Introduction

Music is often a very important part of a filmmaker’s creative vision in putting together a film, and the collaboration between musicians and filmmakers can result in great things for both parties. From the point of view of the musician, the use of his or her music in a film brings up not only issues of payment, but of attribution, business relationships, and reputation as well. The filmmaker has to think of how he or she would feel if some of his or her work was used in another film or project, and the rights to be protected. The clearance of rights to music are mostly negotiated and not statutory, and involved people and entities other than the musician, such as record companies, music publishers, and music performance societies. Whether the filmmaker wants to use existing music or commissioned music, there are certain steps which must be taken, which can be costly and time-consuming. This paper will lay out some of the basics to determining the rights involved and how music can legally be obtained for a film. To ignore these steps and attempt to use music without obtaining rights to it, either because you think your film is `too small’, the amount of music used is `minimal’, or not enough money will be made to make a difference to the rights holders, is a risky and foolish proposition. As most filmmakers dream of their film “making it big” even if it starts small, you would be foreclosing yourself from that ever happening if you use music that has not been cleared. You will not be able to get a distribution deal, may have lawsuits filed against you and everyone involved in making the film, and at the very least may have to reshoot your film without the music that has not been cleared. This will not only be very costly to you, but may ruin your reputation for future filmmaking. There are ways to obtain music more cheaply, but first you have to think about others’ rights and plan the use of music in your film ahead of time. Balancing the cost of clearances with the need for certain music will help you to form a budget for your film and make sure you are not causing yourself extra problems with your production.

Part I: Copyright Basics

Music used in films is subject to federal copyright laws, which allow for exploitation of such rights. Title 17 of the United States Code at section 106, Exclusive rights in copyrighted works[1], grants exclusive rights to the creator of the work, such as the right “to reproduce the work in copies or phonorecords”, and to “prepare derivative works based on the copyrighted work”.[2] Specific rights pertaining to sound recordings are found at section 114 “Scope of exclusive rights in sound recordings” which 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.”[3] `Cover versions’ or different musical arrangements of compositions, and the statutory royalties which must be paid for making them are set out in section 115.[4] Recording a cover version of a song for your movie will involve obtaining a compulsory mechanical license by giving notice to the copyright holder before or within thirty days after making, and before distributing any phonorecords of the work, including digital delivery.[5] (For purposes of filmmaking, the `delivery’ would include the song’s recording and synchronization with the film.) Any person entitled to obtain a compulsory license may instead negotiate with the copyright owner of the music and agree on the terms and rates of royalty payments.[6]

For music that is in the public domain, such as the 19^th century-era classical compositions, you may buy the sheet music royalty-free, but the recordings with full orchestras are under copyright protection, owned by the individual orchestra. If you have your own orchestral musicians to play the piece, it will be cheaper than obtaining the copyrighted existing recording owned by the performing orchestra. However, for phonograph records distributed before the copyright protection for phonograph records was enacted in 1972, there is no copyright protection.[7] Recording artists had to look to state common law for protection against record piracy under the theory of `unfair competition’. The copyright law at section 301(c) states that “no sound recording fixed before February 15, 1972, shall be subject to copyright under this title …”[8] This would include a phonograph record such as The Cleveland Orchestra conducted by the late George Szell’s recording of “Beethoven Symphony No.1 in C Major, and Symphony No.2 in D Major”, a sound recording fixed before February 15, 1972, without copyright protection. It is noted on the back of the album that the pieces themselves are in the public domain, having been written in 1799 and 1803, respectively.[9] As it was recorded before the 1972 change in the copyright law, there is no notice of copyright for the recording, just the trademark notice for the `Epic’ label logo. These stereo recordings are now part of Sony Classical, and have been reissued on vinyl by that company.[10] I would still not recommend using the pre-1972 recordings of public domain compositions, as the underlying performances do have copyright protection, and in any case have mostly been rereleased in other forms after copyright protection was legislated for phonograph records, as in CD and other versions. A proof problem may ensue if it becomes necessary to prove which version of the recording was used. For older pieces of music that you may think are in the public domain, renewal or reversion of copyrights may have taken place already. Under the renewal right section of the copyright law, 17 U.S.C. § 304, a recent amendment changed the duration of copyright protection for all copyrights in existence for works published after 1923.[11] For works published or registered before 1978 which were registered prior to the end of the initial 28 year term, giving them another 28 years of copyright protection, the new law has extended the renewal term for copyrights in existence on January 1st, 1978 to 67 years for a total of 95 years copyright protection. If a work was published between 1923 and 1963, the copyright owner was required to apply for a renewal term with the Copyright Office.[12] If they did not, the copyright expired and the work went into the public domain. If they did apply for renewal, these works will have a 95 year copyright term and will go into the public domain no sooner than 2018 (for a 1923 work.) If the work was published between 1964 and 1977, it will automatically have a 95 year copyright term, with no need to apply for a renewal.[13]

