“every move that she makes”*:copyright protection for stage

STEIN.34.4 (Do Not Delete) 4/19/2013 12:04 PM

1571

“EVERY MOVE THAT SHE MAKES”∗: COPYRIGHT PROTECTION FOR STAGE DIRECTIONS AND THE

FICTIONAL CHARACTER STANDARD

Deana S. Stein†

TABLE OF CONTENTS

INTRODUCTION: “ANOTHER OP’NIN, ANOTHER SHOW” ............................................ 1572

I. “TOO MUCH EXPOSITION . . .”—BACKGROUND INFORMATION ........................ 1574

A. The Elements of a Theatrical Production ................................................ 1574

B. Applicable Copyright Law ......................................................................... 1577

C. Other Applicable Terms Defined .............................................................. 1579

D. The Problem and Notable Disputes ......................................................... 1581

II. “TO GET WHAT YOU WANT, BETTER SEE THAT YOU KEEP WHAT YOU HAVE”—ARGUMENTS FOR PROTECTION ............................................................. 1583

A. Stage Directions Are Already Protected ................................................... 1583

B. Why and How Staging Should Be Protected ........................................... 1584

C. No Broader Implications in Allowing Protection ................................... 1585

III. “BUT ON THE OTHER HAND, WHAT KIND OF MATCH WOULD THAT BE?”—ARGUMENTS AGAINST PROTECTION ........................................................ 1587

A. A Strict Reading of the Copyright Act ...................................................... 1587

B. The Work Made for Hire Doctrine........................................................... 1589

C. Problems Resulting from Expanded Copyright Protection .................... 1590

IV. “YOU SHOULD HAVE STARTED LOOKING IN YOUR OWN BACK YARD”—PROPOSED TEST FOR FINDING COPYRIGHT PROTECTION IN STAGE

DIRECTIONS ............................................................................................................ 1593

∗ MARVIN HAMLISCH & EDWARD KLEBAN, A CHORUS LINE (1975). † Notes Editor, Cardozo Law Review. J.D. Candidate (May 2013), Benjamin N. Cardozo School of Law. I wish to extend my gratitude to Professor Justin Hughes, my faculty advisor, and to Lauren Zimmerman, my Notes Editor, for their insight, diligent feedback, and guidance throughout the writing and editing process. I would also like to thank the staff and board members of Cardozo Law Review for their continuous hard work. Finally, a special thank you to my friends and family for their unending patience, understanding, and encouragement throughout the production of this Note, as well as throughout my years at Cardozo.


1572 C A R D O ZO L AW R E V I E W [Vol. 34:1571

A. Sound Recordings of Musical Arrangements and Orchestrations ........ 1593

B. The Fictional Character Tests ................................................................... 1596 1. The Distinct Delineation Test ...................................................... 1597 2. The Story Being Told Test ............................................................ 1600

C. The Parallel to Staging ............................................................................... 1601

D. Application and Result .............................................................................. 1603

CONCLUSION: “BUT ONLY FOR NOW . . .” .................................................................... 1607

INTRODUCTION: “ANOTHER OP’NIN, ANOTHER SHOW”1

Copyright protection for stage directions—sounds crazy, no?2 Like a fiddler on the roof, trying to keep his balance,3 theatrical directors have attempted to obtain copyright protection for their contributions to Broadway productions.4 And, as Tevya would say, “it isn’t easy.”5 Although the Copyright Act of 1976 extends protection to pantomime and choreography, it fails to expressly mention stage directions,6 and no court has upheld a copyright claim in state directions.7 Yet, no court has held that stage directions are excluded from any or all intellectual property protection.8 Thus, this judicial silence maintains the possibility of both copyright protection for stage directions and expanded profitability for directors.

For the most part, the issue of copyright protection in stage direction has received the greatest attention in legal journals, as the number of disputes is quite few, but these cases tend to receive notable press.9 One of these few cases involved the Broadway musical Urinetown.10 Urinetown premiered in 1999 at the New York International Fringe Festival11 and ran off-Broadway at the American 1 COLE PORTER, KISS ME KATE (Tams-Witmark Music Library, Inc. 1948). 2 JERRY BOCK & SHELDON HARNICK, FIDDLER ON THE ROOF (Musical Theater Int’l 1964). 3 Id. 4 See discussion infra Part I.D. 5 BOCK & HARNICK, supra note 3. 6 17 U.S.C. § 102(a)(4) (2006). 7 See e.g. Mullen v. Soc’y of Stage Dirs. & Choreographers, No. 06 Civ. 6818, 2007 WL 2892654 (N.D. Ill Sept. 30, 2007); Einhorn v. Mergatroyd Prods., 426 F. Supp. 2d 189 (S.D.N.Y. 2006). 8 Jennifer J. Maxwell, Comment, Making a Federal Case for Copyrighting Stage Directions: Einhorn v. Mergatroyd Productions, 7 J. MARSHALL REV. INTELL. PROP. L. 393, 393 (2008). 9 See discussion infra Part I.D. 10 GREG KOTIS & MARK HOLLMANN, URINETOWN: THE MUSICAL (Faber & Faber 2003). Urinetown is a dark comedy depicting a town where, in efforts to regulate water consumption stemming from a large-scale drought, all townspersons must pay to use the toilet. The poor masses attempt to overthrow the menacing company that regulates the mandatory public amenities. See also Valerie Rigsbee, Urinetown, THE BROADWAY MUSICAL HOME, http://broadwaymusicalhome.com/shows/urinetown.htm (last visited Mar. 16, 2013). 11 Mullen, 2007 WL 2892654, at *1.


2013] C O P Y R I GH T FO R S T A G E D I R E C T I O N S 1573

Theater for Actors, from May to June of 2001.12 The show then ran on Broadway at the Henry Miller Theater from September 2001 until January 2004.13 In 2005, Blue Dog Entertainment, LLC licensed the script and music14 to Urinetown for its 2006 Chicago production at the Mercury Theater.15

In November 2006, the Chicago team received a “cease and desist” letter from the lawyers representing the Broadway production of Urinetown, the Society of Stage Directors & Choreographers (SSDC), and United Scenic Artists (USA).16 The letter stated that the Chicago production had illegally copied17 the staging of the original Broadway production.18 The letter required the Chicago team to halt its ongoing production, discontinue performances, return the awards won for its production, and provide an accounting to “assess license fees and damages.”19 Additionally, the Broadway team held a press conference where it openly accused the Chicago team of plagiarizing the staging and other creative elements of the original production.20

The Chicago team eventually brought a defamation suit against the Broadway team and asked the court for a declaratory judgment that its production did not violate copyright law.21 The court, however, avoided conducting an in-depth analysis of the Copyright Act22 or any possible copyright violation by simply stating that to prove infringement, one must prove ownership of a valid copyright,23 which would require 12 KOTIS & HOLLMANN, supra note 10, at x, available at http://www.tcg.org/publications/at/2003/urinetown.cfm (last visited Feb. 7, 2013). 13 Urinetown the Musical, PLAYBILL VAULT, http://www.playbillvault.com/Show/Detail/13327/Urinetown-The-Musical (last visited Feb. 7 2013). 14 In order to produce a play or musical, one must obtain license from the publishing company that owns the rights to the show, which includes paying royalties and rental fees. MUSIC THEATER INTERNATIONAL, http://www.mtishows.com (last visited Feb. 7, 2013). In entering into a licensing agreement, “the materials supplied by MTI (which generally include the script/libretto-vocal books, a piano conductor score and individual orchestra parts) are the only authorized performance materials available for each musical (regardless of other versions which may exist in print, on film or otherwise) and must be rented from MTI as a condition of the license.” Id. The license is usually granted for a specific period of time, usually beginning two months prior to the first performance, and the provided materials must be returned after the expiration of the license. Id. 15 Mullen, 2007 WL 2892654, at *1. 16 Id. at *2. 17 The language used in the letter, which was repeated in the complaint and in the opinion of the court, said that the Chicago production “copied willfully, blatantly and practically wholesale” and “set out to willfully duplicate [the Broadway Team’s creative elements] in their entirety and with extraordinary precision.” Id. (alteration in original) (internal quotation marks omitted). 18 Id. 19 Id. (internal quotation marks omitted). 20 Id. 21 Id. at *2–3. 22 17 U.S.C. § 501(b) (2006). 23 Mullen, 2007 WL 2892654, at *4 (citing Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)).



registration with the U.S. Copyright Office.24 As the Urinetown team only registered copyrights for the show’s book, music, and lighting design, the court decided that the copyright claim to the stage direction and other elements25 could not prevail because there was no copyright on the stage directions themselves.26

By dismissing the copyright claim for lack of proof of valid copyright, the court did not have to reach the underlying question: would the stage directions from the original Broadway production of Urinetown have been protected by copyright law if they had been registered?27 This Note examines this unanswered question. Part I explores the history and background of the Copyright Act and its current application to the theatrical stage. Part I also examines past disputes over theatrical collaboration. Part II discusses several arguments for why stage directions are protected under the Copyright Act, and also provides reasons why staging should be protectable intellectual property. Part III explores the counter arguments for copyright protection for stage directions. Part IV offers a solution to the dispute by applying standards used in determining copyright protection for fictional characters to stage directions. In applying these standards, this Note argues that stage directions can be afforded copyright protection in limited instances.

I. “TOO MUCH EXPOSITION . . .”28—BACKGROUND INFORMATION

A. The Elements of a Theatrical Production

In order to understand the legal issue at hand, one must first begin with the building blocks of a theatrical production. A successful stage production has several components to it. First, there must be a work to produce—that is the script of the play itself. In a musical, the work also includes the songs and orchestration, which are written in traditional musical notation, and together are referred to as the score.29 The playwright is the author of the script; the composer—in the case of a musical—is the author of the music; and the lyricist is the author of the

24 17 U.S.C. § 411. 25 The other creative elements included the choreography, scenic design, and costumes. Mullen, 2007 WL 2892654, at *1. 26 Id. at *4. 27 See Campbell Robertson, A Urinetown Suit Is Settled, N.Y. TIMES, Dec. 1, 2007, at B8 (“Some design elements and choreography are protected under copyright law, but there has not been a conclusive ruling on whether a director’s work is protected.”). 28 KOTIS & HOLLMANN, supra note 10, at 10. 29 See OSCAR G. BROCKETT, THE THEATER: AN INTRODUCTION 656–58 (4th ed. 1979).



song lyrics.30 The script and musical score are unquestionably proper subjects of copyright.31 Next, producers are hired to finance and promote the show, select a director, and secure the venue.32 Then, the cast and crew are hired to perform in the show. The actors, dancers, singers, and pit musicians are the most noticeable members of a show’s team, as they are visible to the audience at each performance. Main members of the backstage and creative team include the costume designer, lighting designer, sound designer, set designer, choreographer, stage manager, and, last but not least, the director.

