Wednesday, August 03, 2011

What Edward Einhorn did to my play TAM LIN and why all American authors should be concerned - part 4

As soon as we fired him, Edward Einhorn immediately got his brother David to concoct the following letter which was delivered by hand to me the day of our opening:

Dear Mr. Flagg and Ms. McClernan:

We serve as intellectual property counsel to Edward Einhorn("Einhorn") and we write to you regarding Einhorn's direction of the play TAM LIN ("Play").

Pursuant to a valid and enforceable contract between yourselves and Einhorn, Einhorn provided his skill and expertise as a director and his services of providing blocking and choreography for performance of the Play. You have also used his name, and therefore his renown, in press releases and publicity material. Please be advised that Einhorn is the absolute owner of copyright in the blocking and choreography of this performance in and to all rights of publicity associated with his name.

Our client does not consent to your continued production and staging of the Play, which uses his blocking and choreography, unless this matter is settled before the Play is scheduled to open this evening. You are put on notice that your performances of the Play are in willful infringement of copyright in and to the blocking and choreography owned by Einhorn. Our client is willing to grant you a license to use his blocking and choreography for this run only if you will pay him $2,000 (two thousand) before the opening of the show today, in settlement of this dispute. It is made clear, however, that even if this amount is paid to Einhorn today, you will not be accorded the right to use hiis choreography and blocking in future productions of the Play absent further negotiations with Einhorn.

Failure to provide this payment to Einhorn will subject you to liability for willful infringement of Einhorn's copyright in and to the blocking and choreography. You are put on notice that (in accordance with 17 U.S.C. 504c(2)) if this run continues without his permission, you may be liable for statutory damages of up to $150,000 (one hundred and fifty thousand) per performance of the Play and for all of Einhorn's attorney's fees. You are put on further notice that further performances of the Play using our client's blocking and choreography may render you liable for criminal copyright infringement under 17 U.S.C. 506 and 18 U.S.C 2319

Very truly yours,

David A. Einhorn

Scan of the original cease and desist letter: Page 1, Page 2

There are many items of interest in the cease and desist letter:

  • From the second paragraph: "You have also used his name, and therefore his renown, in press releases and publicity material" - you have to love Einhorn's sense of self-importance reflected in this line. He also presented newspaper clippings of reviews as an exhibit for his case - causing the judge to ask "since when are newspaper clippings evidence?"

  • We originally advertised the director position for $500. Einhorn persuaded us to raise it to $1000 (one of his ideas was to take money we planned to give to actors and give to him because actors are "happy" to work for free.) 

    Now the Einhorn brothers are saying we owed them $2000, which is what prompted the judge to say during the trial: 

    JUDGE KAPLAN: So this was a hold-up straight and simple, right?

    EINHORN: No of course not.

    JUDGE KAPLAN: You went to your brother, the lawyer, who was representing you for nothing to send a demand letter saying pay me $2000 or the show can't go on. That's the sum and substance of your case, isn't it?

  • The Einhorns deliberately conflate two separate issues into one in this cease and desist letter - Einhorn's work-for-hire payment as a director and Einhorn's so-called "blocking and choreography" copyright and licensing monies the Einhorns claim we owe them every time we perform TAM LIN.

    This immediately complicated negations over Einhorn's director's fee. Jonathan intended to pay Einhorn $500. I wanted him to pay the full amount but Jonathan was the money in this situation and felt Einhorn didn't deserve the full amount. But if we were to pay Einhorn any amount at this point, it would be as though we agreed that Einhorn held a copyright on my play. Without the copyright issue this would have been a simple small-claims court issue over $1000. Einhorn, in the words of the Judge Kaplan "made a federal case" out of it.

    Some have suggested that this whole thing would have gone away if we had paid Einhorn $1000 - but we don't know that for sure. I would not be at all surprised if he planned to file an unauthorized derivative copyright on my play no matter what we paid him, purely out of spite. He makes it clear on his web site that he believes in the cause of a director's copyright.

    No, we don't know at all for sure that the solution to the Edward Einhorn problem would have been simply to pay him $1000.