In addition, copyright holders, or their survivors, who granted the copyright to another person or company have the right to terminate that grant “…at any time during a period of five years beginning at the end of fifty-six years from the date copyright was originally secured, or beginning on January 1, 1978, whichever is later.”[14] This gives the relatives of a deceased author another chance to extract value from copyrighted works, and does require that notice be filed with the Copyright Office within certain time limits.[15] This provision attempts to correct injustices caused by the signing away of rights by young authors, musicians and artists for very little money early in their careers. Any derivative works created from the original copyrighted work before the expiration of the original term may continue to be used under the terms of the original grant during the renewed or extended term of copyright without infringing the original copyright, except that no new derivative works may be prepared during that renewed and extended term based upon the original copyright covered by the grant.[16] If the heirs of an author have already terminated the grant of copyright to the work, they can also stop further exploitation of derivative works based on the original copyrighted work.[17]

Part II: Clearance of Rights

Obtaining the rights to use pre-existing musical compositions in your film will require you to determine who owns the various rights involved; sometimes it is several people or entities. A synchronization license, which allows the filmmaker to fix the words and music to the video image, must be separately negotiated with the copyright holder, usually the music publisher. You can find out who is the publisher of the composition by using the American Society of Composers, Authors and Publishers (ASCAP) `ASCAP Clearance Express’[18], a searchable database of performed works along with writer, publisher and recording artist information. The synchronization license gives you the right to re-record the song for use in your film, but does not allow you to use any pre-existing recordings of that song. The use of a needle drop or “cue” of an existing recording means placing the needle down on the recording and then lifting it in synchronization with visual images. The use of a “cue’ from a commercially produced popular recording usually involves dealing with all the normal clearance requirements with respect to the song, the recording of the song, the recording artist and the performer’s unions. Organizations known as “production music” or “cue” libraries provide commercially produced recordings specifically for background broadcast and film use at a variety of reasonable license rates. The libraries will issue one license which includes rights for the music and the recording of the music.[19]

There is also the possibility that the copyright owner will not grant a license of their composition for use in your film, either because he or she objects to the type of subject matter, or the use made of the song in your film[20]. For example, the rights holder may not want the song to be used more than once, or be played over the beginning or end credits.[21] If you wish to use the pre-existing recording of the song, you must negotiate a separate master use license with the record label or other entity that owns the sound recording rights to that composition, and the artists and musicians that performed on that record. The artist may not want the song to be used more than once, and may ask for a quote for additional usage; he or she may want to get the cut onto a soundtrack album as well. [22] The producers of the 1985 film “Mask” were forced to replace several Bruce Springsteen songs with Bob Seger songs in the movie after they reached an impasse in licensing negotiations for the soundtrack and other formats of the movie.[23] There was a disagreement between the movie company and Springsteen’s record label, Columbia, over the percentage of the film’s videocassette royalties. Springsteen himself had approved their use in the script stage of the project, but the rights to be cleared also included the record company’s publishing rights to the pre-existing music. The music was reinstated for the 2004 Director’s Cut DVD version when Springsteen himself pushed for its inclusion.[24]

No performance license is required for commercial exhibition of motion pictures in United States theaters; however, a separate performance license is required for in-theater performances in Europe.[25] With the use in a film of an existing recording, record companies may require a separate license for distribution of the film in a format for home viewing, or a `home video license’. This may provide for a unit sale royalty to the record companies and possibly for royalties for each rental of a video disc.[26] Film producers may attempt to include the rights for DVD or other media formats for re-release of their film along with the original license so they do not incur additional licensing fees. If the cost of this additional license is prohibitively high, or if the copyright holders of the original song refuse clearance for the re-release, the filmmaker may edit out the affected song upon re-release in other formats, or replace the original recording with a similar one.