The role of the director has changed significantly since early theater.33 In the time of Shakespeare, the playwright both wrote and directed the work, thus the dual roles of author and director were played by the same person.34 Beginning in the second half of the nineteenth century, the director began to control the major aspects of the theater production itself, including telling the actors how to move and speak, as well as influencing other creative aspects of the production, such as scenery, costuming, and lighting.35 Today, the role of the theater director is two-fold and serves many creative functions. First and foremost, the director translates the playwright’s written words into a live presentation.36 In this respect, the director is an interpretive artist, faithfully serving the playwright in his or her attempt to mold the script into theatrical form.37 Second, the director is a creative artist looking to craft his or her own art.38 The script is only one element to a production, and in order for the director to stage a script, the director must make choices regarding scenery, lighting, costumes, and sound.39 The director may select a theme or motif for the production, such as a particular time period. The director also may interpret the characters, long before an actor begins to play the part.40

30 Sometimes the music is written by one person who also writes the lyrics to the songs. Stephen Sondheim is known to write all the lyrics to his music. There are famous duos of theatrical scores, such as Rogers & Hammerstein, Lerner & Loewe, etc. For a fairly complete overview of the history of musical theatre, see MICHAEL KANTOR, BROADWAY: THE AMERICAN MUSICAL (2004). 31 See 17 U.S.C. § 102(a) (2006). 32 BROCKETT, supra note 29, at 490. 33 Margit Livingston, Inspiration or Imitation: Copyright Protection for Stage Directions, 50 B.C. L. REV. 427, 437 (2009). 34 Id.; see also Helen Krich Chinoy, The Emergence of the Director, in DIRECTORS ON DIRECTING: A SOURCE BOOK ON MODERN THEATER 3, 3–6 (Toby Cole & Helen Krich Chinoy eds., 1963). 35 Livingston, supra note 33, at 437–38. 36 Id. at 438. 37 BROCKETT, supra note 29, at 496. 38 Id. 39 Id. 40 See id. at 498.



Additionally, and possibly most noticeably to the audience, the director creates and develops the movement of the actors on the stage throughout the performance, a process often called staging or blocking.41 The director may work with the costumer to develop costumes that match with the director’s vision of the production.42 The director may also give instructions to other back stage creative roles, such as the lighting designer and scenic designer.43 A modern stage director is often seen as the head of the production and the source of all creative decision-making,44 and the coordinator of all elements that constitute a finished stage production.45 Thus, by making decisions regarding the above-mentioned elements, the director fulfils his second role as a creative artist.

Stage directions are easily defined as instructions on how actors speak and move during a play, and many of these “instructions” are not merely written into the script, but rather chosen by the director.46 Given the entirety of the director’s role, a more accurate definition of stage direction includes not simply the instructions given to the actors on how to move and behave on the stage, but also the overall concept or theme used in bringing a script to the stage.47 Setting a nineteenth-century English drama in the present time48 or setting a play with intricate scenery on a bare stage49 are examples of stage directions with a theme. Moreover, elements like tempo, timing, and rhythm are examples of staging that apply to the actors themselves. In addition, stage directions particular to each scene are captured in writing in the form of a prompt book,50 typically notated by the stage manager or assistant director.51 While the prompt book records a day’s work and memorializes the director’s choices, the prompt book also serves as a reference guide to new and incoming stage managers and actors—particularly understudies,52 who may not ever rehearse with the director.

41 Id. at 523. 42 Livingston, supra note 33, at 437–38. 43 Id. at 438. 44 Id. at 437. 45 BROCKETT, supra note 29, at 497. 46 Maxwell, supra note 8, at 396. 47 Livingston, supra note 33, at 436. 48 In 2011, a Virginia Theater Company set Oscar Wilde’s The Importance of Being Earnest in modern dress. See Mal Vincent, Aquila Gives ‘Earnest’ a Modern Treatment, THE VIRGINIAN-PILOT, Oct. 11 2011, at E1. 49 See infra Part IV for discussion of the 2005 revival of Sweeney Todd. 50 Jessica Talati, Comment, Copyrighting State Directions & the Constitutional Mandate to “Promote the Progress of Science,” 7 NW. J. TECH. & INTELL. PROP. 241, 247 (2009). 51 Jeannette Gunderson, Comment, An Unaccountable Familiarity: A Dual Solution to the Problem of Theft in Theatrical Productions, 31 SEATTLE U. L. REV. 667, 688 (2008). 52 Id. at 688–89.



On the other hand, that the playwright may give the director much direction of his or her own.53 Some playwrights include elements other than the dialogue in the script.54 These may include directions regarding the setting, costumes, age of characters, and even simple stage directions, such as from what part of the stage a character enters, how a character should speak a particular line, and even particular actions, such as the characters embracing or walking away from each other.55 However, even when a playwright gives some creative direction, many playwrights do not give enough written instruction to leave the director devoid of creative input.

B. Applicable Copyright Law

Congressional authority to legislate on the subject of copyright stems directly from Article I, Section 8 of the Constitution, which reads: “Congress shall have Power . . . [t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”56 Pursuant to this constitutionally granted authority, Congress passed the Copyright Act. The most general provision of the Copyright Act is codified in chapter 17 of the United States Code, § 102.57 Some of the most relevant genres protected under the Copyright Act are works of literature, music, and drama, as well as pantomime and choreography.58 A cursory reading of this statute does not explicitly include stage directions, and the protected genres closest to stage directions are pantomimes and choreographic works, which many people believe to be categories under which stage direction naturally falls.59 53 Beth Freemal, Note, Theatre, Stage Directions & Copyright Law, 71 CHI.-KENT L. REV. 1017, 1026 (1996) (“Even the Copyright Office literature indicates that stage directions originate with the playwright.”). 54 Id. (“For example, several types of stage directions originate with the playwright: those that indicate which characters are present on stage as each act begins; those that indicate the entrances and exits of the actor; and those that a playwright uses to dictate the actions their characters perform.”). 55 For example, in his A Streetcar Named Desire, playwright Tennessee Williams provides explicit instructions directly in the script regarding props, costumes, and music. See, e.g., TENNESSEE WILLIAMS, A STREETCAR NAMED DESIRE 3–5 (New Directions 2004). Williams describes in detail not just the actions of the actors, but the mise en scène as well. That is, he describes the “whole picture” from the “blue piano” played off in the distance and the bloody butcher’s packaged toted by iconoclast Stanley Kowalski to the elements of Blanche’s costume softly “suggest[ing] a moth.” Id. 56 U.S. CONST. art. I, § 8, cl. 8. 57 17 U.S.C. § 102 (2006). This provision was enacted in 1976, but amended in 1990. Judicial Improvements Act of 1990, Pub. L. No. 101-650, § 703, 104 Stat. 5089, 5133. 58 Id. 59 Talia Yellin, New Directions for Copyright: The Property Rights of Stage Directors, 24 COLUM.-VLA J.L. & ARTS 317, 328–29 (2001); see also Michael Fleming, Conroy and Par in



Under the current Copyright Act,60 a work receives copyright protection upon creation and fixation in a tangible medium, so long as the work is both original and creative.61 However, in order to pursue a claim of copyright infringement, the party claiming the violation must first register the copyright with the U.S. Copyright Office.62 This requirement provided the fatal blow to the Urinetown team’s case and kept the court from reaching the question of whether stage directions were proper subjects of copyright protection.63

The basic requirements for obtaining federal copyright protection are original authorship and fixation in a tangible form.64 Meeting the originality requirement usually does not prove difficult, as all an author needs to do is contribute something that is creatively traceable to the author, even if simply an addition to an existing work.65 Assuming a playwright did not block the entire production in the script, there is typically some element of creativity that a director can satisfy by staging the script.66 So long as a work is independently created and contains at least minimal creativity, it will satisfy the originality requirement.67 Furthermore, minimal creativity is not a particularly high threshold, and even works based on historical facts, which cannot themselves be copyrighted,68 may meet this requirement. Such works, which may be based on an historical figure or recent news story, often find creativity in the author’s choice of arranging and selecting which facts to

Harmony on ‘Beach Music’ Deal, VARIETY, June 26, 1995–July 9, 1995, at 2. 60 This is the 1976 Act. All future references to the Copyright Act in this Note refer to the 1976 Act. 61 17 U.S.C. § 102(a); Yellin, supra note 59, at 322–23. 62 See 17 U.S.C. § 411(a); see also Reed Elsevier, Inc. v. Muchnick, 130 S. Ct. 1237, 1241 (2010). 63 Mullen v. Soc’y of Stage Dirs. & Choreographers, No. 06 Civ. 6818, 2007 WL 2892654, at *4 (N.D. Ill. Sept. 30, 2007). 64 17 U.S.C. § 102(a) (“[O]riginal works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device . . . .”); see also, Carrie Ryan Gallia, Note, To Fix or Not to Fix: Copyright’s Fixation Requirement and the Rights of Theatrical Collaborators, 92 MINN. L. REV. 231, 237–40 (2007). 65 Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99, 102–03 (2d Cir. 1951) (“All that is needed to satisfy . . . the statute is that the ‘author’ contributed something more than a ‘merely trivial’ variation, something recognizably ‘his own.’ Originality in this context ‘means little more than a prohibition of actual copying.’ No matter how poor artistically the ‘author’s’ addition, it is enough if it be his own.” (quoting Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 250 (1903))). 66 Talati, supra note 50, at 243; see also Yellin, supra note 59, at 331; Douglas M. Nevin, Comment, No Business Like Show Business: Copyright Law, the Theater Industry, and the Dilemma of Rewarding Collaboration, 53 EMORY L.J. 1533, 1558 (2004) (“[T]he requisite modicum of originality [for stage directions] is easily satisfied.”). 67 Feist Publ’ns, Inc. v. Rural Tel. Serv. Co. 499 U.S. 340, 345 (citing 1 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT § 2.01A, B (1990)). 68 Id.; Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 556 (1985) (“No author may copyright his ideas or the facts he narrates.”).



incorporate.69 Similarly, though stage directions are based in a playwright’s script, rather than the director’s originally written script, a director is likely to meet the original authorship requirement.70

The fixation requirement proves to be a bit more complex and is perhaps one of the biggest hindrances to the application of the Copyright Act to stage directions.71 The Act defines “fixed” as existence in a tangible form allowing for viewership, replication, and transmission for more than a brief duration.72 Further, a work consisting of sounds and/or images that are “transmitted” is protected by this definition “if a fixation of the work is being made simultaneously with its transmission.”73 With respect to the script or score of a theatrical production, fixation is met because the script and score typically exist in written form and one could easily reproduce and keep them as they exist over time. Yet, the performance of the show, where stage directions appear, is intended to be in front of a live audience.74 Thus, every moment of stage direction is fleeting, rather than fixed in tangible form.75

C. Other Applicable Terms Defined

The Copyright Act also sets forth what are commonly known as the “work made for hire”76 and the “derivative works” doctrines.77 These doctrines provide arguments for and against the protection of stage directions.

A work made for hire is defined as a work prepared by an employee in the scope of his or her employment, or a specially commissioned work expressly designated as such.78 In an employment 69 Harper, 471 U.S. at 556–57. 70 This would ultimately depend upon how much “liberty” the director takes with the prescribed stage direction or lack thereof. Compare EUGENE O’NEIL, THE ICEMAN COMETH 3–8 (Vintage Books 1957), with Charles Isherwood, Long Day’s Journey into Laughter, N.Y. TIMES, Sept. 12, 2011, at C6 (discussing a director’s creation of a play comprised entirely out of O’Neill’s laborious descriptions of scenery and stage directions). 71 See Yellin, supra note 59, at 327–29. See generally Gallia, supra note 64. 72 17 U.S.C. § 101 (2006) (“‘Copies’ are material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated . . . .”). 73 Id. 74 Nevin, supra note 66, at 1539. 75 Certainly one could “fix” stage directions through videorecording, but this is not a simple solution, as it may not be authorized. Additionally, many argue that the use of the prompt book fixes stage direction and eliminates the fixation problem. See discussion infra Part II.A for further analysis. 76 17 U.S.C. § 101. 77 Id. 78 Id. (“[A] work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a



relationship, the employer or hiring party is considered the owner or author of the work.79 Additionally, the Supreme Court has held that the general principles of agency law determine whether an employee or an independent contractor prepared the work in question.80 In making this determination, courts examine the level of control the hiring party had over the means and manner in which the work product is ultimately completed, as well as elements including, but not limited to, the relationship between the parties and the method of payment, with no one factor being determinative.81

In applying the work made for hire doctrine to stage directions, one must determine whether the director is an employee or independent contractor.82 Proponents of stage directions as unprotected under copyright law see the director as an employee of the producer of the theatrical work. Thus, if the director is an employee, the director is not the author of the staging. Rather, the producer or production company owns the staging. However, even if the director does not own the stage directions, the question still exists as to whether the stage directions are properly copyrightable. If not, then ownership is irrelevant.

