In brief 3 min read
In the recent Federal Court decision of JWR Productions Australia Pty Ltd v Duncan-Watt (No 2)  FCA 236, Justice Thawley dismissed the claims by producer Jonathan Rockefeller that two co-producers of his off-Broadway puppet show parody Thank You For Being a Friend had, among other things, engaged in misleading or deceptive conduct by claiming in a New York Times article that Mr Rockefeller 'stole' his co-creators' script .
- Agreements between creators are essential in determining what each creator can subsequently do with their intellectual property.
Those involved in litigation, and in negotiating and implementing agreements involving intellectual property rights.
Jonathan Rockefeller and Thomas Duncan-Watt co-wrote Thank You For Being A Friend, a puppet show parodying the American sitcom The Golden Girls. It was subsequently licensed out to two producers, Mr Gooding and Mr Henderson, and toured Australia (and Toronto) from 2014. In 2016, Mr Rockefeller opened a substantially similar Off-Off-Broadway show called Jonathan Rockefeller's That Golden Girls Show!. In October 2016, Mr Duncan-Watt, Mr Gooding and Mr Henderson commenced proceedings in the Supreme Court of New York against Mr Rockefeller, alleging copyright infringement and seeking royalties.
A New York Times journalist reported on the proceedings and published an article titled 'Lawsuit Filed Over "Golden Girls" Parody'', detailing allegations made against Mr Rockefeller, including that he 'stole' the script for Thank You For Being A Friend . Mr Duncan-Watt and Mr Gooding were quoted in the article. Mr Gooding then shared the article link in a Facebook post. In February 2017, Mr Rockefeller and his company, JWR Productions, commenced separate proceedings in the Federal Court against Mr Gooding and Mr Duncan-Watt (heard together), alleging that the allegation made in the article and quotes were misleading and deceptive under section 18 of the Australian Consumer Law.
Was it misleading to say that Mr Rockefeller 'stole' his co-producers script?
Mr Rockefeller's misleading or deceptive conduct claims against his co-producers were :
- that each co-producer represented that they were the owner of all rights, including copyright, in the stage play Thank You For Being a Friend; and
- that Mr Rockefeller stole the stage play Thank You For Being a Friend, and used it for his own production, Jonathan Rockefeller's That Golden Girls Show!.
In relation to the first claim, the court held that this representation was not conveyed by either co-producer's conduct; and that, to the contrary, the article expressly acknowledged that Thank You For Being A Friend was jointly created by Mr Duncan-Watt and Mr Rockefeller.
In relation to the second claim, the court held that the use of the word 'stole' in the article conveyed the fact that Mr Rockefeller had used the core concept and format of the play to produce a show that was substantially similar to the original play, without any acknowledgment. The court found that this statement of fact was not misleading in the circumstances because there were substantial similarities between Thank You For Being A Friend and That Golden Girls Show!, and the licence agreement between the parties clearly stated that Mr Rockefeller and his company was not the sole holder of rights in Thank You For Being A Friend. Therefore, it could not be misleading to say that Mr Rockefeller 'stole' the stage play, when he was clearly infringing the intellectual property rights of Mr Duncan-Watt as joint licensor and joint owner of copyright.
The case shows that it is important for co-creators to clearly set out their IP rights in relation to their work in an agreement at the start of the creative process.
Before a co-creator can use the IP underlying their original work in subsequent works, they should be mindful of any IP clauses and restraints in their agreements with any co-creator.