Since agreements for synchronization licenses are voluntary and are negotiated based on industry standards, but the contract language must clearly reflect all the possible uses contemplated by the parties, whether they are then in existence or not. In the case of Bourne v. Walt Disney Co.[27], an assignee of copyrights for musical compositions contained in two animated motion pictures, “Snow White and the Seven Dwarfs” and “Pinocchio” brought an infringement action against a motion picture and videocassette company, based on distribution of videocassettes of the motion pictures and use of the compositions in television commercials. The issue was the scope of the synchronization license granted by Bourne to Disney in the 1930s when the movies were first released. The circuit judge held that the term `motion picture’ in the license was not limited to a particular type of storage media, and the fact that videocassettes were unknown at the time of the agreement did not mean they were not contemplated by the parties.[28] The makers of the 1991 film “The Commitments” ran into a similar problem with a 1965 television performance of James Brown on the TAMI Show.[29] A 27-second clip of the performance was used in the film, sometimes shown on a television in the background, sometimes taking up the whole screen. Mr. Brown argued that his 1964 agreement with the producers of the TAMI show did not allow use of his performance and likeness in films, film promotions and videocassettes, but only in connection with distribution of the television show itself.[30] The district court did not agree with this limited interpretation, and held that the agreement did not prohibit other uses, including other media such as videocassettes.[31] Mr. Brown also lost on his California state right of publicity claim, since the filmmakers had the right to use the clip in the film, they had the right to use that scene from the film in their promotional activities.[32]  With use of any film clips containing music in your film, remember that an old film clip may be in the public domain, but the music contained in it may not be. For example, the rights holder of the film may not have renewed the copyright, but the holders of the rights to the music used in that clip may have renewed the copyright for an extended number of years.

Clearance of as many rights as possible as early as possible is highly recommended, and should be done as early as possible to ensure that the cost of rights fit within your film’s budget.[33] Failure to obtain and properly document clearance of all appropriate music rights may prevent you from securing a distribution deal for the film, and could lead to lawsuits from the rights holders. [34]   Negotiation of all pertinent rights for a film can be time consuming process, requiring not only a lot of research, but bargaining and compromising with the rights holders. To make things easier, a professional third party organization may be used to clear rights to music for your film. Licensemusic.com is the web’s leading provider of music for film, TV, advertising and interactive services worldwide. The Music Bridge, LLC is one company that licenses music to producers for film, TV, radio and various digital media projects.[35] Another is PrimaryElements, which offers royalty-free music licensing.[36]

Clearances can be a substantial part of your film production budget, usually between two and five percent,[37] so it is wise to consider the scope of the use of music compositions in your film.[38] In 2008, Jonathan Caouette’s film Tarnation, a documentary about his relationship with his mentally ill mother and growing up gay in Texas, was screened at the Sundance Film Festival. It was shot on a Sony Handicam and edited using Apple iMovie software. It cost $218.00 to make, but rights clearances pushed the real budget to $400,000. Clearing popular songs may be out of your budget, and some rights may be completely unattainable at any cost. Caouette also had to excise a lot of material from his film because rights could not be obtained.[39]

The scope of the use, including geographic extent and duration, and kinds of rights desired (DVD, online, TV, etc) should also be carefully considered. With the advent of films and television shows being offered in digital form online and on wireless devices such as smartphones, IPads, questions about how to compensate copyright holders for their music in previously released and new films and shows. Television shows in particular use a lot of needle drops or music cues per episode; HBO shows such as “The Sopranos” and “Entourage” routinely includes ten to twelve songs.[40] Studio contracts are changing to “all media excluding theatrical’’ (AMXT) for new films so negotiations don’t have to occur with each new technology platform. As was evident with home video, not having preclearance to use songs when the film comes out on DVD has led to replacing songs if they are too expensive to obtain[41] In addition, many television show contracts are being amended to provide for rights in perpetuity, instead of the formerly standard five year option. The exception to that rule is still shows in their first year. Fees can be more or less depending on the stature of the artist, the length of use, how the recording is being used. Local or lesser known artists may allow use of their recordings for a much reduced amount compared to major recording artists and record companies.