A derivative work is a work based on one or more pre-existing works.83 Examples include translations, musical arrangements, dramatizations, condensation, film adaptation, or other ways in which a work can be recast, transformed, or adapted.84 Furthermore, a derivative work receives copyright protection only to the extent of any added, additional creative work.85 For example, the movie version of a previously written book would be a derivative work.86 However, the derivative work doctrine only protects what is left after the previously copyrighted materials, for example the book, are excluded.87 Stage directions are derived from a previous work—the playwright’s script itself.88 If protected as a derivative work, the director would be afforded protection only for the stage directions, not the text of the script or any supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.”). 79 17 U.S.C. § 201(b); see also Livingston, supra note 33, at 448. 80 Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730, 750–51 (1989). 81 Id. at 751–52. 82 See Livingston, supra note 33, 448–452; see also Part III.B. 83 17 U.S.C. § 101. 84 Id. 85 17 U.S.C. § 103(b) (“The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material.”). 86 E.g. J.K. ROWLING, HARRY POTTER AND THE SORCERER’S STONE (1998); HARRY POTTER AND THE SORCERER’S STONE (Warner Bros. 2001). 87 17 U.S.C. § 103(b). 88 Livingston, supra note 33, at 442–43.



directions written in by the author.89 This argument is often used by those in favor of extending copyright protection to stage directions by defining what the application might be.90

D. The Problem and Notable Disputes

Until about the mid-1990s, the question of whether stage directions are proper subjects of copyright protection was mostly a theoretical discussion, as no legal disputes arose from this question.91 However, in 1995, director Gerald Gutierrez sued the Drury Lane Oak Brook Theater in Illinois for copyright infringement.92 Gutierrez had directed the Broadway revival of the musical The Most Happy Fella93 in 1992.94 Gutierrez notated his stage directions in the script, and registered them with the Copyright Office.95 In 1994, when Drury Lane produced the same musical, Gutierrez sued, claiming that the director, who had seen a videotape of the Gutierrez production, copied Gutierrez’ staging.96 The case later settled.97

The issue arose again in 1996 when director Joe Mantello sued the Caldwell Theater Company in Boca Raton, Florida for copyright infringement, claiming the theater’s production of Love! Valour! Compassion!98 replicated Mantello’s staging from the New York production.99 The District Court for the Southern District of New York, however, dismissed the case for lack of personal jurisdiction100 and declined to comment on the substantive issues of the case.101

In 2006, when playwright Nancy McLernan denied director Edward Einhorn payment for his staging and choreography for a short-run production of the play Tam Lin,102 Einhorn literally made a federal

89 Gallia, supra note 64, at 252. 90 See discussion infra Part II.A. 91 See, e.g., Jessica Litman, Note, Copyright in the Stage Direction of a Broadway Musical, 7 COLUM. J. ART & L. 309 (1982). 92 David Leichtman, Most Unhappy Collaborators: An Argument Against the Recognition of Property Ownership in Stage Directions, 20 COLUM.-VLA J.L. & ARTS 683, 683 (1996) (citing Complaint, Gutierrez v. Desantis, No. 95-1949 (S.D.N.Y. Mar. 22, 1995)). 93 FRANK LOESSER, THE MOST HAPPY FELLA (Music Theater Int’l 1956). 94 The production opened at the Goodspeed Opera House in Connecticut, then moved to the Doolittle Theater in Los Angeles, and then to Broadway’s Booth Theater in 1992. Leichtman, supra note 92, at 683. 95 Id. 96 Id. 97 Id. 98 TERRENCE MCNALLY, LOVE! VALOUR! COMPASSION! (Dramatics Play Serv., Inc. 1994). 99 Mantello v. Hall, 947 F. Supp. 92, 95–96 (S.D.N.Y. 1996). 100 Id. at 102. 101 Id. 102 NANCY MCLERNAN, TAM LIN (2004).



case103 over his $1000 fee and sued for breach of contract and copyright infringement.104 According to Einhorn, McLernan hired him to direct the play for its limited run in 2004 for a fee of $1000, but the day before the show opened, Einhorn was fired and denied payment,105 even though the production used his staging.106 In the months that followed, Einhorn registered his stage directions and choreography with the Copyright Office.107 In its decision, the District Court in the Southern District of New York only addressed the legitimacy of the contract claim, and did not reach the question of whether Einhorn’s staging should be afforded copyright protection because the moving papers before the court did not address the issue of copyright.108 Therefore, the court held that it could not make such a determination.109 Despite not ruling on the issue, the court did note that a decision on the merits of this claim would require consideration of a number of questions, including an examination and application of the fixation requirement and the scène à faire doctrine.110

Finally, the Urinetown case111 most recently asked the same question of whether stage directions could be afforded copyright protection. As discussed earlier, the District Court for the Northern District of Illinois did not address this question, as it dismissed the case entirely, finding that without registering a work with the Copyright Office, the original Broadway team could not prove ownership of a valid copyright and, therefore, could not establish copyright infringement.112 Unlike the Einhorn court, this court did not even hypothetically discuss the necessary requirements of establishing a valid claim of copyright infringement of stage directions. Thus, the absence of a single court to definitively answer the question of whether stage directions are the proper subject of copyright protection has led to continuing and ongoing theoretical debates by legal scholars.113

103 Jennifer Maxwell cashed in on this pun when titling her article. See Maxwell, supra note 8. 104 Einhorn v. Mergatroyd Productions, 426 F. Supp. 2d 189, 191–92 (S.D.N.Y. 2006); see also Jesse Green, Exit, Pursued by a Lawyer, N.Y. TIMES, Jan. 29, 2006, Theater at 1. 105 Einhorn, 426 F. Supp. 2d at 192. 106 Likely because it was so close to the show’s opening. 107 Einhorn, 426 F. Supp. 2d at 192 (noting that what was registered was a copy of the script containing “both stage directions enclosed in parentheses and italicized interlineations”). 108 Id. at 196. 109 Id. 110 Id.; see discussion of scène à faire doctrine infra Part IV.B.1. 111 Mullen v. Soc’y of Stage Dirs. & Choreographers, No. 06 Civ. 6818, 2007 WL 2892654 (N.D. Ill. Sept. 30, 2007). 112 Id. at *4. 113 See, e.g., Leichtman, supra note 92; Yellin, supra note 59; Gunderson, supra note 51; Maxwell, supra note 8; Talati, supra note 50.



II. “TO GET WHAT YOU WANT, BETTER SEE THAT YOU KEEP WHAT YOU HAVE”114—ARGUMENTS FOR PROTECTION

A. Stage Directions Are Already Protected

One of the biggest hurdles standing in the way of copyright protection for stage direction is the fixation requirement.115 Yet, one argument for such protection stems from a broad reading of two genres specifically enumerated in Copyright Act—pantomime and choreography, subject matters that arguably themselves have issues meeting the fixation requirement.116

As one scholar has posited, dance is an intangible form of art living through live performance rather than video recording, and, therefore, the fixation requirement presents a formidable obstacle to registering choreography.117 Yet, choreography can be notated through a written system known as Labanotation, and duplicated by reading this notation.118 Like choreography, stage directions also involve movement meant for performance. Stage directions exist for the purpose of a performance, otherwise they would not be a necessary addition to the written work. Yet, like choreography, directors may record their decisions in writing through the use of prompt books. Prompt books both memorialize the director’s creative decisions and aid understudies and new cast members.119

A stronger argument still is the parallel to pantomime. Pantomime is the art of conveying emotion and action with gestures but without speech.120 Pantomime tells a story without words, and usually without music. If one adds dialogue to pantomime, the pantomime effectively transforms into stage direction. Pantomime can be notated similarly to stage directions, and, unlike choreography but similar to staging, there

114 STEPHEN SONDHEIM, INTO THE WOODS (Music Theater Int’l 1987). 115 17 U.S.C. §102(a) (2006); see discussion supra Part I.B. 116 Yellin, supra, note 59, at 318 (“Stage directions are not included among these categories. Stage directors have begun to compare their work to pantomimes and choreographic works, both of which are listed as works of authorship in the Copyright Act.”); see also Fleming, supra note 59, at 2 (“[T]hat’s the essence of directing, a combination of choreography and pantomime.”). 117 Barbara A. Singer, In Search of Adequate Protection for Choreographic Works: Legislative and Judicial Alternatives v. The Custom of the Dance Community, 38 U. MIAMI L. REV. 287, 301 (1984). 118 Richard Amada, Elvis Karaoke Shakespeare and the Search for a Copyrightable Stage Direction, 43 ARIZ. L. REV. 677, 686 (2001) (citing ANN HUTCHINSON GUEST, LABANOTATION (3d ed. 1977)). 119 See discussion supra Part I.A. 120 Pantomime, DICTIONARY.COM, http://dictionary.reference.com/browse/pantomime (last visited Dec. 4, 2011). Sometimes pantomime is set to music, but is still a different art form from dance and choreography.



is room for flexibility with elements like timing, rhythm, and space.121 Thus, if stage directions are deemed a type of pantomime, they are already protected.

The derivative works doctrine also provides a strong argument that stage directions are protected.122 Under the Copyright Act, an author has the exclusive right to prepare derivative works based on his or her original work, as well as to authorize the creation of a derivative work by someone else.123 When a playwright licenses a play for performance, the playwright typically authorizes the creation of a derivative work,124 as staging a play is a “form in which a work may be recast, transformed, or adapted.”125 However, an author may still retain a copyright in the derivative work, thus owning both the original and derivative works.126 This means that the staging of the play would be protected as a derivative work, but the playwright, not the director, would own the staging. The question then becomes one of ownership, not whether staging is a proper subject of copyright protection. While directors may not favor this concept, this method signifies, at the very least, that stage directions are protected, and directors desiring to profit further from their creative contributions need only establish ownership.127

B. Why and How Staging Should Be Protected

In addition to various interpretations of the Copyright Act, public policy favors protection for stage directions. Staging is the epitome of intellectual property, and the law serves to protect original work, particularly in the arts, and reward the author with financial incentive to create such works.128 Moreover, staging is an expression of an idea, and that expression is what Copyright Act actually protects.129 The act of 121 Often, choreography is limited by the meter and tempo of the music used. For further discussion of choreography, see infra Part III.A. 122 See supra text accompanying notes 83–90. 123 17 U.S.C. § 106(2) (2006). 124 Yellin, supra note 59, at 334. 125 17 U.S.C. § 101. 126 See Gilliam v. Am. Broad. Co., 538 F.2d. 14, 20 (2d. Cir. 1976) (“[S]ince the copyright in the underlying [work] survives intact despite the incorporation of that work into a derivative work, one who uses the [underlying work], even with the permission of the proprietor of the derivative work, may infringe the underlying copyright.”). 127 However, remember that copyright protection as a derivative work only extends as far as the director’s own contributions apart from the original work. 17 U.S.C. § 103(b). Therefore, the director would still have to meet a separate threshold for original authorship, aside from actual ownership. 128 See 17 U.S.C. § 201(a) (protecting various artistic endeavors); 17 U.S.C. §§ 502–505 (providing remedies for copyright infringement). 129 See Cooling Sys. & Flexibles, Inc. v. Stuart Radiator, Inc., 777 F.2d 485, 491 (9th Cir. 1985) (“An author can claim to ‘own’ only an original manner of expressing ideas or an original arrangement of facts.”).



bringing a written work to life on the stage requires large-scale creativity. The director develops a visual idea of how a staged production should look and then executes that idea via staging and decisions regarding scenery, lighting, sound, and costuming.130 A director is an artist whose canvas is the stage and whose tools are actors, scenery, costumes, and movement.131 Furthermore, other parts of a theatrical production, namely costumes, lighting design, and scenery, are protected by copyright law.132 While each of the above-mentioned theatrical elements exists independently and can be viewed as such, these elements are all incorporated into the overall staged work and are inherently connected to the broadest definition of stage direction.133 Thus, public policy dictates that staging, one of the largest creative contributions to a theatrical production, should be similarly protected.

