Tag Archive for legal

Trademarks Appearing In Your Film – How to Use Marks Owned by Others

I. Concerns and questions from filmmakers

A common ongoing concern of filmmakers is whether and to what extent a trademarked image may be included in a film. Questions abound in the film community about whether someone’s logo can be used in the film, what if any is the difference, if any,  if it is filmed from a public place, and what about famous public buildings? Filmmaking message boards often include robust discussions about the concept of product placement and its role in independent films. In these technologically advanced days, the question of whether YouTube may be used to advertise or update progress of a film, and whether trademarks can be included in trailers uploaded to that site. You cannot take anything you want off the internet, and owners of trademarks and other intellectual property will be watching to make sure their materials are not uploaded to the internet without their permission. The items on the internet may be there with permission, though you will not be able to tell that from viewing the photograph or clip. It also may have been taken and uploaded without permission, and the uploader may have already gotten a threatening letter from a lawyer representing the material’s copyright holder. It is a rare case that programs or clips on the internet are in the public domain, and the risk of not being able to obtain insurance or distribution for your film is not worth taking the material. In addition, YouTube now has an automatic video monitoring service called “Claim Your Content” which will automatically identify copyrighted material and remove it from its site.[1] You may check back to see the clip you took from YouTube and find that it has been removed, which is a pretty good indication it was uploaded without permission. Trademark holders are especially diligent in ferreting out uses of their mark in an unfair way to bolster marketing of a film or other product, associating unrelated products with their goodwill and benefiting from their works without paying for them.

A filmmaker must be aware of the laws regarding the unauthorized use of famous trademarks in films, as well as case examples of what can happen if it is done.

 

II. Federal and State Trademark and Unfair Competition laws

 

Protection of trademarks and service marks is governed by the federal Lanham Act, which is part of Title 15 of the United States Code, passed in 1946 during the presidency of Harry Truman. It prohibits activities such as false advertising and trademark infringement and prevents use of a mark that would create consumer confusion about the origin, sponsorship, or approval of their goods by another person,[2] or that misrepresents the source of the trademarked product or service in commercial advertising.[3] The mark owner is not required to share its widespread reputation and goodwill with the infringers using a similar mark.

Unlike the subjects of copyright or patents, trademarks are intended to be used in commerce to identify goods.  As long as they are used on the product, protection of the mark, either a trademark for goods or a service mark for services, protection of them does not have a time limit. They do have a requirement of continuous use, and can be deemed abandoned by lack of use. Depending on the class of goods, the use of a trademark or service mark can be worldwide or in a certain geographical area. With the global economy and worldwide sites such as YouTube and Facebook, the geographical area of use of a mark has been expanded. Filmmakers are no longer insulated from infringement suits by their geographical distribution limitations, since their film is likely to be viewed by people in the areas where the trademark is used.

Two causes of action are available to owners of trademarks who want to protect against infringement of their mark. The first is deception, or misleading use of a mark, or even outright counterfeiting of the mark, causing the possibility of consumer confusion, which is the main harm envisioned by the Congress when the trademark laws were enacted. Some states, including Ohio, have criminal statutes prohibiting counterfeiting of trademarks.[4] The civil trademark laws were designed to protect the makers of products using a famous mark from others “passing off” their goods as those of the trademark owner, especially when they consisted of inferior goods. The Act  prohibits any person from using on or in connection with any goods in commerce any “ … word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact” to mislead or deceive people about the affiliation, association or connection with a person or product, “ … or as to the origin, sponsorship or approval of his or her goods, services or commercial activities by another person, or in commercial advertising or promotion misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities”[5]  The Lanham Act defines “famous mark” as “…widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.”[6] This false association not only hurts the market for the trademark owner’s goods, but had the potential to harm the reputation of the trademark owner and his goods. The second cause of action that trademark owners use against infringers is the concept of dilution, which has two different ways a mark owner can be harmed. The first is by using the mark on different goods from different sources so that the strength of the mark is diminished by overuse and its distinctiveness is eroded, called “blurring”[7]. The other type of dilution is by tarnishment of the mark, using it in inferior or in an unwholesome or degrading context that harms the reputation of the famous mark.[8] Under the Act, neither type of dilution requires actual or likely confusion, competition, or actual economic injury.[9]