It is important to keep in mind whether you will actually need a well known composition or recording to set the mood or tone in your film, or to identify a particular period in time, ala `American Graffiti’.[42] For example, a filmmaker thinking of making a horror film using the music of a well known horror punk band such as The Misfits may find the music is too expensive to license, and may want to go with a lesser known or local artist of that genre. Several versions of the band The Misfits are registered with ASCAP and their publishers administer licenses for their music.[43] The band Dead Vampires from Seattle[44], on the other hand, is not registered with ASCAP, so permission to use their songs in your film may be easier and less expensive to obtain. Songs by self published local bands such as Dead Federation[45] and American Werewolves[46], both from Cleveland, also may be less expensive and complicated to deal with, and may be able to work out a composition specifically for your film. A composer hired to score your movie should ask, “What do you want music to do for this scene?”[47] If a director can answer this question, then the composer can avoid the mindset of trying to match a particular sound or style. Instead they can focus on making the music do what the director wants and create a stronger story.

Specially ordered or commissioned music is the other way to legally obtain music for your film. You can hire a composer or band to write and perform a complete musical score to your film, or just a series of musical compositions. The employment agreement will typically require the artist to compose the music and write the lyrics, arrange and orchestrate the composition, and conduct or produce the recording. The agreement will reflect that the composition(s) are a “work-for-hire” and will belong to the filmmaker or motion picture company, which will retain all copyrights. A synchronization license can be negotiated as part of the agreement. The composer usually is not entitled to royalties, but many composer and songwriter agreements do grant royalty rights to the writers which may include fifty percent of the performance royalties, six to ten cents per sheet for sheet music, a ten to twelve percent royalty for multiple song folios. If the writer is also the producer of the song and or performs as the lead artist, he or she will receive record production royalties of two to three percent and “artist” royalties of four to seven percent. Compensation agreements for composers and/or songwriters are often a blend of fixed compensation and a royalty, with both greater fixed compensation and lower royalties or vice versa.[48] Again, the stature of the composer/artist in these music-for-hire arrangements and the bargaining power of the filmmaker will influence not only the amount of compensation but the structure of the contract and possibility of royalties. If both the filmmaker and composer are unknown, and both are starting their careers with no track record, the agreement should be more flexible and the payments lower. As mentioned previously, there are some composers and artists who offer their music royalty-free, and charge just fixed fees for their works.[49] The band Midnight Syndicate is one that regularly composes musical scores and soundtracks for horror and fantasy films. Their music has appeared at a large variety of Halloween and other haunted attractions including Universal Studios’ Halloween Horror Nights XVIII and Hugh Hefner‘s infamous Halloween parties, in movies such as Kurtzman’s The Rage, and featured on television shows including Monday Night Football and the Barbara Walters specials.[50] The band has recently released its own film called “The Dead Matter” which is now available on DVD.[51]

A rights holder also may have a “Most Favored Nation” clause, which means that they cannot be paid any less than any other licensees of music for the film. In that instance, if rights holder A is being paid $10,000 for his song, and rights holder B signs a contract to be paid $12,000 for his song, rights holder A with a MFN clause will have to be paid $12,000 as well. It is therefore helpful to attempt to get all music licensees to accept uniform compensation, if possible, or you may have to choose to walk away from the licensee with that kind of clause or break the MFN clause and pay all the music licensees the higher amount.[52]

A soundtrack album connected with a film can be a good promotional vehicle for both the musical artist and the filmmaker, but negotiation of soundtrack rights has its own complications. For the musical artist, it can help promote his own album, and his record company may be looking for movies to be released around the time its artists’ albums are to come out. For the filmmaker, the artist’s album or single can help promotion of the film. The artist and his record company and music publisher control the song rights, and the royalty rates for cuts on a soundtrack album are typically different since multiple artists and more songs are involved.[53] A label may ask for a reduced mechanical royalty rate, and hope that if one of the songs becomes a single that they will make back their money in performance royalties from radio play.[54] However, the record company may not have the right to release a single from the soundtrack album or make a video embodying the artist’s performance, depending on whether the master recording is owned by or licensed to the film producer or label making the soundtrack album. Sometimes the record company does not have the right to put a song the artist made for the movie onto the artist’s own album.[55]

New use fees are another issue in soundtrack album deals for musicians who produced music for a film under a union contract, since you must pay a new-use fee to the union to use that music on a soundtrack. Unions, recognizing that soundtrack albums are one-shot deals and are speculative, have worked out reduced new-use fees for sales up to a certain amount of units, and then charge the full rate if sales go over that amount. Soundtrack agreements with a record label should make its artist’s performance for the film available for the soundtrack album as well. If the compositions for the film are specially ordered or commissioned, the copyright owner would be the motion picture company, and mechanical license fees for a soundtrack album would be paid by the record label to the motion picture company. Also, the motion picture company would be analogous to the “artist” under an exclusive records agreement contract with a record label, and would receive the “artist” royalty of 14 to 18 percent of the suggested retail price. As previously mentioned, performance license fees would apply for radio and other public performances of the music in forms other than in the movie and on television, and these fees would follow ASCAP/BMI payment guidelines.[56]