Additionally, affording directors or playwrights this protection is not a difficult endeavor, but a viable one. The easiest solution is to treat stage directions like a script. When a theater wants to perform a production of an existing play or musical, it must license the performance of the play from the appropriate publisher.134 This license allows a theater legal use of the script and the musical score, if applicable. It would be quite simple to license stage directions in the same manner in an agreement. Instead of licensing only the music and script, a future producer or theater company could choose to license the staging through a comprehensive agreement.135 That way, the creative individuals responsible for the staging receive compensation in the form of royalties on a per production basis. This eliminates the problem of future disputes over local productions replicating the original staging of a Broadway production.

C. No Broader Implications in Allowing Protection

Keeping in mind the frequency with which litigations arise over stage direction,136 advocates of copyright protection in stage directions 130 Livingston, supra note 33, at 444. 131 Id. 132 See discussion supra Part I. 133 See discussion of the director’s role supra Part I.A. 134 See, e.g., How to License a Musical, MUSIC THEATER INT’L, http://www.mtishows.com/content.asp?id=3_1_0 (last visited Mar. 26, 2013); Applying for Performance Rights, SAMUEL FRENCH, INC., http://www.samuelfrench.com/apply-for-rights (last visited Mar. 26, 2013); Form to Request Quote, TAMS-WITMARK MUSIC LIBRARY, INC., http://www.tamswitmark.com/cgi/requestForm.php (last visited Mar. 26, 2013). These licenses allow for the performance of a play or musical for a limited period of time. 135 See Livingston, supra note 33, at 446 n.150; see also Yellin, supra note 59, at 343. 136 See, e.g. Mullen v. Soc’y of Stage Dirs. & Choreographers, No. 06 Civ. 6818, 2007 WL 2892654 (N.D. Ill Sept. 30, 2007) (the Urinetown case); Einhorn v. Mergatroyd Prods., 426 F. Supp. 2d 189 (S.D.N.Y. 2006) (the Tam Lin case); Mantello v. Hall, 947 F. Supp. 92, 95–96



feel that allowing such protection will not stifle creativity or create future problems.137 Since a director’s creativity is the keystone to his success, it seems unlikely that a director would use the stage direction of previous directors when attempting to recreate older works. Furthermore, when an older play or musical is revived on Broadway, the production is often updated, including the staging.138 Directors create new staging for old works not out of fear of litigation, but because of a natural desire to add new vision to the show and possibly receive recognition for originality.

The potential protection afforded to stage directions will mostly affect local productions unaffiliated with the original Broadway productions.139 Even though local productions would license the stage directions along with the usual rights to perform the musical or play for a limited time, there would be no requirements for the production to include original staging. The license, however, would function more as immunity from suit, rather than a how-to guide on performance. Moreover, many non-Broadway productions of plays and musicals simply lack the ability to replicate the original Broadway production staging, as many such productions call for creative elements such as elaborately moving sets that a small-town production is financially or physically incapable of rendering. Thus, the licensing method would protect both the directors and local theater without hindering any creativity.

For those local and regional theaters that intend their productions to be quite similar to the original Broadway productions, and have the means to do so,140 licensing stage directions provides an easy and legal way to accomplish this goal. For many such theater companies, they intend to provide their audiences with local, less expensive alternatives to a New York Broadway production.141 While theater enthusiasts may cry that there is no substitute for the Broadway stage, the fact remains that many theater lovers simply cannot afford the expense of seeing an authentic Broadway production.142 As the courts often frown upon this type of substitution for the original,143 licensing stage directions would

(S.D.N.Y. 1996) (the Love! Valour! Compassion! case); Complaint, Gutierrez v. Desantis, No. 95-1949 (S.D.N.Y. Mar. 22, 1995)) (the Most Happy Fella case). 137 See generally Livingston, supra note 33. 138 See discussion infra Part IV. 139 For example, summer stock and regional theater, community and non-for-profit theater, high school theater, etc. 140 For example, Minneapolis’s Guthrie Theater, which is “a leading influence in the American regional theater movement and one of the largest and most well-funded regional theaters in the country.” Polly Carl, A Boy in a Man’s Theater, VIDA—WOMEN IN LITERARY ARTS (May 1, 2012), available at http://www.vidaweb.org/a-boy-in-a-mans-theater. 141 Livingston, supra note 33, at 462. 142 Id. 143 Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 587–88 (1994) (“[A] work composed



be an appropriate way to do so legally. Such theaters would then be in the clear to have their desired production qualities, and the directors or appropriate copyright owner would be satisfied with their royalty payments.

III. “BUT ON THE OTHER HAND, WHAT KIND OF MATCH WOULD THAT BE?”144—ARGUMENTS AGAINST PROTECTION

A. A Strict Reading of the Copyright Act

The Copyright Act does not list stage directions, although it does specify choreography and pantomime.145 Thus, one compelling argument against protection for stage directions is that staging is not among the enumerated categories listed in the statute.146 The counter argument, however, is that the list of eight broad enumerated categories is not meant to be exhaustive, but expansive, and certainly the legislative history of the Copyright Act supports this notion.147 Based on the legislative history, and since Congress included choreography and pantomime, it stands to reason that stage directions could be covered by the statute.148 A fundamental difference, though, between stage directions, choreography, and pantomime is that stage directions, standing alone, do not constitute a coherent work apart from the underlying play.149 When taken away from the script, the director’s contribution does not tell a connected story or series of events.150 Additionally, choreography and pantomime are often done without dialogue.151 Stage directions, on the other hand, serve to enhance or primarily of an original, particularly its heart, with little added or changed, is more likely to be a merely superseding use, fulfilling demand for the original.”); Ty, Inc. v. Publ’ns Int’l Ltd., 292 F.3d 512, 517 (7th Cir. 2002) (“[C]opying that is complementary to the copyrighted work (in the sense that nails are complements of hammers) is fair use, but copying that is a substitute for the copyrighted work (in the sense that nails are substitutes for pegs or screws), or for derivative works from the copyrighted work . . . is not fair use.”); L.A. Times v. Free Republic, 54 U.S.P.Q.2d (BNA) 1453, 1467 (C.D. Cal. 2000) (holding that the defendant’s wholesale copying of the plaintiff’s newspaper articles served as a substitute for the original material and was not a fair use). 144 BOCK & HARNICK, supra note 2. 145 17 U.S.C. § 102(a)(4) (2006). 146 See Gunderson, supra note 51, at 677. 147 2 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT § 2.03[A] (2011) (citing H.R. REP. NO. 94-1476, at 53 (“[t]he use of the word ‘include,’ as defined in section 101, makes clear that the listing is ‘illustrative and not limitative,’ and that the seven categories do not necessarily exhaust the scope of ‘original works of authorship’ that the bill is intended to protect.”). 148 Leichtman, supra note 92, at 701. 149 Livingston, supra note 33, at 442. 150 Leichtman, supra note 92, at 699. 151 For example, most ballets contain music without words, and the art of the mime is also



incorporate the playwright’s existing dialogue. Moreover, choreography is meant to be both noted and duplicated with extraordinary precision, as choreography is set to music, which accounts for strict timing.152 Staging, however, may not necessarily be notated or even copied so precisely, as staging is not always so restricted as choreography.153

As discussed in Part II, the fixation requirement is another obstacle to a finding of copyright protection for stage directions. Although many directors use prompt books, it is unclear whether the fixation in prompt books is properly authorized,154 as the director is hired to synthesize a live performance, but not always to fix his or her work in a tangible medium.155 While videotaping a live production would seem another solution, same is beyond the scope of the director’s authority and, thus, does not justify copyright registration by the director.156 If the director is not authorized to fix the work in tangible form, then the director cannot appropriately register the stage directions and claim ownership.157

Additionally, some opponents of protecting stage directions argue that the use of prompt books do not meet the fixation requirement outright because the director does not own the text upon which the stage directions are based.158 In Gutierrez v. Desantis,159 the director used a prompt book to record his stage directions, but a letter from the Copyright Office stated:

The copyright law protects the expression of an author fixed in any tangible form. With regard to stage directions, this expression will generally be in the form of literary authorship. Reference to “stage

done without speaking. 152 Loren J. Weber, Something in the Way She Moves: The Case for Applying Copyright Protection to Sports Moves, 23 COLUM.-VLA J.L. & ARTS 317, 356 (2000) (citing COMPENDIUM II OF COPYRIGHT OFFICE PRACTICES § 431 (1984)). 153 As choreography is set to music, much of its precision comes from adherence to the music and musical form. Staging, however, need not always be accompanied by music, and may not be so restricted. 154 This authority would likely come from the playwright and the contractual agreement surrounding the staged production. See infra text accompanying note 155. 155 Leichtman, supra note 92, at 691 (“[T]he dramatist’s grant of rights to the producer is normally quite limited and any rights terminate at the end of the contractually specified term. In addition . . . the producer is entitled only to present the work on the live stage. Thus, any attempt to register the entire performance . . . is beyond the scope of the producer’s grant of rights. Since the director is an employee of the producer, it is also beyond the scope of the grant for the director to do anything other than what is required in connection with the live performance.”). See generally O’Neill v. Gen. Film Co., 157 N.Y.S. 1028 (App. Div. 1916). 156 Leichtman, supra note 92, at 691. 157 Id. (“Thus, any attempt to register the entire performance or to prevent others from performing it is beyond the scope of the producer’s grant of rights.” (citing O’Neill, 157 N.Y.S. 1028)). 158 Talati, supra note 50, at 248 (“[F]ixation by prompt book is based on the underlying text of the play, which the director does not own.” (citing Freemal, supra note 53, at 1029)). 159 Complaint, Gutierrez v. Desantis, No. 95-1949 (S.D.N.Y. Mar. 22, 1995)); see discussion of this case supra Part I.D.



directions” in an application, however, does not imply any protection for a manner, style, or method of directing, or for the actions dictated by them. The authorship on the application in this case is “text of stage directions.” We understand this to represent a claim in the text.160

This statement is rather contradictory, indicating that the use of prompt books does not grant copyright protection to the actual stage directions, but rather to the text of the prompt book itself.161 This letter, while somewhat unclear, implies additional skepticism to stage directions meeting the fixation requirement of the Copyright Act. Nevertheless, the letter’s value is somewhat limited, as it does not purport to answer the question of how to protect stage directions.