State anti-dilution statutes were the main source of protection for owners of trademarks, until Congress in 1996 amended the Lanham Act to adopt the Federal Trademark Anti-Dilution Act. The state laws were considered too varied and difficult to enforce uniformly against infringers who had goods in commerce across the country. The state anti-dilution laws formerly had a different standard of proof for dilution, requiring only the “likelihood of dilution” rather than “actual dilution”.[10] State statutes also do not contain an exemption for noncommercial use.[11] When the Federal Trademark Anti-Dilution Act (FTDA) was adopted, it defined dilution as “the lessening of the capacity of a famous mark to identify and distinguish goods.”[12] Another amendment in 2006 lessened the burden of proof for the mark holder to require only the likelihood of dilution, rather than actual dilution.[13] Previously, state anti-dilution statutes provided the only avenue for protection of trademarks from similar or the same marks by non-competitors, but Congress determined that the many different state laws were inadequate to protect trademarks in the global marketplace. The new federal anti-dilution statutes provide for injunctive relief, damages and possibly destruction of the infringing goods under the new amendments.[14]

How do these federal and state laws affect the filmmaker; will he or she be violating the law by any appearance of a famous mark in his or her film? Fortunately, the trademark statute itself, in section 1125, “False designations of origin, false descriptions, and dilution forbidden” provides that noncommercial use of a mark, in the sense that the use is not attempting to identify the source of goods, but is used in a nominative sense, is considered fair use and not infringement:

 

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3) Exclusions

The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:

(A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with—

(i) advertising or promotion that permits consumers to compare goods or services; or

(ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.

(B) All forms of news reporting and news commentary.

(C) Any noncommercial use of a mark.[15]

 

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That is not to say that any commercial use of a trademark will trigger a lawsuit; even if a trademark is used in connection with a commercial, i.e. for-profit unrelated product, it is not to be confused with “commercial use” under the Lanham Act. Collateral use of a trademark, uses as it was intended by a secondary user as part of a larger work such as a film has been allowed so long as the public would not be deceived or led to believe that the senior user of the mark was somehow the sponsor of the secondary user’s item.[16] Collateral use has come to mean the association of the mark with the authentic product, and only dilution can be used to attack an otherwise fair use, as when the mark is not used so as to confuse a consumer, but in a way that the mark owner does not like. Fair use is a concept used in copyright law, but has been analogized in cases and finally codified in the federal trademark act, by excluding “nominative” or “descriptive” uses, and the defense is stronger with uses of the mark other than with the same goods, which do not serve as an identifier of the goods, as is usually the case with movies. The mere appearance of a famous mark in a film, not intended to associate the film with the famous mark’s goods or reputation, but used in its intended manner in identifying the product itself appearing in the film, is considered nominative or descriptive, and not a violation of the Act.

 

III. Recent Judicial Tolerance

 

In the past courts have taken a hard line stance in favor of the mark owners in finding infringement when a trademark is used without authorization as part of a film, reasoning that the use may lead the viewer to think there is some connection between the product and the film. In recent years however, many courts have shifted more in favor the defendant filmmakers in ruling that if the mark is not unreasonably displayed or highlighted, and is used incidentally in the film, there is no infringement. Barring unusual circumstances, such as unnecessary or abusive use of the mark, the appearance or mention of well known trademarks or products bearing them in expressive works does not give rise to a valid cause of action for infringement.[17]

Since the purpose of trademarks and service marks is to identify goods, there has been an ongoing debate whether the appearance of trademarks in a film constitutes infringement of the mark, since that type of use is not identifying any product. The Lanham Act[18] protects trademark owners from consumer confusion over the source of products or services. A test for application of the Lanham Act has been developed in the courts, balancing the public interest in avoiding consumer confusion against the public interest in free expression. More concerning to filmmakers is the second cause of action for trademark infringement, which involves anti-dilution statutes, protecting trademarks from tarnishment, using the mark in a negative light or on inferior or unwholesome products.