Most Favored Nation clauses can also cause disagreements in negotiations over royalty rates for cuts on soundtrack albums between the artist and soundtrack record label. The artist whose song is more prominent on the soundtrack or is driving the album, perhaps because his own single or album has been released, may not want to be paid the same as an artist who is less popular or whose song is of lesser prominence on the soundtrack. That artist may ask for an override on the soundtrack album, in which he will be paid a higher royalty if the soundtrack album goes gold or platinum within a designated time period following the release of the artist’s single. The motion picture company may make a deal with a record company to produce, distribute and market a soundtrack album, and in return, the film company will ask for an override consisting of a set royalty from the retail list price, non-prorated and not subject to artists’ reductions.

Another issue may arise where the artist is under an exclusive contract with a record label, and may agree to participate in the soundtrack before going to their record label. They may not be allowed to participate in the soundtrack absent a waiver from the record label, which, depending on how important the artist is, may involve various conditions on the grant. The record company may include a Favored Nations royalty, an advance, or reciprocity from the soundtrack-producing label agreeing to grant a waiver to the label granting the initial waiver for one of its artists of a similar stature in the future.[57] Getting the artist’s credits on the soundtrack album is another point of negotiation, since the film company controls the cover art. If the music is licensed and added to the film late and the artist is not included with the original artwork provided to the label and can’t be added in, you may have to work things out with the label to include the credits on a sticker.

Part III: Errors and Omissions Insurance

Errors and Omissions insurance protects filmmakers, their licensees and assigns from third party claims for copyright or trademark infringement, as well as defamation, privacy and right of publicity violations. Music rights are a large part of the clearances required, as the enforcement by the rights holders is often diligent and wide-ranging. Distributors, television networks, broadcasters and direct to video markets require Errors and Omissions insurance before they will exhibit or make available a film. They require a film producer to indemnify them for claims that might result from the content of their production. In turn, an insurance company will require proper clearance of all rights before issuing a policy to a filmmaker. Written agreements must be made between the producer, creators, authors, writers, performers and any other persons providing material for the film. Written releases should be obtained for faces and likenesses of any recognizable living persons. All releases must provide the producer with the rights to edit, modify, add to or delete material, change the sequence of events or fictionalize persons or events. All necessary synchronization and performance licenses from the copyright proprietors for pre-existing or original music included in the film must be obtained as well.[58] Experts also recommend that clearance work begin at the film’s inception, continue during filming and be finalized at final cut.

The process of securing Errors & Omissions insurance takes at least 3 to 5 days to accomplish and even longer if certain rights or releases, title report and music clearances have not been obtained.[59] The producer completes and application for the insurance company, determines the limits and deductibles the distributor requires, with standard limits $1 million to $3 million with a deductible of $10,000. Your distributor should be included as an additional insured. The applicant for an E & O policy must follow written procedures for the clearance of material used in the production, and must sign a written declaration stating that the detailed information required in the application for insurance is in all respects true, and that no information has been omitted, suppressed or misstated. Additionally, the insurance application form usually must be signed by an attorney who is familiar with the clearance procedures of the insurance company, and also signs a declaration that the attorney will use best efforts to insure that the specific clearance procedures contained in the application are followed, and that the attorney believes that the statements in the application are correct.[60]

Specifically for music, the producer must obtain written agreements that authorize the synchronization and performance of songs and recordings (including the music contained in any clips from other films used in the film) in the production. He or she must also obtain the right to distribute the production for the proper duration (now usually in perpetuity) in all media and markets, including digital uses as previously mentioned such as wireless devices (AMXT clauses), unless specific media or markets are excluded from insurance coverage.[61] Errors & Omissions insurance provides other benefits, covering a producer for libel, slander, invasion of privacy, copyright infringement, plagiarism, piracy and misappropriation of ideas, and also any form of defamation, product disparagement, trade libel, infliction of emotional distress, right of publicity, outrage and outrageous conduct, false light publicity, wrongful entry, false arrest or malicious prosecution. In our litigious society, many claims do come up against producers and production companies, but upon notification of a claim the insurance company will assist in vindicating you and will pay for your defense costs.[62]