B. The Work Made for Hire Doctrine

Aside from the problems stemming from the Copyright Act itself, opponents of copyright protection for stage directions point to another doctrine to thwart a finding of protection—the work made for hire doctrine.162 While certainly worth a brief exploration, ultimately this doctrine provides little insight into the stage direction conundrum. Rather, examining work made for hire leads to the conclusion that stage directions are more properly classified as derivative works.

Work made for hire doctrine states that in an employer-employee relationship, the employer is considered to be the author of a work prepared in such setting, unless the parties agree otherwise.163 This means that for the purposes of copyright law, an employee does not own a copyright in any work prepared for his or her employer. Furthermore, the courts have interpreted this provision in its application to the theater to mean that directors are employees of producers, rather than independent contractors.164 Thus, any work the director creates is work for hire, and, therefore, the director cannot own the copyright.

160 Letter from Joseph Miranda, Supervisory Examiner, Performing Arts Sec., U.S. Copyright Office, to Harold Orenstein, Attorney for Jo Loesser (June 22, 1995). 161 Yellin, supra note 59, at 328. 162 See supra text accompanying notes 78–81. 163 17 U.S.C. § 201(a)–(b) (2006) (“In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.”). 164 See Julien v. Soc’y of Stage Dirs. & Choreographers, Inc., 80 Lab. Cas. (CCH) ¶ 11,888 (S.D.N.Y. 1975), aff’d, 538 F.2d 310 (2d Cir. 1976); see also Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730 (1989) (adopting a common law agency approach to the work for hire analysis, and relying on cases decided under the labor laws); In re Studio Theater School Corp., 472 N.Y.S.2d 191 (App. Div. 1984) (finding that stage directors are employees under New York Unemployment Insurance law).



However, one proponent of copyright protection for stage directions notes that there may be instances where directors’ creative efforts exist outside the scope of the employment, such as contributions made before the typical ten-week period of rehearsals.165 Yet, this thin veil of protection usually will not leave a director much to own.166 Moreover, although a director may be an employee of the producer, and thus the producer should own any intellectual property contributed by directors, even the scope of the producer’s authority is limited, and ownership in stage directions could ultimately be placed back in the hands of the playwright through the derivative works doctrine.167

C. Problems Resulting from Expanded Copyright Protection

In addition to the statutory hindrances to finding copyright protection for stage directions, allowing such protection could also create a host of new legal and policy problems. For one, copyright protection in stage directions could stifle creativity. Allowing directors to secure a copyright would affect the way licensing fees are established for plays and musicals.168 If the original director of a production were to receive a portion of the royalty fees paid by theaters in producing a work, then either the parties presently owed royalties, such as the playwright and the composer, will receive a smaller fee in connection with a production, or licensing fees will increase altogether.169 If the playwright receives a smaller amount per production, then the playwright’s financial incentive to create new works is decreased.170 Furthermore, granting property rights in staging to directors limits the ability of a playwright to control his or her play, providing further disincentive to authorship of new plays.171

Production companies themselves will also feel these effects. If the total licensing fees owed to produce a play or musical are increased in order to account for the additional copyright holder, then regional theaters may decide to limit the number of productions undertaken to account for the increase in production cost.172 Furthermore, if the licensing of stage directions are separately obtained or added to a comprehensive licensing agreement at extra cost, a fear of litigation may push producers into paying royalty fees for the right to use the original

165 Leichtman, supra note 92, at 694–95 (citing Litman, supra note 91, at 322). 166 Id. 167 See discussion supra note 155; see also supra Part II.A. 168 Talati, supra note 50, at 256. 169 Id. 170 Id. 171 Gunderson, supra note 51, at 700–01. 172 Id.



stage directions, rather than allow the director to create new staging. Moreover, if producers are paying the fee to use the existing stage directions, producers may then force directors to use that staging, so as to get their money’s worth in licensing fees. Thus, the stifling of creativity comes full circle, with playwrights not wanting to produce new plays and producers and directors not wanting to disseminate and transform existing works.

Another problem created by allowing copyright protection for stage directions is the determination of who receives credit. Briefly returning to the derivative work and work made for hire doctrines, if copyright protection is allowed, the issue of ownership arises again. Arguments on both sides of the issue point to the possibility of ownership by either the producer or the playwright, but not the director.173 However, this question would most appropriately be resolved via contractual agreements between playwrights and producers, long before a director is hired and stage directions are fully formed.174

The more crucial problem is enforcement, particularly in collaboration of stage direction.175 While the concept of joint authorship has been applied to theater, it has typically been applied to instances involving more than one playwright176 rather than a director and a playwright, or multiple members of a production team.177 This question may arise if the finished staging includes contributions from other members of the production team, such as the playwright or producer. Additionally, the Copyright Act defines joint authorship as a piece prepared by two or more authors with the intention for the individual contributions to merge together.178 Courts will typically find that joint authorship exists only where both parties intended to be joint authors before beginning the collaboration.179 This may prove difficult for

173 See discussions supra Parts II.A, III.B. 174 Like other types of property, intellectual property may also be contracted away, with some limitations. See 17 U.S.C. § 201(d)(1) (2006) (“The ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law, and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession.”). Thus, the playwright might sell his or her copyright in any stage directions, owned via the derivative works doctrine, to the producer via contract. Assuming the contract is valid, a director would have no connection to this agreement. 175 See Gunderson, supra note 51, at 702. 176 Nevin, supra note 66, at 1543–44; see also Childress v. Taylor, 945 F.2d 500 (2d Cir. 1991). 177 See Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 1999) (holding that a religious and historical consultant on Spike Lee’s movie Malcom X was not a considered a joint-author, even though he contributed much to the final movie, including rewriting certain scenes). 178 17 U.S.C. § 101 (“A ‘joint work’ is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.”). 179 Nevin, supra note 66, at 1544; see also, e.g., Aalmuhammed, 202 F.3d at 1231; Thomson v. Larson, 147 F.3d 195, 202 (2d Cir. 1998); Childress, 945 F.2d at 504.



production teams, as a director, producer, and playwright are unlikely to agree at the outset to share credit for staging that has yet to be developed.180

Complicating things further is the Broadway revival. While a revival is a new production on the Broadway stage of an older play or musical, a revival may sometimes recycle creative elements such as stage directions.181 There is no way for the original production team to have intended collaboration with future revivals at the time of original staging, and therefore revival teams cannot be considered joint authors, despite their contributions to a staged production. Thus, if more than one party claims authorship of or contribution to the staging, allowing copyright protection in stage directions might increase the number of ownership disputes.182

Harkening back to the Copyright Act, which requires an original work of authorship,183 critics also worry that there are only so many ways to stage a work, and later productions may unintentionally infringe because there is nothing original remaining.184 This may result from external limitations, such as the basic architecture types of theaters,185 the limited number of stage positions an actor can take, and manners and locations in which scenery may be placed on the stage.186 Furthermore, some producers lease the original sets of a play or musical to defray the cost of building new sets, which limits the maximum creativity a director may have in staging a new production.187 Moreover, many scripts are highly specific in terms of the action and plot, and thus there may only be one way to stage a particular scene.188 These issues may result in scenarios where the first several directors to register their stage directions receive the bulk of the protection, and later directors either unintentionally infringe on the registered works or simply pay

180 Nevin, supra note 66, at 1544. 181 For example, the 2006 revival of A Chorus Line was staged very closely to the original 1975 Broadway production. Michael Bennett’s original choreography was recreated by Baayork Lee, a cast member in the original production, and the staging and costumes were essentially reproduced. Ben Brantley, From the Top: Five, Six, Seven, Eight!, N.Y. TIMES, Oct. 6, 2006, at E1 (“[T]he rest of the show feels recycled . . . to have it return more or less exactly as it was makes it feel like a vintage car that has been taken out of the garage, polished up and sent on the road once again.”). 182 This Note does not discuss collaborative efforts in great detail. For an in-depth examination of this issue, see generally Nevin, supra note 66. 183 17 U.S.C. § 102(a) (2006). 184 See Leichtman, supra note 92, at 709–13. 185 These types include proscenium stage, thrust stage, black box, arena, and amphitheater. Id. at 710. 186 Id. 187 Id. 188 Id. at 711–12; see also discussion of scène à faire doctrine in Part IV.A.



royalties out of fear that a litigious director will pursue the claim that the new work is similar enough to constitute infringement.189

IV. “YOU SHOULD HAVE STARTED LOOKING IN YOUR OWN BACK YARD”190—PROPOSED TEST FOR FINDING COPYRIGHT PROTECTION IN

STAGE DIRECTIONS

The law regarding copyright protection for stage direction remains unclear and there are persuasive arguments on both sides as to whether the law can or should afford copyright protection. The use of the prompt book arguably meets the fixation requirement,191 yet allowing copyright protection may result in numerous undesirable consequences.192 As such, it would be practical for courts to allow for copyright protection on a case-by-case basis. In order to do so, the courts must have a test to determine the instances in which stage directions should receive copyright protection. Any test implemented should seek to ensure that only the most deserving and truly original stage directions are afforded copyright protection.

A. Sound Recordings of Musical Arrangements and Orchestrations

In seeking an appropriate test, it is instructive to draw comparisons between stage directions and other subjects of copyright law. Two such parallel subjects are sound recordings of musical arrangements and musical orchestrations.

Under the Copyright Act, an author may obtain a copyright in a sound recording.193 However, the copyright in the sound recording is separate and distinct from the copyright in the underlying composition performed on that sound recording.194 Thus, a musician recording a cover or musical arrangement of a copyrighted song owns only the sound recording.195 The rights afforded to sound recordings are limited to exact copying196 and do not include any performance rights.197 A 189 This Note does not discuss the additional issue of substantial similarity and how a court would determine infringement in these cases. 190 CY COLEMAN & DAVID ZIPPEL, CITY OF ANGELS (Tams-Witmark Music Library, Inc. 1989). 191 See discussion supra Part II. 192 See discussion supra Part III. 193 17 U.S.C. § 101 (2006) (defining “sound recordings”); id. § 102(a)(7) (including sound recordings as a work of authorship). 194 See id. § 102(a) (listing musical works and sound recordings as separate categories of authorship). 195 This assumes the artist appropriately licenses the original song. See id. § 115. 196 Id. § 114(b) (“The exclusive right of the owner of copyright in a sound recording under clause (1) of section 106 is limited to the right to duplicate the sound recording in the form of



notable example of this limitation is legendary jazz musician John Coltrane’s famous recording of My Favorite Things,198 a jazz version of the Richard Rodgers and Oscar Hammerstein song from the musical The Sound of Music. As is common in jazz, Coltrane created his “own spontaneous composition[], borrowing the harmonic skeleton and parts of the melody”199 from the familiar tune. While Rogers and Hammerstein clearly own the underlying song, they also own Coltrane’s arrangement as a derivative work.200 This is true, despite the ingenious and transformative nature of Coltrane’s fourteen-minute arrangement of what is otherwise a short song.201 Coltrane owns202 only a copyright in the sound recording, and he cannot restrict other musicians from publicly performing his rendition.203

