of the [court] that it had incurred attorney fees, and that those fees were reasonably related to its defense” in another case, according to the complaint in TufAmerica v. Warshavsky, 157795-2012, filed in Manhattan Supreme Court in November. TufAmerica, which owns the Tuff City Music Group hip-hop record label, states it retained Warshavsky in August 1999 and that the conduct described in the suit spanned his time at all three firms.

According to the suit, Warshavsky defended TufAmerica in two related lawsuits, one in Louisiana state court and one in New Orleans federal court, filed by the same musician plaintiffs. TufAmerica claims the state court case was an attempt to negate contracts between the plaintiffs and TufAmerica that were upheld in the federal suit.

As part of the record company's defense in the state suit, Warshavsky and Gibbons maintained that TufAmerica had a right to withhold from the plaintiffs the amount of attorney fees the company had incurred in the federal case, according to the malpractice suit. But, TufAmerica alleges, Warshavsky failed to maintain billing records from the federal case that would describe his work and would support the amounts TufAmerica claimed it was entitled to debit the musician plaintiffs against their royalties.

TufAmerica also claims Warshavsky failed to properly communicate with the company and local counsel and alleges he failed to represent TufAmerica adequately for other matters. TufAmerica quotes a local counsel's 2006 e-mail to Warshavsky as allegedly saying, “I am still [trying] to get in touch with you on the Motion to Compel. I have called you everyday for almost two weeks now and have not heard back.”

TufAmerica's suit claims the damages are more than $150,000.

Nassau County, NY, attorney Kelly Talcott represents TufAmerica.