Courts have accepted the defense of “nominative use”, based on the recognition that it is virtually impossible to refer to certain entities without using their trademark names, as when referring to the Chicago Bulls or Volkswagens. Also, trademarks sometimes enter the language as descriptive words, where something is referred to as the “Rolls Royce of its class” or a “Band Aid quick fix”. These situations clearly do not cause consumer confusion about the source of goods under the Lanham Act. When a mark is not used in a trademark sense to identify goods, courts are reluctant to find infringement. So for filmmakers, some collateral use of trademarked products merely to identify the original product associated with the mark as part of an expressive work will be seen as fair use. However, such a nominative use becomes more problematic when used to “piggyback” onto the mark holder’s goodwill and reputation by highlighting the famous mark in advertising or trailers. In those cases the mark holder may sue to stop the perceived association or sponsorship of the film with the mark, and prevent the free ride by the unauthorized user. The filmmaker must keep the appearance of the mark in his or her film short and just enough to name the product as such, and avoid any disparagement of the product or mark. Also remember that the state and federal anti-dilution statutes apply to any use, even on unrelated goods. Filmmakers should remember the three requirements for nominative use as set out in the New Kids on the Block case: 1) the product is not readily identifiable without the use of the trademarked name; 2) only so much of the trademark is used as is reasonably necessary to identify the product; and 3) the user must do nothing that would, in conjunction with the mark, suggest sponsorship by the trademark holder.[19] An example of a use of a trademark in a film that was deemed too prominent was the Slip ‘N Slide toy used in the film “Dickie Roberts: Former Child Star”.[20] Although the scene in which Dickie Roberts and his siblings play on the famous slide, without water, lasts roughly 70 seconds, it played a prominent role in the film’s advertising and promotion al campaign, appearing in the film’s publicly released trailers and television ads. The Wham-O company asked Paramount to insert a disclaimer regarding the slide’s trademark and proper use, and Paramount refused, prompting Wham-O’s lawsuit. The plaintiff claimed Paramount’s misuse of the slide in the film tarnished Wham-O’s trademarks, but the court disagreed, holding that the depiction of the slide in the film did not “inspire a degree of probably loss of the capability of the mark to serve as a distinctive identifier.” The absurd depiction of the trademarked slide did not “present a danger that consumers will form unfavorably associations with the mark.”[21] The court deemed Paramount’s use of the slide a nominative use, as there was no other way for the movie company to identify the toy in question, and there was no need for Paramount to “use absurd turns of phrase” simply to avoid using the name Slip ‘N Slide. It was sensible and necessary to refer to the slide by its popular name.[22]