Another type of insurance for films is business interruption insurance, which covers risks from natural disasters such as earthquakes, hurricanes, fires and floods. It is often included as part of an ”all risk” insurance policy. Experienced filmmakers often purchase coverage that protects against possible business interruption resulting from causes ranging from weather-related filming delays to equipment failure to the loss of a cast member or other key film personnel.[63] An actor’s death or injury can significantly impact a film’s production, so cast insurance is typically considered an essential component of coverage when an irreplaceable cast member is involved. Cast insurance generally covers additional expenses to complete principal photography, or in certain cases, costs resulting from the necessary abandonment of the production.[64]

There are several cases of filmmakers obtaining business interruption insurance, but ending up in court anyway. In October 2009, Fox Entertainment Corp. filed suit in relation to an insurance claim made after the delayed production of “Hide and Seek”, a film starring Robert DeNiro. Fox sought coverage under its motion picture/ television producers portfolio insurance policy when Robert DeNiro was diagnosed with prostate cancer shortly before principal photography was to begin. The diagnosis came two days after DeNiro underwent a medical exam and signed a related medical certificate and affidavit in connection with Fox’s insurance application for the film. DeNiro’s request for surgery resulted in a several month delay of the production and a multi-million dollar loss to Fox. Fox’s insurer paid the loss but sued DeNiro to recoup the amounts paid, alleging he failed to disclose that he had undergone a prostate biopsy when he executed the medical certificate. DeNiro prevailed in the lawsuit, but Fox filed against the insurer for reimbursement of the amounts Fox incurred defending DeNiro in the lawsuit.[65]

The case raises questions about an insurer’s remedies if an actor provides a materially fraudulent response to an insurer in connection with an application for cast insurance. Policies usually contain a “misrepresentation and fraud” provision which voids the policy if the named insured knowingly conceals or misrepresents any material fact or circumstances concerning the insurance. Cases have also been brought against insurance brokers for not securing the proper coverage for injuries to cast members who are an “essential element” of their film. This happened when Samuel L. Jackson was case to star in the film “Black Water Transit” but suffered a back injury requiring surgery prior to the commencement of principal photography. Capitol Films alleged in their lawsuit against their insurance broker that the company would rather abandon the project than recast or delay the film until Jackson recovered. The insurance policy did not cover pre-production injury, even though Jackson was declared an “essential element” of the film, even though pre-production coverage is standard in the insurance industry, as testified to by a senior insurance employee.[66] In view of these complex issues in insurance coverage, a filmmaker should research and review policy terms carefully, and chooses his or her insurance broker wisely. Asking for an explanation from your insurance agent of what policies cover before purchase, with examples and scenarios as well as scope of the duty to defend, will help identify gaps in coverage.

Part IV: Protection of Business Relationships

If no one ever catches you using a song without clearing it, nothing will happen. However, if you are discovered by the copyright owner to have used music without authorization, you, as the producer of the project, are not the only one who may be held liable for the infringement. When a rights holder files suit for the unauthorized use of his material, he typically names in the lawsuit anyone in the production’s chain of creation and distribution. A number of people and entities involved may be liable for copyright infringement as well as other actionable claims. Potential defendants include writers, individual producers, production companies, distributors, exhibiting networks and stations.[67] Under the Copyright Act, an infringer may be liable for both the damages sustained by the copyright owner, and the profits resulting from the unauthorized use of the protected material. Even if the copyright owner cannot show the damages or profits specifically, he can still be awarded substantial statutory damages as set out in the Copyright Act.[68] You may also find yourself facing an injunction and the impounding of “… all plates molds, matrices, masters, tapes, film negatives, or other articles by means of which such copies of phonorecords may be reproduced; (and) of records documenting the manufacture, sale, or receipt of things involved in any such violation”[69] You may have to go back to your finished program and make extensive changes to remove the uncleared material, which, after hundreds or thousands of copies have hit the marketplace, may result in costs many times what the original clearance and license fees may have been.[70]

It will not help your long term professional relationships to have your clients, customers, or distributors into a lawsuit. One of the most worthy reasons to get permission when permission is required is that it is the right thing to do. Relationships are important in the media industry, and you may need to return to the same rights owner to request rights for a future production. In that case, using the rights owners’ work without authorization – even if no formal action is taken by him against you – can damage future negotiations for rights you may need from that owner at a later date.[71] As a producer you are also a creative person, and should consider how you would feel if someone wanted to use your creative, proprietary material. You would want some “say” in how and whether your material is used, or re-used.[72]