An orchestration, on the other hand, is not explicitly defined in the Copyright Act, but as a form of musical arrangement, it is likely considered a derivative work.204 The Collective Bargaining Agreement between The League of American Theatres & Producers, Inc. and Local 802 of the American Federation of Musicians defines orchestration “as the art of scoring the various voices of an already written composition complete in form.”205 Orchestration also involves the selection and combination of the instruments to be used in the score.206 Orchestrators, phonorecords or copies that directly or indirectly recapture the actual sounds fixed in the recording.”). 197 Id. § 114(a) (“The exclusive rights of the owner of copyright in a sound recording are limited to the rights specified by clauses (1), (2), (3) and (6) of section 106, and do not include any right of performance under section 106(4).”). 198 John Coltrane, My Favorite Things, on MY FAVORITE THINGS (Atlantic 1961); For a discussion of the song and the relevant legal issues, see Shourin Sen, The Denial of a General Performance Right in Sound Recordings: A Policy That Facilitates Our Democratic Civil Society?, 21 HARV. J. L. & TECH. 233, 234 (2007). 199 Note, Jazz Has Got Copyright Law and That Ain’t Good, 118 HARV. L. REV. 1940, 1942 (2005). 200 For a fuller discussion of derivative work doctrine, see supra Parts I.C, II.A. 201 Sen, supra note 198, at 234, 234 n.2 (citing Edward Strickland, What Coltrane Wanted: The Legendary Saxophonist Forsook Lyricism for the Quest for Ecstasy, ATLANTIC, Dec. 1987, at 100, 101). 202 As Coltrane died in 1967, his estate or other assignee would own any copyright in the sound recording. Atlantic Records might actually own the sound recording, depending on their contract, but this Note does not discuss the intricacies of the relationship between record labels and artists and battles over sound recording ownership. 203 Sen, supra note 198, at 234. 204 For an argument that musical theater orchestrations are not derivative works, but protected as original works of authorship under the Copyright Act, see Patrick T. Perkins, “Hey! What’s The Score?” Copyright in the Orchestrations of Broadway Musicals, 16 COLUM.-VLA J.L. & ARTS 475 (1992). 205 Id. at 477 (citing Collective Bargaining Agreement between The League of American Theaters & Producers, Inc. and Associated Musicians of Greater New York, Local 802, AFM, AFL-CIO expiration: Sept. 12, 1993)). 206 THE NEW HARVARD DICTIONARY OF MUSIC 575 (Don M. Randel ed., 10th ed. 2001) (defining orchestration as “[t]he art of employing instruments in various combinations, most notably the orchestra. Orchestration includes the concept of instrumentation—the study of the



however, find their roles to be much creative that the above definitions would imply.207 Accomplished Broadway orchestrator Jonathan Tunick has said that orchestrators do not merely assign notes to instruments to develop harmony and counterpoint,208 rather, they must interpret the composer’s intentions and typically compose the show’s overture and entr’acte.209

Like musical arrangements and orchestrations, stage directions are based on an original work and are meant as an element of the overall production to bring the play to life. Further, staging enhances the production. Just like a different arrangement or orchestration of a song can alter the feeling, sound, or mood of the original, so, too, can stage directions alter the heart of a play. However, in the context of this Note, the parallel to orchestration is not particularly useful in determining a test, as its protection, too, is disputed, and courts have yet to specifically address copyright protection in orchestration much in the same way the courts have failed to do so with staging.210 As to sound recordings of musical arrangements, the parallel is also of limited instruction because sound recordings receive no public performance rights, and a copyright afforded to staging is useless without a public performance right.211 Yet, a sound recording is afforded protection against exact recorded duplication,212 regardless of whether the musical arrangement is as brilliant and transformative as Coltrane’s My Favorite Things or is merely the umpteenth cover of Have Yourself A Merry Little Christmas213 by a contemporary recording artist.214 With stage properties and capabilities of individual instruments”). 207 Laurie Winer, Orchestrators Are Tired of Playing Second Fiddle, N.Y. TIMES, July 29, 1990, § 2, at 5. 208 Id. (“Most people think that we simply assign notes to instruments in the orchestra, from written music that already presupposes harmony and counterpoint, . . . [b]ut we are responsible for far more than that.”). 209 Id. (“We become the final arbiter of how the music is written, just as the musical director is responsible for how the music is performed. It’s the orchestrator who interprets the composer’s intentions, who deals with the copyists, and usually composes the overture and the entr’acte.”). 210 See generally Perkins, supra note 204. 211 Indeed, the whole function of stage direction is so that a performance of a play may exist. Without the performance, the use of staging is lost. For more information, see supra Part I. 212 17 U.S.C. § 114(b) (2006) (“The exclusive right of the owner of copyright in a sound recording under clause (1) of section 106 is limited to the right to duplicate the sound recording in the form of phonorecords or copies that directly or indirectly recapture the actual sounds fixed in the recording.”). 213 HUGH MARTIN & RALPH BLANE, HAVE YOURSELF A MERRY LITTLE CHRISTMAS (EMI Feist Catalog, Inc. 1944); Judy Garland, Have Yourself a Merry Little Christmas, on MEET ME IN ST. LOUIS (Decca Records 1944). 214 See, e.g., Frank Sinatra, Have Yourself a Merry Little Christmas, on A JOLLY CHRISTMAS (Capitol Records 1957); Barbra Streisand, Have Yourself a Merry Little Christmas, on A CHRISTMAS ALBUM (Columbia Records 1967); The Carpenters, Have Yourself a Merry Little Christmas, on CHRISTMAS PORTRAIT (A&M Records, Inc. 1978); Martina McBride, Have Yourself a Merry Little Christmas, on WHITE CHRISTMAS (RCA Nashville 1998); Christina



directions, protection against exact replication would be desirable,215 but protection for every set of stage directions, regardless of the level of nuance and novelty would not be desirable.216

B. The Fictional Character Tests

Because stage directions should not be protected in every instance, it seems logical to turn to a test the courts have already implemented in another area of intellectual property requiring similar boundaries—fictional characters. Like stage directions, fictional characters are introduced as a part of larger, protected written work. Issues have arisen as to whether a fictional character created by an author and used in an original work, such as a play, book, or screenplay, can receive its own copyright protection separate and apart from the work itself.217 This Note argues that in examining whether a particular set of stage directions should be afforded copyright protection, the court should apply the standards typically used by courts to determine whether a fictional character is protected outside of its original work.

The relationship between the characters and the works of fiction in which they appear is somewhat analogous to that between stage directions and the staged work itself, as both deal with smaller parts of a larger whole. In both instances, litigation arises when a party that is not the original author attempts to recreate some element of the original work in his or her own work.218 This type of dispute may involve an author using an existing fictional character to tell a different story. For example, Tom Stoppard’s play Rosencrantz and Guildenstern Are Dead219 tells the story of Shakespeare’s Hamlet220 from the perspective of the two minor and interchangeable characters Rosencrantz and Aguilera, Have Yourself a Merry Little Christmas, on MY KIND OF CHRISTMAS (SonyBMG 2000); Diana Krall, Have Yourself a Merry Little Christmas, on CHRISTMAS SONGS (Verve Records 2005); Christina Perri, Have Yourself a Merry Little Christmas, on A VERY MERRY PERRI CHRISTMAS (Atlantic Records 2012). This is a non-exhaustive list of recording artists covering the song, originally performed by Judy Garland in the 1944 MGM movie-musical Meet Me in St. Louis. 215 Once again, the reader is reminded that the purpose of this Note is not to address how to enforce copyright protection for stage directions, but rather when it would be appropriate to allow protection. 216 See discussion, supra, Part III.C for the policy concerns with unlimited stage direction protection. 217 Kathryn M. Foley, Note, Protecting Fictional Characters: Defining the Elusive Trademark-Copyright Divide, 41 CONN. L. REV. 921, 925–27 (2009). 218 See, e.g., Warner Bros. Entm’t, Inc. v. RDR Books, 575 F. Supp. 2d 513 (S.D.N.Y. 2008) (holding that the defendant’s attempt to publish a book called The Harry Potter Lexicon constituted copyright infringement). 219 TOM STOPPARD, ROSENCRANTZ AND GUILDENSTERN ARE DEAD (Samuel French, Inc. 1966). 220 WILLIAM SHAKESPEARE, HAMLET.



Guildenstern, using Hamlet as a setting and following the activities of these characters when they are not on stage.221 Stoppard is using two of Shakespeare’s characters to tell a different, yet somewhat related, story.

With reference to stage directions, in the Urinetown case, a Chicago production of Urinetown used the staging from the original Broadway production.222 There are also instances in which a particular set or method of staging is plucked from one show and transposed to another.223 With both staging and fictional characters, litigation arises when the original authors or creators seek copyright protection for a particular element of their original works as existing outside of the current work.224

As discussed earlier, the much stronger parallel to staging comes from either orchestration or sound recordings of musical arrangements. However, as neither provides a workable test, the fictional character test is a practical solution, despite the differences. Certainly a fictional character existing outside of the original work is far more marketable and perhaps valuable to an author than are stage directions, as evidenced by products and derivative works driven by works with prominent characters.225 However, as both staging and characters are parts to a greater whole, the fictional character standard is both workable and appropriate.

1. The Distinct Delineation Test

In determining whether a fictional character should be protected by copyright, the courts have come up with two different tests, the first of which is the distinct delineation test,226 which was formulated by Judge Learned Hand in Nichols v. Universal Pictures Corp.227 In Nichols, the plaintiff alleged that the defendant’s movie plagiarized the plot and

221 As Hamlet is in the public domain, and has been for quite some time, the issue of whether Stoppard infringed upon Shakespeare’s rights when he wrote the play is simply nonexistent. However, for an application of the standard of copyright protection for fictional characters to this play, see Matthew A. Kaplan, Note, Rosencrantz and Guildenstern Are Dead, but Are They Copyrightable?: Protection of Literary Characters with Respect to Secondary Works, 30 RUTGERS L.J. 817 (1999). 222 Mullen v. Soc’y of Stage Dirs. & Choreographers, No. 06 Civ. 6818, 2007 WL 2892654 (N.D. Ill. Sept. 30, 2007). 223 See the discussion of the recent Broadway revivals of Stephen Sondheim’s musicals Sweeney Todd, the Demon Barber of Fleet Street and Company, infra Part IV.D. 224 Otherwise, the author would just be attempting to prove plagiarism of the work itself, as a whole. 225 A good example of this marketability would be the toys, clothing, and spin-off television series depicting characters Buzz Lightyear and Woody following the film release of Toy Story in 1995. 226 Foley, supra note 217, at 927–28. 227 45 F.2d 119 (2d Cir. 1930).



characters from his play, Abie’s Irish Rose.228 Here and for the first time, Judge Hand established that a character could be copyrighted outside of the work itself.229 Judge Hand, arguably in an attempt to establish some sort of standard, wrote that “the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly.”230 Although Judge Hand refrained from referring to his analysis as a test or from using the phrase “distinct delineation,” the Nichols decision established that in order for a character to be subject to copyright protection, the character must be, at the very least, well-developed.231

Ten years later, in Detective Comics, Inc. v. Bruns Publications, Inc.,232 the Second Circuit applied the standard put forth by Judge Hand in Nichols.233 In that case, Detective Comics sought copyright protection for its character, Superman,234 as depicted in its monthly comics known as “Action Comics.”235 Detective Comics alleged that Bruns Publications’ comic “Wonderman” infringed236 on its Superman character.237 According to Detective Comics, the two characters were extremely similar, as both were impervious to bullets, had super-strength, and were able to leap from tall buildings.238 Furthermore, both characters claimed to be champions of the oppressed and battled “evil and injustice.”239 As far as appearance, both heroes appeared in “skintight acrobatic costume,” with Superman in blue and Wonderman in red.240 Despite the clear similarities, Bruns Publications argued that Superman was based on the Greek mythological character Hercules241