There are many case examples where courts found that the unauthorized use of a mark in different contexts and on different goods caused or could cause tarnishment of the mark and its owner’s reputation. An example of a famous mark being used in a film and causing tarnishment is the case of Dallas Cowboys Cheerleaders v. Pussycat Cinema, Ltd.,[23] where similar uniforms to the Dallas Cowboy Cheerleaders and the phrase “Dallas Cheerleaders” were used in a pornographic film, “Debby Does Dallas”, The court found that the cheerleaders had established a trademark in their uniform style, as well as a reputation for family entertainment, and that the reputation of the cheerleading squad were tarnished by the perceived association with the “depraved” film, and ordered that the film be enjoined. The film was put forth as a parody, the First Amendment defense failed probably because of the ”unwholesomeness” sexual nature of the film, even though the defendant claimed it was a commentary on “sexuality in athletics”. The court said that there were alternate avenues for such a comment so that the film was not protected under free speech.[24] Filmmakers should not assume that labeling the unauthorized use of a trademarked product in his or her film a “parody” will inoculate it from infringement; In the landmark 2 Live Crew Case,[25] The Supreme Court set out requirements for a parody under copyright law. The Court said that in cases of parody there should be a case-by-case analysis, but using the copyrighted work, the second work must comment upon or criticize the original work, and should use only so much as is necessary to “conjure up” the original to make its point. The commercial nature of the second work was not dispositive of the issue.[26]   Other cases of association of a famous mark with “unwholesome” products include Coca Cola v. Gemini Rising, Inc.[27], in which a poster company’s use of the familiar and trademarked Coca-Cola bottle outline with the words “Enjoy Cocaine” written in Coca-Cola’s distinctive script.[28] The court enjoined the company from manufacturing the posters, saying the defendants associated as “noxious substance” with the plaintiff’s “wholesome beverage” and caused actual confusion in the marketplace.[29] The defendant’s First Amendment defense was not accepted by the court, saying that the damage to the mark and to the mark owner’s goodwill and business reputation was a special circumstance in which the court may enjoin or restrain expressive material.[30]

Some writers are of the opinion that the opinion strikes the wrong balance between public and private interests[31], and artists and other creators of expressive works should be able to include trademarks and trademarked products as part of their works, especially where the line between commercial and non-commercial speech has been blurred.[32] This issue may not be finally resolved by the courts for all situations, so filmmakers should approach the use of trademarks in filmmaking with caution. As shown in the Dallas Cheerleaders and Coca-Cola cases, trademark owners are still acutely concerned with the use of their marks in “unwholesome” ways, and still aggressively police their marks when they are used in such a manner. George Lucas is a filmmaker who regularly sues for unauthorized uses of his trademarks from his films. There have been a number of cases in which he sued for unauthorized use of trademarks from his “Star Wars” movie. In Lucasfilms Ltd. v. High Frontier[33], the term “Star Wars” was used by a think tank to describe the Reagan administration’s Strategic Defense Initiative idea to shoot down missiles with space-based lasers. Critics, newspapers and the public began referring to the initiative a “Star Wars”. The court ruled that the trademark was not infringed, since it was not used on a product or service, but was used descriptively.[34] In another Lucas lawsuit however, Lucasfilm, Ltd. v. Media Mkt. Group, Ltd.,[35] George Lucas objected to an animated, X-rated film called “Star Ballz”. The movie, though crude and shoddily made, used elements from the original “Star Wars” movie and “’parodied” them.  Lucas objected not only to the “unwholesome” use of his trademarked characters and “light saber”, but argued that since it was animated and other children’s cartoon characters were also used, that it may be marketed to children. (In fact the trailer for the film was G-rated.)  The court sided with the filmmaker and against Lucas, saying that reasonable consumers would not be confused about the source of the X-rated film, and that “Star Wars” and “Star Ballz” would not be sold in the same outlets so the market for “Star Wars” would not be harmed.[36]

Sometimes merely the title of a film is claimed to have infringed on a famous mark, causing confusion as to the origin or the film. Such was the case in Rogers v. Grimaldi, MGM/UA,[37] a movie title case in which Ginger Rogers sued the filmmaker of “Ginger and Fred” for the use of her name. The court held that she could not sue for infringement because the title of the film was not likely to confuse consumers that Ginger Rogers was involved in or sponsored the production in any way.[38] The film was about two dancers who imitated Ginger Rogers and Fred Astaire, and the court felt that the title had artistic significance to the film. However, the court also cautioned that had the subject matter of the film not been relevant to the title, Ms. Rogers might have been successful in her infringement claim.[39] The filmmaker used the recognizable name of a famous dancer to evoke the subject matter of dancing in a nominative way, evoking the idea of the famous dance scenes of Ginger Rogers and Fred Astaire to put forth their artistic vision of the film. The use of the name was reverential, not disparaging, which may have swayed the court in its decision.

