Erickson v. Trinity Theatre, Inc.

Decision Date06 January 1994
Docket NumberNo. 92-3598,92-3598
Citation13 F.3d 1061
Parties, 1994 Copr.L.Dec. P 27,197, 29 U.S.P.Q.2d 1347 Karen L. ERICKSON, Plaintiff-Appellee, v. TRINITY THEATRE, INC., individually and d/b/a Trinity Square Ensemble, et al., Defendants-Appellants.
CourtU.S. Court of Appeals — Seventh Circuit

Patricia A. Felch (argued), Artslaw Offices of Patricia A. Felch and Terence E. Flynn, Gessler, Flynn, Fleischmann, Chicago, IL, for plaintiff-appellee.

David R. Herzog, Layfer, Cohen & Handelsman and Thomas I. Ross (argued), Hill, Steadman & Simpson, Chicago, IL, for defendants-appellants.

Before RONEY, * COFFEY, and RIPPLE, Circuit Judges.

RIPPLE, Circuit Judge.

The plaintiff Karen Erickson brought this action seeking a preliminary and permanent injunction to prevent the defendant Trinity Theatre d/b/a/ Trinity Square Ensemble ("Trinity") from performing three plays and using two videotapes to which she owned the copyrights. The magistrate judge recommended enjoining the performance of the plays but not the use of the videotapes. Both parties filed objections. The district court sustained Ms. Erickson's objections to the portions of the recommendation addressing the videotapes but denied Trinity's objections to the portion of the recommendation addressing performance of the plays. Accordingly, the district court enjoined Trinity from using either the plays or the videotapes. Trinity now appeals. We now affirm.

I BACKGROUND
A. Facts 1

Ms. Erickson was one of the founders of a theatre company in Evanston, Illinois, that ultimately became known as Trinity Theatre. Between 1981 and January 1991, Ms. Erickson served Trinity in various capacities: as playwright, artistic director, actress, play director, business manager, and member of the board of directors. This suit revolves around Ms. Erickson's role as playwright.

At issue here are the rights to three plays: Much Ado About Shakespeare ("Much Ado"); The Theatre Time Machine ("Time Machine"); and Prairie Voices: Tales from Illinois ("Prairie Voices"). Much Ado is a compilation of scenes and sonnets from William Shakespeare and other writers of his time. Ms. Erickson revised this work from an earlier script entitled Sounds and Sweet Aires. Michael Osborne, a Trinity actor, testified that Ms. Erickson compiled Much Ado in 1988 and that many decisions about what was to be included were made during rehearsals. Osborne identified two portions of the copyrighted script that resulted from his suggestions: a passage to Macbeth and the Time Machine is a play of five scenes based on a public domain Native American folk tale. Each scene depicts dramatic styles from different historical periods. Ms. Erickson received a copyright registration for Time Machine on September 12, 1988. She described the development of the play as beginning in 1977 when she was in school. At that time, she wrote the Greek-style drama scene. Later, while teaching high school drama, she wrote the second scene based on commedia dell'arte. She also began work on the melodrama and improvisational scenes of the play at that time. Ms. Erickson started producing the play independently of Trinity in 1984 with two other actors, Paddy Lynn and Will Clinger. Ms. Erickson claimed that she worked to develop the scenes alone; however, the evidence shows that the actors were involved in the development of the melodrama and improvisational scenes. The improvisational process, as described by Ms. Lynn, is a form of theatre in which there is no script. Rather, actors work with an idea and a loose structure to create a play. Ms. Lynn described the development of the improvisational scene in Time Machine as a collaborative effort. However, she conceded that Ms. Erickson took all of the notes from rehearsals and compiled them into the script; furthermore, nothing was included in the script without Ms. Erickson's approval. Initially, Ms. Erickson attributed the script to both herself and to Ms. Lynn. Ms. Lynn also received royalties for performances of the play. Ms. Erickson denied that she ever intended to include Ms. Lynn as joint author. She conceded that Ms. Lynn was credited on publicity materials as an author but denied that she approved such credit. The later change in attribution, Ms. Erickson claims, merely corrected the initial error.

introduction to the play. The editing of the text, Osborne continued, was accomplished largely by consensus; however, when a consensus could not be had, Ms. Erickson made the final decisions. Osborne further testified that he understood at the time that the play was being created for Trinity and not for Ms. Erickson. Ms. Erickson does not dispute the process described by Osborne, but characterizes it differently. She perceived the process only as actors making suggestions for her script.