228 Id. at 121–22; Foley, supra note 217, at 927–28. Both stories involved Jewish and Catholic families and the children of those families marry. 229 Foley, supra note 217, at 927. 230 Nichols, 45 F.2d. at 121. 231 Id. 232 111 F.2d 432 (2d Cir. 1940). 233 Foley, supra note 217, at 928. 234 Superman was originally developed by Jerry Siegel and Joe Shuster in the early 1930s. In 1938, Siegel and Shuster sold the character to Detective Comics, Inc., and Superman first appeared in Action Comics #1 later that year. Oddly enough, although the plaintiff in this case is Detective Comics, Inc., the ownership of Superman became the subject of heavy litigation over the course of more than fifty years. LES DANIELS, DC COMICS: SIXTY YEARS OF THE WORLD’S FAVORITE COMIC BOOK HEROES 20–23 (1995). 235 Detective Comics, 111 F.2d at 433. 236 This Note does not discuss what constitutes infringement with respect to either fictional characters or stage directions, but rather what is protected. However, for more information on infringement, see 17 U.S.C. § 106 (2006). 237 Detective Comics, 111 F.2d at 433. 238 Id. 239 Id. 240 Id. 241 Hercules would not be the proper subject of copyright protection because he is a mythological figure. See Bissoon-Dath v. Sony Computer Entm’t Am., Inc., 694 F. Supp. 2d 1071, 1088 (N.D. Cal. 2010).



and, therefore, should not be subject to copyright protection.242 The court found that as long as Superman contained some elements of originality and he was not merely a “delineation of a benevolent Hercules,” the images and descriptions of Superman would be afforded copyright protection.243 The Second Circuit then held that Superman met the criteria for protection and that Wonderman was indeed infringing.244

Although the Second Circuit did not apply a particularly complex analysis in reaching its decision in this case, Detective Comics shows that there is no precise way to determine whether a literary character has reached the threshold of distinct delineation.245 Moreover, the distinct delineation test is a basic way of preventing a stock character, such as the generic French maid, the English butler, or the dimwitted side-kick best friend, from being protected by copyright law.246

Another similar and relevant doctrine is the scènes à faire doctrine,247 which Judge Leon R. Yankwich of the United States District Court for the Southern District of California248 described as “scenes which ‘must’ be done.”249 Like a stock character, a part of a visually depicted work deemed scènes à faire is not entitled copyright protection because it is commonplace.250 For example, Judge Yankwich noted that if a script calls for a girl to burn her hand on a cigarette, there must be some visual expression of the burn, which makes the expression of the burn scène à faire because the script requires it.251 Courts have found other examples of scènes à faire, such as scenes depicting stereotypical drunks, prostitutes, and beat-up cars appearing in a film portraying police work in a crime-ridden area.252 The same is true of depictions of a businessman about to commit suicide by jumping from a tall building in New York.253 These are all instances in which a scene is no longer original, but has become cliché. Therefore, these visual depictions are

242 Detective Comics, 111 F.2d at 433. 243 Id. 433–34 (“So far as the pictorial representations and verbal descriptions of ‘Superman’ are not a mere delineation of a benevolent Hercules, but embody an arrangement of incidents and literary expressions original with the author, they are proper subjects of copyright and susceptible of infringement because of the monopoly afforded by the [Copyright] act.”). 244 Id. 245 Foley, supra note 217, at 929. 246 Id. at 938. 247 Literally translated from French as “scenes for action.” Gaiman v. McFarlane, 360 F.3d 644, 659 (7th Cir. 2004). 248 Later he served in the Central District. 249 Schwarz v. Universal Pictures Co., 85 F. Supp. 270, 275 (S.D. Cal. 1945). 250 Gaiman, 360 F.3d at 659. 251 Schwarz, 85 F. Supp. at 275 (“[T]he ‘scene a faire’ in the present script is called for by the scene in which the girl burned her hand on a cigarette. Something had to be done with that burn, and the author uses it as a means of identification.”). 252 Walker v. Time Life Films, Inc., 784 F.2d 44, 50 (2d Cir. 1986). 253 Kaplan v. Stock Mkt. Photo Agency, Inc., 133 F. Supp. 2d 317, 323 (S.D.N.Y. 2001).



not entitled to copyright protection. Just as a stock character cannot be protected for failing to meet the distinct delineation test, stock scenes or stage directions do not meet the scènes à faire test because these instances offer no unique developments to warrant protection.

2. The Story Being Told Test

The other significant test used to determine whether a fictional character deserves copyright protection is the story being told test. In Warner Bros. Pictures, Inc. v. Columbia Broadcasting System, Inc.,254 the Ninth Circuit had to determine whether the characters of The Maltese Falcon,255 including detective Sam Spade,256 were subject to copyright protection outside of the work itself.257 In its analysis, the court developed a new standard, stating that “[i]t is conceivable that the character really constitutes the story being told, but if the character is only the chessman in the game of telling the story he is not within the area of the protection afforded by the copyright.”258 In other words, the court essentially asks whether the character is the one driving the story, or whether the character is only an element or vehicle used to tell the story. Ultimately, the court found that the character of Sam Spade did not meet the story being told test.259

The story being told test ensures that protection for fictional characters outside of their works is not handed out without proper caution. Additionally, this test is similar to that of the distinct delineation test, in terms of guaranteeing sufficient character development. If the character does not drive the story in some capacity, then how well-developed can the character be? Moreover, if the character is merely a means to tell the story (the “chessman”), rather than the story itself, it is unlikely that the character could exist outside of the work of fiction, thus eliminating the usual problem.

254 216 F.2d 945, 946 (9th Cir. 1954). 255 The actual dispute arose when Dashiell Hammett, the author of the book The Maltese Falcon, sold the rights to Warner Bros. for use of the book in movies, radio, and television. However, Hammett later assigned the rights to use the characters to CBS. Warner Bros., 216 F.2d at 946; Foley, supra note 217, at 929. 256 Sam Spade is the detective protagonist of Dashiell Hammett’s The Maltese Falcon and was portrayed most notably by Humphrey Bogart in the 1941 film of the same name. Hammett described Spade as one who “want[s] to be an erudite solver of riddles in the Sherlock Holmes manner; he wants to be a hard and shifty fellow, able to take care of himself in any situation, able to get the best of anybody he comes in contact with, whether criminal, innocent by-stander or client.” Robert Polito, Introduction to DASHIELL HAMMETT, THE MALTESE FALCON, THE THIN MAN, RED HARVEST, at xxvi (Everyman’s Library 2000). 257 Warner Bros., 216 F.2d at 950. 258 Id. 259 Foley, supra note 217, at 929 (citing Warner Bros., 216 F.2d at 950).



While arguably a decent test, the story being told test has been criticized for its restrictiveness260 and has often been considered overruled by later cases.261 In Gaiman v. McFarlane,262 Judge Richard Posner wrote that the decision denying copyright protection to the character of Sam Spade in Warner Bros. was incorrect and instead utilized a test reminiscent of the earlier form of the distinct delineation test from Nichols.263 Judge Posner also noted that even if Warner Bros. had been binding264 case law, the Ninth Circuit had already quashed the story being told test through its decision in Olson v. National Broadcasting Co., Inc.265 In Olson, the Ninth Circuit reasoned that the story being told test might be dicta and failed to apply this test in a similar case of potential copyright protection for fictional characters.266 Both Gaiman and Olson are somewhat symbolic of the move away from the story being told test, and, perhaps, are further illustrative of the unsettled nature of copyright of fictional characters.267 Additionally, in Siegel v. Time Warner Inc.268 the court failed to mention the story being told test, but referred to the level of development present in the character, citing both Nichols and Detective Comics. The story being told test has never been officially overruled, and despite its lackluster presence in character copyright litigation, this test provides at least one way of adjudicating these cases.269

C. The Parallel to Staging

Both the distinct delineation and the story being told tests require fact-specific inquiries for determining when a work’s characters will receive copyright protection. This is relevant to the issue of copyright for stage directions, as this, too, is a legal determination that should be based on a fact-specific test rather than a bright-line rule. For example, a stage production that consists merely of the stage directions written into the script by the playwright and scènes à faire might not contain any protectable staging.270 However, if a director abandons convention or 260 3 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT § 9.12 (1990). 261 See Gaiman v. McFarlane, 360 F.3d 644, 660 (7th Cir. 2004); Walt Disney Prods. v. Air Pirates, 581 F.2d 751, 754–55 (9th Cir. 1978). 262 Gaiman, 360 F.3d at 660. 263 Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930). 264 As Gaiman was heard in the Seventh Circuit and Warner Bros. was decided in the Ninth Circuit, the Warner Bros. holding was not binding, but rather persuasive case law. 265 855 F.2d 1446 (9th Cir. 1988). 266 Id. 267 Foley, supra note 217, at 932. 268 496 F. Supp. 2d 1111 (C.D. Cal. 2007). 269 Foley, supra note 217, at 932. 270 Any directions written in by the playwright would not be protected outside of the play itself, as a director staging the play would not have contributed a work of original authorship, as



ignores playwright-given directions and creates an entirely new spin on an old play, then those stage directions should be afforded copyright protection.

In analyzing a fictional character through the distinct delineation test, one is forced to look at the attributes and characteristics of the character out of context of the overall work. This is as if to say, one must pluck out the character, as a single element of the work of fiction, and examine it under a microscope. Using the character Superman as an example, in order to examine Superman, one removes him from the larger work, in this instance the comic issues in which he appears, and examines his defining qualities. One may isolate his incredible speed, his ability to leap from tall buildings, and his acrobatic or strongman clothing.271 In examining stage directions, one can isolate the stage directions from the overall work, but not entirely from the script, and determine their makeup and how delineation.

In its application to stage directions, the story being told test, however, does not prove to be helpful. With the character Superman, one must attempt to pluck Superman from his existing scenario and determine who is driving the work—the character or other elements. In doing so, one finds that Superman can be removed from one storyline and easily placed into another. Furthermore, removing Superman from the story leaves an empty plot, as the reader can no longer enjoy a story of a superhero fighting evil. With stage directions, one would need to pluck out the staging and ascertain if the staging drives the production. The answer to this question, though, will always be no. While possible to pluck a set of stage directions from one production and transpose them to another, the fact remains that when the stage directions are taken away from a production, the audience still understands the play. While it is possible to have staging that changes an audience’s interpretation of a particular play,272 the underlying script and score anchor the production. A production without staging is merely a reading, which is often the entire first rehearsal for a production.273 Yet, that reading still enables an audience to understand the work. As such, the story being told test is inapplicable to stage directions.

required by the Copyright Act. 17 U.S.C. § 102 (2006). 271 Detective Comics, Inc. v. Bruns Publ’ns, Inc., 111 F.2d 432, 433 (2d Cir. 1940). 272 See the discussion of the 2009 Broadway production of Samuel Beckett’s Waiting for Godot infra Part IV.D. 273 BROCKETT, supra note 29, at 522–23. A reading may also be an opportunity for new plays to be heard before being staged.