IV. Famous Buildings and Facades

The appearance of famous or landmark buildings and facades in a filmmaker’s shot has caused much consternation and discussion, not to mention the creation of myths in the filmmaking community. As with the use of copyrighted music, there is no time limit associated with an automatic finding of fair use of the famous building or trademarked product. It comes down to the same type of guidelines in copyright law, as set out above in the New Kids case. The use cannot be overly highlighted so as to suggest association or sponsorship of the work by the trademark holder, should be only enough to identify the authentic product, or in the case of a building, the location; and it should be in a situation where there is no other way to refer to the building or landmark other than by its proper name. The appearance of a famous building in a larger work such as a film, as opposed to a poster created that used the trademarked façade to sell posters of that building as such, should be deemed nominative and not an infringement of the mark. The most well-known example of this difference is in the case of Rock and Roll Hall of Fame and Museum, Inc. v. Gentile Products[40], in which an injunction was issued against a photographer who was selling posters bearing photographs of the Rock and Roll Hall of Fame. The district court found that due to the “extensive advertising and promotional activities of the Museum and building design trademarks, the public had come to recognize these trademarks as being connected with or sold by the Museum, its official licensees and/or official sponsors.”[41] The Rock ‘N Roll Hall of Fame case did involve the sale of a poster of the building alone, in the exact positioning of the logo used by the museum, from the front of the building. It was seen as cutting into and harming the market for similar posters of the museum, in the same position, sold by the museum. The building was used to sell a picture of the actual museum, not as just a part of the Cleveland skyline, as in a movie. However, the Sixth Circuit Court of Appeals did not see it the way the museum did. The court remarked that the building, though distinctive, was not used as a trademark at that time by the museum, and its existence as a public landmark further undermined its `fancifulness’ as a trademark.[42] The court did not see the design of the building as an indicator of source or sponsorship, but rather the defendant took a photograph of an accessible, well-known public landmark.[43] It then held the museum failed to project a consistent image of itself to the public, further undermining the premise that the museum used the building as a trademark, and remanded the case back to the district court, where the injunction was dissolved.[44]

A different twist on the use of famous buildings and facades came in the case of Sherwood 48 Associates v. Sony Corporation of America,[45] which was filed by the owners of Times Square buildings and the lessee of advertising space on those billboards in 2002 against Sony. The defendants, makers of the first Spider Man movie, digitally altered the images of the buildings and billboards to take out their advertisements and replace them with others for which the moviemakers solicited and received payment. The plaintiffs claimed that Sony had violated their trademark and trade dress rights, and that they had been harmed by the loss of advertising revenues. The suit said that advertisers contract for advertising space at Two Times Square not only as a result of the prestige ad favorable connotations associated with the building, but because the images of the building and their sign will be seen by billions of television viewers, internet users, movie goers, magazine and book readers, and others during the course of their contract with Sherwood.[46] Sherwood’s complaints included state law claims for trademark infringement as well as federal counts for trademark infringement and trespass, and alleged trademark rights in the image of the building, citing its “unique configuration and ornamentation of Two Times Square and (its) advertising and signage display”.[47] They claimed that the superimposition of the new advertisements over the contracted signs is likely to cause confusion, deception, and mistake as to the origin or source of the altered building and/or the advertising and signage display. The plaintiffs also raised a claim for trademark dilution under the New York anti-dilution statute.[48] The District Judge dismissed both federal and state claims, and Times Square’s owners appealed; the federal appeals court affirmed the dismissal of the federal trademark claims, but said they could file their trespass claims in state court since it was an “unsettled question of state law”. The case was dismissed before Sony could show that its digital alterations had “artistic relevance” to the movie and were therefore protected under the First Amendment.[49] I have doubts that this defense would have worked for Sony, since they used the altered signage in a very commercial way, the same way the plaintiffs who sold advertising space used their famous building. The use by the moviemaker was not a nominative one, since they sold their own ads to be seen by millions watching the movie, and took away the exposure of the existing ads that had already been paid for to be seen on that building. If Sony was allowed to continue replacing paid ads, the plaintiff owners were likely to lose revenue since major corporations would not want to contract with Two Times Square if their ads were not going to get the amount of exposure that they had contracted for. The claimed “artistic relevance” to the movie was diminished by the fact that these ads were NOT actually part of the famous building and could not be seen there from a public access point, as is the case with nominative uses of famous marks. The case shows the possible harm to mark holders in a kind of backwards way, since the moviemakers were taking out the marks and replacing them with their own paid advertisements. It also teaches that filmmakers will not help themselves to avoid trademark violations by digitally replacing famous marks on a building, due to the commercial purpose of trademarks of identifying the source of goods.