In 1990, Ms. Erickson developed Prairie Voices, a play based on tales from Illinois history. She had the idea to develop the play as a Trinity production. Her original intent was to launch a collaborative effort in which each of the actors would contribute a story to the play. However, none of the actors initiated writing a script and the play, as it resulted, was based entirely on tales provided by Ms. Erickson. As with Time Machine, Ms. Erickson worked with the actors in the improvisational format. Although testifying that she alone wrote the play, Ms. Erickson admitted that the actors provided ideas for the dialogue. Another actor, Ruth Ann Weyna, testified that the writing of the play was a creative process involving a number of actors. However, she conceded that Ms. Erickson controlled what eventually was put in the script.

In 1987, Trinity began paying Ms. Erickson royalties for its performances of her plays. On July 5, 1988, Ms. Erickson entered into a two-year licensing agreement with Trinity that designated her as a "playwright" entitling her to royalties for performances of two of her plays, Much Ado and Time Machine. Trinity stipulated that it also paid Erickson royalties for its performances of Prairie Voices, although that play was not expressly covered by the licensing agreement. Trinity continued to pay Ms. Erickson royalties after the expiration of the licensing agreement. Trinity discontinued making royalty payments on November 15, 1990.

Ms. Erickson was also subject to an actors' agreement with Trinity. In July 1988, Ms. Erickson signed the agreement which stated: "The actor expressly agrees that Trinity reserves the rights to any recording, audio, video or both of the Production...." The contract covered the tour which was forecast to run through June 30, 1989.

Ms. Erickson left Trinity Theatre in January 1991. Shortly thereafter, she applied for and was issued copyright registration for Much Ado and Prairie Voices. Concurrently, she received registration for the video productions of Time Machine, taped in October On April 3, 1991, Ms. Erickson filed a seventeen-count complaint against Trinity Theatre, members of Trinity's management, and individual Trinity actors seeking injunctive and legal relief in which she alleged copyright infringement, unfair competition, and other related tortious activity. In October 1992, Ms. Erickson filed a motion for a preliminary injunction to prevent the defendant from producing or performing five plays for which Ms. Erickson claimed exclusive copyright ownership, from displaying videotapes, photographs, and brochures regarding these plays, and from reproducing any materials from a copyrighted work entitled "Drama/Learning Process." After a partial settlement agreement, the parties stipulated that the district court did not need to resolve the plaintiff's request for injunctive relief as to two of the five plays. As a result, the only plays at issue for purposes of the plaintiff's motion for preliminary injunction were Time Machine, Much Ado, and Prairie Voices, as well as videotapes of Time Machine and Prairie Voices.

1989, and Prairie Voices, taped in November 1990. She had previously obtained a copyright certificate for Time Machine on September 12, 1988. On January 21, 1991, Ms. Erickson's attorneys wrote Trinity a letter demanding that the theatre discontinue performing the plaintiff's plays. Trinity refused to comply with the request.

B. Prior Proceedings
1.

The magistrate judge reviewed the elements necessary to issue a preliminary injunction but focused her analysis, by agreement of the parties, on the likelihood of success on the merits.

The magistrate judge briefly reviewed the elements of copyright infringement. Because a valid copyright registration had been made within the requisite time, the burden would be on Trinity to show the invalidity of the registration. See Rand McNally & Co. v. Fleet Management Sys. Inc., 591 F.Supp. 726, 737 (N.D.Ill.1983). It could either demonstrate that the material was copied from another source or dispute the authorship of the material itself. In this case, continued the magistrate judge, Trinity challenged the authorship itself. Trinity claimed that several of its members were joint authors of the three plays with Ms. Erickson, that these joint authors gave Trinity the right to produce the plays, and therefore that Trinity and its member joint authors share rights to the plays and videotapes.

The magistrate judge was faced with an issue of first impression in this circuit: establishing the appropriate test for determining whether a work has been prepared as a "joint work" within the meaning of Sec. 101 of the Copyright Act of 1976, 17 U.S.C. Sec. 101 (1988). 2 The parties suggested different approaches. Trinity maintained that the standard for determining a joint work is "collaboration alone"; because there was collaboration between Ms. Erickson and its members, its members jointly authored the three plays at issue and share rights to their use and production. Ms. Erickson contended that the appropriate test for a joint work is the ...

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