  • Einhorn claims his copyright is for blocking and choreography. The sum and total of his "choreography" was to direct actors to perform, as the script requires, "a few dance steps" - this is not meant to be an actual dance but to give two characters a moment together. And one of the characters admits he can't dance at all - so he wouldn't suddenly break into an actual dance.

    Einhorn further claimed that he created "choreography" because in an email to him I had said that I wanted to see the big magic scene "choreographed" - which was merely a figure of speech I used to indicate I wanted the scene to be timed with music - I clearly did not intend for there to be dancing. It would be as if I had said to a set designer that I wanted them to "architect" a solution and then have the designer turn around and claim that I hired them as an actual architect.

    And in any case, Einhorn, as usual, didn't do as I asked and there was no timing with music of the big magic scene anyway.

  • More seriously, in the "cease and desist" letter David Einhorn suggested that we might be charged with "criminal" infringement. The judge called him on it during the trial, remarking (bold emphasis mine)
    Truly, one of the sad parts of this whole mess, as luck would have it, is that Mr. Einhorn's brother, Mr. David Einhorn, is a lawyer who, I take it, regards himself as an intellectual property specialist. So, the brothers got together and what is labeled a cease and desist letter was prepared on the letterhead of a well-known firm in this city in which the claim was made, on behalf of Mr. Edward Einhorn, that any performance of the play would constitute a willful infringement of copyrighting; and two, the blocking and choreography owned by Edward Einhorn, the offer to grant a license to the production company for the eight scheduled performances only if $2,000 -- double the agreed compensation -- were paid before the show opened the day the letter was written. Moreover, it indicated that if the defendants ever wished to perform the play after this currently scheduled run, they would have to pay more. It concludes with this paragraph: Failure to provide this payment to Einhorn -- meaning Edward -- will subject you to liability for willful infringement of Einhorn copyrighting and to the blocking and choreography. You are put on notice that in accordance with 17, U.S. Code, Section 504(c)(2), if this run continues without his permission, you may be liable for statutory damages of up to $150,000 per performance of the play and for all of Einhorn's attorneys' fees. You are put on further notice that further performances of the play using our client's blocking and choreography may render you liable for criminal copyright infringement under 17, U.S. Code, Section 506 and 18, U.S. Code, Section 2319.
    Now, once again I digress and make two parenthetical remarks about this letter. The first is that it bears the date October 22, which was the day after the show opened. In fact, I find that it was written, as distinguished from delivered, on October 21st, indeed, in all likelihood, shortly after Edward Einhorn got finished sending his e-mail to the cast of the show in an effort to upset the opening. The second parenthetical comment I would make, and it is parenthetical only because it is not to the point of a decision but to the conduct of Mr. David Einhorn, it is a violation of Disciplinary Rule 7-105 of the Code of Professional Responsibility in the State of New York for an attorney to threaten criminal prosecution to gain advantage in a civil dispute. I think it is at least arguable that David Einhorn's inclusion of the last line of the letter constituted a violation of the disciplinary rules. I will not render any final decision on that now. It is not my place to do that now or later. But, surely good judgment had been dispatched with long before this letter went out of the office of Mr. David Einhorn, even if it didn't go so far as to violate the disciplinary rules.

    Apparently David Einhorn was willing to risk his career to try to gain $2000 for his brother and to prevent us from ever performing TAM LIN again without paying off Edward Einhorn.

  • I didn't know much about copyright law in 2004, but I knew enough that there had never been established a "director's copyright" and so Einhorn's cease and desist letter seemed a flight of fantasy. But without my knowledge or authorization the Einhorn brothers had filed and received a derivative copyright on my play TAM LIN.

    This is not allowed according to the Circular 14 of the US Copyright Office:
    Only the owner of copyright in a work has the right to prepare, or to authorize someone else to create, a new version of that work.

    The fact that the US Copyright Office does not require proof of authorization is a huge loophole that the Einhorns exploited, and the loophole is there to this day. And this is one reason why this case isn't about me - it's about all American authors. I will address the copyright issue further in the next installment.