A filmmaker may want to do a parody involving a famous building to avoid infringement claims, but courts have weighed in on that defense as well. In the case of New York Stock Exchange v. New York, New York Hotel, LLC,[50] the Stock Exchange sued the hotel and casino for trademark infringement and trademark dilution when the casino used a replica façade of the New York Stock Exchange’s building with its logo, but changed the wording in the logo to “New York $lot Exchange” and “NY$E” for its frequent gambler’s club. The “parody” logo was also used on t-shirts and caps and other souvenirs given out by the club. The court found the actual registered logo of the New York Stock Exchange and its “NYSE” abbreviation to be distinctive and eligible for the Lanham Act’s anti-dilution protection. The District Court did not find the building itself, a historical landmark, to be inherently distinctive, but the Circuit Court of Appeals disagreed, finding that the building that housed the stock exchange, which consists of “a triangular pediment, displaying eleven bas-relief figures, that is supported by six Corinthian columns and topped by an attic, (and) also contains the words “New York Stock Exchange” on the frieze,[51] was neither generic nor descriptive of a stock market. The court’s discussion described the layout of the New York, New York Hotel and casino in Las Vegas, and how it used other famous New York images were used in a playful way to set the stage for its New York theme. The court said that it was obvious that the casino was engaged in a parody or humorous play on words that consumers would not mistake the modified marks for the real thing.[52] The casino actually modified some of the NYSE marks after this case was filed to “New York $lot Exchange” and “NY$E” instead of the actual marks. The Exchange’s New York state claims for dilution and tarnishment of their trademark, even with the defendant’s argument that casinos are actually listed on the stock exchange, were sent back to district court for further proceedings, since the Exchange wanted to preserve a reputation for integrity and transparency in the trading conducted on its floor.[53] The court’s reasoning points out to filmmakers that tarnishment need not be a seamy or unwholesome use of the mark, and arguments can be made by the mark owners for the reasons they do not wish to be associated with a particular use of their mark, ands why such uses may hurt their reputation.

Some moviemakers have successfully used the defense of fair use of copyrighted or trademarked images, as in the case that came out of the movie “Batman Forever”, in which copyrighted sculptures on a building were part of the backdrop for the film. Warner Brothers had obtained permission from the owners of the building before including it in their film, but the sculptor, who had designed four sculpted towers on the building, Andrew Leicester, sued the producers of “Batman Forever” claiming copyright infringement. Since the sculpture became a part of the building itself, the photographing of the building did not constitute infringement. The section, “Scope of exclusive rights in architectural works” provides that the copyright in an architectural work that has been constructed does not include the right to prevent the making, distributing, or public display of the pictures, paintings, photographs or other pictorial representations of the work, if the building in which the work is embodied is located in or ordinarily visible from a public place.[54]