Part V: Fair Use Defense

The concept of “fair use” of copyrighted material has been the most mythologized of all in copyright law. It comes up in almost every discussion of copyright, with people asking whether they can use `only a small amount’ of a musical piece and get away with paying no fees, or claiming they have changed it to make its use non-actionable. Neither of these notions is true.  The federal copyright law does provide for a limitation on exclusive rights for certain narrowly defined purposes, and the statute and case law sets out the factors that courts use to decide whether a use is infringing. 17 U.S.C. § 107 lists these factors as

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.[73]

The law then sets out a caveat to these factors in the same section:

The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.[74]

Section 107 details the uses that are considered in a determination of fair use, including “… purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.”[75] Courts have focused on the factors of the commercial or non-commercial nature of the work, and the amount and substantiality of the portion used in relation to the copyrighted work as a whole. Although the stated purpose of the Copyright law is to “… promote the progress of science and the useful arts” and courts have put forth the notion that the arts are “better served by allowing the use rather than preventing it”, courts have been diligent in protecting artists’ rights in their copyrighted material. A finding of a fair use defense can come if the use is found to be `transformative’, or different from the original use.

The landmark U.S. Supreme Court case on fair use and parody is Campbell v Acuff-Rose Music, Inc., also known as the “Two Live Crew case”.[76] The court was called upon to decide whether 2 Live Crew’s parody of Roy Orbison’s 1964 song “Oh, Pretty Woman” may be a fair use within the meaning of the Copyright Act of 1976, 17 U.S.C. § 107. The band’s management informed Acuff-Rose that they had written a parody of the song and would afford all credit for ownership and authorship to Acuff-Rose, Roy Orbison and William Dees, who wrote the original tune, and were willing to pay a fee for the use they wished to make of it. Acuff-Rose’s agent refused permission, but 2 Live Crew nonetheless released records, cassette tapes and compact discs of the parody song on their 1989 album “As Clean As They Wanna Be.” Almost a year later, after nearly a quarter of a million copies of the recording had been sold, Acuff-Rose sued 2 Live Crew and its record company, Luke Skyywalker Records, for copyright infringement.[77] The case held that parody, like other comment and criticism, may claim fair use. The Court then set out several standards for a parody to be able to claim the fair use defense. In reversing the Court of Appeals, the Court ruled that “a work’s commercial nature is only one element of the first factor enquiry into its purpose and character”, and is not a hard evidentiary presumption.[78] The court stated that the fair use doctrine permits and requires courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster.”[79] The Court went on to say that “although … transformative use is not absolutely necessary for a finding of fair use, the goal of copyright to promote science and the arts, is generally furthered by the creation of transformative works. The more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.”[80] The Court said that the crucial requirement of a parody is that it comments upon or criticizes the prior work, and in doing so creates a new and different work. If the commentary has no bearing on the substance or style of the original composition, but merely is used to get attention or avoid the drudgery in working up something fresh, the claim to fairness in borrowing from another’s work diminishes or may even be taken away entirely. The District Court came to the same conclusion as the Supreme Court, saying that the 2 Live Crew song was “clearly intended to ridicule the whitebread original” and “reminds us that sexual congress with nameless streetwalkers is not necessarily the stuff of romance and is not necessarily without its consequences.”[81] The Court also stated that under the fourth fair use factor, harm to the potential market for or value of the copyrighted work[82], the 2 Live Crew parody version of “Oh Pretty Woman” would not harm the market for derivative works of the original composition, as the proper focus of enquiry is the market for rap music, and the plaintiffs had not presented any evidence that the rap music market was harmed by 2 Live Crew’s parody rap version. The amount of material taken by the group was found to be only enough to “conjure up” the original, and that 2 Live Crew, after copying the original’s first line of lyrics and the opening bass riff, thereafter departed markedly from the original and produced otherwise distinctive music. The copying was not excessive in relation to the song’s parodic purpose.[83]