D. Application and Result

As the story being told test does not apply to stage directions, this Note argues that in order to receive copyright protection, stage directions must satisfy the distinct delineation test. Furthermore, as courts have trended away from using the story being told test,274 the distinct delineation test seems the more logical choice.

An example of the application of the distinct delineation test to stage directions is the 2005 revival of the Stephen Sondheim musical Sweeney Todd, the Demon Barber of Fleet Street,275 directed by John Doyle. Sweeney Todd, which first opened on Broadway in 1979, tells the story of a barber who escapes prison and returns to his hometown of London to seek revenge on the corrupt authorities who sent him to prison on false charges in order to take advantage of his wife.276 The barber befriends the owner of a meat-pie shop, and as the barber seeks his vengeance on his enemies, the barber and pie shop owner go into business together with the barber slitting the throats of the men who come into his barbershop and the pie shop owner baking their remains into meat pies.277 This musical of vengeance and cannibalism ends not only with the deaths of the corrupt parties responsible for the barber’s plight, but also with the deaths of the shop owner and the barber, leaving all characters guilty of some crime vanquished.278

The 2005 revival of Sweeney Todd, however, was unlike any previous Broadway production of the musical, as the director, John Doyle, staged the production without a full orchestra and instead required the actors to play their own instruments.279 In having the actors play their own instruments, Doyle transformed a well-known and twice-before-revived musical into an entirely new experience. Ben Brantley, theater critic for the New York Times, described the new staging as pulling the audience in “claustrophobically close” and allowing their ears to hear Sondheim’s music differently than the previous productions.280 As the actors played their own instruments, the use of scenery and props were not as substantive as in previous productions; Doyle instead used props more sparingly and the staging was heavily symbolic.281 274 See discussion supra Part IV.C. 275 STEPHEN SONDHEIM, SWEENEY TODD: THE DEMON BARBER OF FLEET STREET (Music Theater Int’l 1978). 276 Id. 277 Id. 278 Id. 279 See Ben Brantley, Grand Guignol, Spare and Stark, N.Y. TIMES, Nov. 4, 2005, at E1. 280 Id. 281 For example, the script calls for Sweeney to have a special chair that drops Sweeney’s victims through the floor and directly into the bake house for the pie shop. In the 2005,



Here, the application of the distinct delineation test is fairly straightforward. Doyle’s staging can be described as having actors play their own instruments and using lighting and prop tactics, rather than watching only the actors interact with each other. The overall concept may be fairly simple, but the implementation of this theme involved multiple other developments, which include the careful use of props and lighting. This staging, indeed, constitutes an original work of authorship, as having actors play their own instruments in a musical had not been done previously on the Broadway stage, and never with Sweeney Todd. The script does not call for the actors to play their own instruments, so there was no question that Doyle’s staging was not given to him by the playwright.282 Moreover, as there was no script-driven reason for the actors to play their own instruments, Doyle’s staging is not classified as scène à faire. Additionally, actors who played woodwind, reed, or brass instruments, such as the flute, clarinet, or trumpet, would not play their instruments while singing, as doing so would be impossible. During that time, as well as during dialogue, the actors would move about the stage and interact with each other, as blocked by Doyle. Thus, Doyle’s staging of Sweeney Todd, as a whole, meets the distinct delineation test and should be granted protection under this standard.

In 2006, after the success of his Sweeney Todd revival, Doyle staged a revival of another Stephen Sondheim musical, Company.283 Company tells the story of Bobby, the perpetual bachelor whose married friends constantly badger him on the subject of marriage.284 The musical is presented in a series of vignettes in which Bobby observes the problems and joys his married friends experience and reflects on his own relationships with woman and his inability to commit to monogamy.285 There is no linear plot, although the events seem to surround Bobby’s thirty-fifth birthday.286 In this new production, Doyle lifted the “I-am-my-own-orchestra”287 approach taken in Sweeney Todd and carefully applied it to Company. As with Sweeney Todd, this production of Company received rave reviews.288 However, despite the similar

production, Sweeney carries around a white coffin during the second act and the depiction of the blood and gore of slitting throats is mostly done through red lighting and buckets of red liquid. Brantley, supra note 279. 282 SONDHEIM, supra note 275. 283 STEPHEN SONDHEIM, COMPANY (Tams-Witmark Music Library, Inc. 1970). The musical opened on Broadway in 1970 and was twice revived on Broadway in 1995 and 2006. STEPHEN SONDHEIM, FINISHING THE HAT: COLLECTED LYRICS (1954–1981) 166, 186 (2010). 284 SONDHEIM, supra note 283. 285 Id. 286 Id. 287 Ben Brantley, A Revival Whose Surface of Tundra Conceals a Volcano, N.Y. TIMES, Nov. 30, 2006, at E1. 288 Both revivals won Drama Desk Awards for best revival of a musical. Company also won a



thematic staging, the production of Company was not merely a replication of the Sweeney Todd staging, nor could it be, as the two shows are entirely different. For example, although the characters played their own instruments, the main character Bobby refuses to play an instrument until the very last scene, the climactic song “Being Alive,” in which Bobby comes to realize that perhaps he does not want to play solo all his life.289 For Bobby’s married friends, Doyle has each couple play musical duets throughout the show.290 This is particularly prominent in the opening number of the second act where each couple duets in a short call and response form.291 In this respect, the use of instruments is specific to particular characters and scenes, as well as used as a symbolic device. Additionally, like Sweeney Todd, the playwright did not specify the use of instruments, nor did the script call for such instruments. As such, Doyle’s staging in Company also meets the distinct delineation test.

Another example of this type of thematic staging is the 2011 Punchdrunk292 production of Sleep No More,293 a retelling of William Shakespeare’s Macbeth.294 In this new spin on an old classic, the production is set in a hotel, and instead of sitting in a chair and watching the actors on a static stage in front of the audience, the story unfolds with scenes occurring simultaneously in various locations throughout the hotel.295 The audience must decide where to go to find the action, including pursuing a particular character or rifling through props, thus bringing an entirely new definition to the phrase “audience participation.” The concept is that the audience must work or participate in order to see the entire story of MacBeth; in order to do so, audience members must choose wisely in terms of where in the hotel to roam and which characters to follow closely.296 Like John Doyle’s Company, Sleep No More is not the first production to enlist a particular, thematic patter. Punchdrunk began this type of staging in 2000 with its production of The Cherry Orchard297 and has produced numerous Tony Award for best revival of a musical. Company—Awards, INTERNET BROADWAY DATABASE, http://ibdb.com/production.php?id=423555 (last visited Feb. 11, 2013); Sweeney Todd: The Demon Barber of Fleet Street—Awards, INTERNET BROADWAY DATABASE, http://ibdb.com/production.php?id=400379 (last visited Feb. 11, 2013). 289 Brantley, supra note 287. 290 Id. 291 Alternation between two performers. THE NEW HARVARD DICTIONARY OF MUSIC, supra note 206, at 124 (Often the second phrase is a response or commentary on the first.). 292 Punchdrunk is a British theater company that utilizes “immersive” presentation in which the audience is free to choose what to watch and where to go. PUNCHDRUNK, http://www.punchdrunk.com (last visited Mar. 26, 2013). 293 EMURSIVE & PUNCHDRUNK, SLEEP NO MORE (Punchdrunk Prod. 2011). 294 WILLIAM SHAKESPEARE, MACBETH. 295 Ben Brantley, Shakespeare Slept Here, Albeit Fitfully, N.Y. TIMES, Apr. 14, 2011, at C1. 296 Id. 297 ANTON CHEKHOV, THE CHERRY ORCHARD (Stanley Appelbaum ed., Dover Thrift Eds.



productions in this style of interactive theater, including renditions of Shakespeare’s A Midsummer Night’s Dream298 and The Tempest.299 As with Doyle’s innovative staging of actors playing instruments, so, too, Punchdrunk productions involve a specific set of stage directions that drive a new production of an older play. As such, any company attempting to revive this show through interactive theater, a concept created by Punchdrunk, should have to acknowledge their creation or innovation by paying royalties.

A final example of the type of staging that should pass the distinct delineation test and be awarded copyright protection is the 2009 Broadway production of Samuel Beckett’s Waiting for Godot.300 The plot of this esoteric and absurdist play is quite simple—two men waiting aimlessly for someone named Godot to appear. The oft-performed play has been vastly interpreted,301 likely because the script itself is vague dialogue with few staging indications and a minimalist set.302 The 2009 Broadway production, directed by Anthony Page, is one of many varying interpretations of the work, and one of its most notable features is the use of humor.303 Because this particular play lends itself to differing interpretations of the script, any director who is not merely restaging a previous version of the play will ultimately achieve an original work of authorship.304 Moreover, given the lack of script-driven stage directions, an originally directed production would pass the distinct delineation test, so long as the staging is sufficiently developed and not mere scène à faire. Additionally, as the play itself is open to varying interpretations in reading it, the way in which a director chooses to stage the play drives the meaning the audience extracts from it. In Page’s production, one could leave the theater feeling that the two main characters are heroes instead of pathetic souls.305 Page’s production utilized physical comedy and precise comedic timing,306 directing choices that were absent in earlier productions but that serve as the overall driving force behind the production.

1991) (1904). 298 WILLIAM SHAKESPEARE, A MIDSUMMER NIGHT’S DREAM. 299 WILLIAM SHAKESPEARE, THE TEMPEST. 300 SAMUEL BECKETT, WAITING FOR GODOT (Samuel Beckett trans., Grove Press 1982) (1952). 301 Interpretations include political, religious, psychological, and philosophical. 302 The script calls for a tree and a mound or dirt or rock upon which one character sits. BECKETT, supra note 300, at 1. 303 Ben Brantley, Tramps for Eternity, N.Y. TIMES, May 1, 2009, at C1. 304 17 U.S.C. § 102(a) (2006). 305 Brantley, supra note 303. 306 Id. (“I can’t recall another “Godot” that passed so quickly or that felt so assured in its comic timing.”).



CONCLUSION: “BUT ONLY FOR NOW . . .”307

Theater thrives on the creativity of all those it touches, both in the invention of the new and the transformation of the existing. However, a love of art is not always enough, and the law must ensure that it does not stifle artistic development by providing disincentives to progress. Copyright protection already exists in the theater, providing both recognition and financial gain for creative minds. Extending this same right to other crucial elements in the theater, specifically stage directions, is only logical, but like most areas of the law, requires limitations.

While a broad reading of the Copyright Act and consideration of the prompt book suggest existing protection for stage directions, opponents of this protection point to numerous negative implications of allowing such protection. With compelling arguments on both sides of the issue and with no legal precedent, the courts must develop a test for granting copyright protections to stage directions. While an entirely new test can be created, a functional test already exists that allows the awarding of copyright protection to stage directions in a manner consistent with the purpose of copyright protection. The use of the distinct delineation test protects against the possibility of generic and unoriginal staging being awarded protection and stifling creativity.

Ultimately, allowing copyright protection for stage directions and the application of the distinct delineation test do not end the inquiry surrounding this broad legal topic. The question of ownership is still debatable, and it may leave directors at odds with both producers and playwrights. Furthermore, the issue of implementation may lead to the development of new licensing agreements within the theater industry that replace the current trend. Regardless, allowing copyright protection for stage directions and determining when to grant such protection is the starting point to rewarding this creativity.

307 ROBERT LOPEZ & JEFF MARX, AVENUE Q (Music Theater Int’l 2003).

Documents

“every move that she makes”*:copyright protection for stage