A finding of fair use with a parody is subject to interpretation by the fact finder, and judges determine fair use defenses on a case-by-case basis. Other cases have unpredictably accepted and rejected the fair use defense for parodies, with some well known examples in movies and books. The theater poster for the movie “Naked Gun 33 1/3” depicted a photo of a pregnant woman’s body with the face of Leslie Nielsen’s head superimposed on it. The picture was designed to replicate identically the famous photo of Demi Moore that was taken by Annie Leibovitz and appeared on the cover of “Vanity Fair” magazine. Ms. Leibovitz sued Paramount Pictures for copyright infringement[84] and lost, with the court finding that the advertisement was transformative because of the stark contrast between the serious Demi Moore and the smirking Leslie Nielsen. After acknowledging that it was a close question whether the advertisement commented on the original, the court ruled that the ad could reasonably be perceived as commenting, through ridicule, on “the seriousness, even the pretentiousness”, of the original and therefore did constitute fair use.[85] In another case where the same analytical framework was applied, the result was the opposite from the Leibovitz case. Dr. Seuss Enterprises, L.P. v. Penguin Books USA Inc.[86], involved an illustrated book about O.J. Simpson’s double murder trial titled “The Cat Not in the Hat! A Parody by Dr. Juice” which employed Dr.Seuss’s familiar poetic meter and language as well as the Cat in the Hat character images. The U.S. Court of Appeals for the Ninth Circuit ruled that the work did not hold the original book up to ridicule, or otherwise comment upon it, but merely used Dr. Seuss’s copyrighted material in its retelling of the Simpson murder highlights to “get attention” and “avoid the drudgery in working up something fresh.”[87] It is easy to imagine the Ninth Circuit panel that decided Dr. Seuss rejecting the fair use rationale offered in Leibovitz, viewing the use of the famous copyrighted image as being simply “to get attention” while “avoid[ing] the drudgery of working up something fresh.”[88]

A case that revolved around the “de minimis” argument, claiming that a sample of a musical composition in a film was so small that it was not actionable by the copyright holder, was Bridgeport Music, Inc. v. Dimension Films.[89] In this case, a sample from, the composition and sound recording “Get Off Your Ass and Jam” by George Clinton Jr. and Funkadelic was used in the rap song “100 Miles and Runnin” which was included in the soundtrack of the movie “I Got the Hook Up”. The movie company used a two second sample from the guitar solo and `looped’ and extended it to 16 beats, lasting approximately 7 seconds. The sample appeared in the “100 Miles” sound recording in five places. The district court’s discussion centered on a very detailed description of the chord and how it was played, and stated that the clip was entitled to copyright protection. The music company’s argument centered around the claim that no substantial similarity or de minimis inquiry should be undertaken at all when the defendant has not disputed that it digitally sampled a copyrighted sound recording. The appeals court agreed and found for the music company. The court acknowledged that technological advances have made instances of sampling extremely common and have spawned a plethora of copyright disputes and litigation. The court then cited ease of enforcement of copyrighted sampling, saying “Get a license or do not sample. We do not see this as stifling creativity in any significant way”, while remarking that sampling is never accidental.[90] The court also noted that many artists and record companies planning to use samples have sought licenses as a matter of course.[91] The court then set forth a new rule that a sound recording owner has the exclusive right to “sample” his own recording.[92] Thus, even the smallest piece of copyrighted music must be cleared with the copyright owner before it is used in a film. Although the court did not address the parties’ fair use argument, the decision turns on one of the factors in the fair use determination, the amount and substantiality of the portion used.

Another recent case that concerns a fair use of music argument is Lennon v. Premise Media Corp.[93] which was a documentary film about the theory of intelligent design. A fifteen second excerpt from John Lennon’s “Imagine” was used (“Nothing to kill or die for – and no religion too”), an hour and a half into the movie, during a discussion of religion with the narrator, Ben Stein. Yoko One and Sean Lennon brought suit to block the use of the clip in the film “Expelled: No Intelligence Allowed”. The clip was not used in the trailer, marketing or in other advertising. The use was found “transformative” because the movie incorporated the excerpt for purposes of criticism a commentary, and there was no evidence that it would usurp the market for licensing of the original song.[94] Although the excerpt represented a substantial and memorable part of the original work, and was instantly recognizable, the use was found not unreasonable. The court held that allowing the defendant’s use of the clip would better serve the copyright law’s goal of promoting the progress of science and the useful arts.[95]

Filmmakers are better off heeding the court’s admonishment in the Bridgeport case to always get a license for music used in a film. The fair use defense, even with a documentary, is usually a tough argument to make, and is best avoided by making sure all the rights in your film are properly cleared.

© 2011 Mary Ellen Tomazic