Sometimes a filmmaker’s use buildings with sculptures for backgrounds is not favored by the courts, as in the case of the bas-relief sculpture by Frederick E. Hart that adorns the National Cathedral in Washington D.C. The use by Warner Brothers of a sculpture that substantially resembled his in the movie “The Devil’s Advocate” was seen as infringement. The movie showed the similar sculpture for twenty minutes of the feature length film, and this substantial amount of time combined with a part in the film in which the sculpture seem to move erotically swayed the court toward a finding of infringement. The case settled out of court and Warner Brothers was able to distribute the film in the home video market.[55] Some states also have Artist’s Moral Rights laws, which protect the artist from altered reproductions of their work which may negatively affect the reputation of the artist. This is the European tradition and has now been incorporated into United States law under the Visual Artists Rights Act of 1990 and various state moral rights statutes. The laws of this country stop short of the European versions and only protect the artist’s original works, except in New York, under the New York Authorship Rights Act, which purports to include a prohibition against altering, mutilating, defacing or modifying a work of art or reproduction of thereof.[56] However, this law may not be as useful in films, since the copyrighted work being used as a backdrop is not directly being “displayed, published, or reproduced as being the work of the artist.” These cases illustrate the delicate balance between filmmakers and other artists in the use of their work. The same guidelines for use should be kept in mind when using buildings, whether they include sculptures or not, as a background for your film, as with other trademarks. The type of use, whether it is disparaging or negative; the substantiality of the use, including the amount of time the image is shown; and whether the use is highlighted as in advertisements or trailers, which may lead to a presumed association or sponsorship of the film with the famous trademarked building, makes a difference in whether the use is seen as expressive and nominative, and thus allowed by the mark holder.

V. Set Dressing and Product Placement

Filmmakers have not only the macro-considerations of famous buildings and facades in their movies, but also the micro-considerations of copyrighted or trademarked items or images in their shots. Each frame must be scrutinized to make sure all clearances are completed for parts of the set dressing that may be the subject of a copyright or trademark. Even scenes or items visible on a television in a room are possible infringements if the rights holder sees or is made aware of the appearance in a film of his or her intellectual property. Although the quality of the shot makes a difference, whether the item is out of full focus in the background or is shown for a very limited time, there is still the chance of liability for the filmmaker. Several infringement cases have been decided against the filmmakers in instances of set dressing, some filed only because the rights holder was not consulted nor given credit in the movie for the creations used. In Ringgold v. Black Entertainment Television, Inc., Home Box Office, Inc.[57], an artist created a work of art entitled “Church Picnic Story Quilt” which depicted aspects of the Africa-American experience in the 1900s. Ms. Ringgold had sold the original quilt to a church in Georgia, but retained the copyright to the work. The church put it on display and created posters of the quilt which were sold in its gift shop for $20.00 each under a non-exclusive license; thousands of copies of the poster have been sold since 1988. The artist was watching the ROC television show on the BET network and saw a poster of her creation in the background of a church. The show was originally aired on a broadcast television network in 1992, and in October 1994 BET aired the show for the first time on cable television. Ms. Ringgold happened to watch a repeat showing of the episode and at that time became aware of the defendants’ use of the poster as part of the set decoration.[58] Ms. Ringgold sued the defendants for the unauthorized use of the poster as part of the set decoration for the episode of “ROC” under federal copyright law[59], and also alleged common law unfair competition and a violation of New York’s statute protecting artistic authorship rights.[60] The lower court in the Southern District of New York found for the producers of the show, saying that the use was “incidental and reasonable” and fell within fair use. The plaintiff’s claims for unfair competition were dismissed as being preempted by the Copyright Act, and declined to exercise jurisdiction over her state law claims. On appeal, the Second Circuit reversed the lower court, holding that the producer’s use of the poster did not fall within the fair use standard under federal copyright laws. Although the poster is never referred to by the actors and is in the background of the main action, and is only shown for a total of twenty-seven seconds in nine shots, the use was not “de minimis” or insignificant. The poster was not in perfect focus, but is plainly observable by the audience. The Second Circuit court refers to a regulation issued by the Librarian of Congress providing for royalties to be paid by public broadcasting entities for the use of published pictorial and visual works.[61] The Librarian distinguishes between a “featured” and a “background” display, setting a higher royalty rate for the former.[62] The court then remarks:

 

“… the Librarian has defined a “featured” display as “a full-screen or substantially full screen display

for more than three seconds,” id. § 253.8(b)(2), and a “background” display as “[a]ny display less

than full-screen or substantially full-screen, or full-screen for three seconds or less,” id. If defendants’ program were to be shown on public television, plaintiff would appear to be entitled to a “background” license fee for a “less than full-screen” display.”[63]

 

The poster was visible several times for four to five seconds, both in focus and out of focus, and the court held that such repetitive effect of the multiple views of the image reinforces the visibly significant aspect of decoration that the poster contributed to the set. The de minimis threshold for actionable copying had been crossed, and the Court remanded the case to the District Court for assessment by the fact finder of the four fair use factors in section 107 of the federal Copyright Act.[64] The court also said that the lower court should give consideration to the plaintiff’s claim under the New York Artists’ Authorship Rights Act[65], which stated that the defendants violated her statutory rights because they did not credit her as the creator of the story quilt.

In light of Ms. Ringgold’s state claim, one has to wonder whether she would have sued at all if she had been given proper credit by the producers of the television show. The case is very instructive for filmmakers because it sets out the boundaries of non-actionable use of a copyrighted item in set decoration, and also provides a strong incentive to ask permission of a rights holder and give credit for the use of his or her creation in a film.

The amount and substantiality of use of copyrighted photographs as a set decoration figured in a different result in the case of Sandoval v. New Line Cinema Corp.[66] New Line Cinema used reproductions of ten copyrighted but never published photographs taken by Jorge Antonio Sandoval in background shots for the film “Seven”. The photographs only appeared in the film for short lengths of time ranging from one to six seconds per shot, in a scene that lasted only one and a half minutes and was an hour and sixteen minutes into the film that was 123 minutes in total length.[67] The photographs were often obstructed from view by the actors and props in the scene.

The lower court dismissed Sandoval’s copyright infringement action and relied heavily on the analysis employed in the Ringgold v. Black Entertainment Television, Inc.[68], examining the four factors used in determining fair use: 10 the purpose and character of the use; 2) the nature of the copyrighted work; 3) the amount and substantiality of the portion used; and 4) the effect upon the potential market for the copyrighted photographs.[69] The District Court decided to dismiss the case without first deciding whether the use was “de minimis”, but the Circuit Court held that the use of the photographs in the movie was de minimis as a matter of law and affirmed the lower court’s judgment. Unlike in Ringgold, the court found that the copying of the photographs “fell below the quantitative threshold of substantial similarity”, because the photos were not “clearly visible” as the artwork was in Ringgold. The reproductions of Mr. Sandoval’s photographs as used in the movie were not displayed with sufficient detail for the average lay observer to identify even the subject matter of the photographs, much less the style used in creating them.[70] Although the plaintiff Sandoval claimed that the defendant film company violated his right to publicly display his photographs under the Copyright Act, but the lower court said that the photographs could not constitute a “public display” because they are not recognizable to the public.[71] Under the requirements of the fourth factor in determining fair use, the court stated that “ …the value of and market potential for his work is in no way usurped, since the public is not even aware after viewing Seven that they have had a glimpse of Sandoval’s work.”[72] As the use was deemed de minimis, no action for copyright infringement can be brought, and the issue of fair use was not necessary to determine. The Sandoval case was described as the first to establish the de minimis doctrine as a full defense to the unauthorized use of graphic works in motion pictures and television.[73] In an earlier case in which a movie company used a copyrighted artwork fashioned into a mobile for a baby’s crib in a film, the District Court in New York found that the limited view given in the movie to the mobile did not constitute a “copy” for purposes of a copyright infringement action.[74]

Although these three cases involved using copyrighted artworks to dress a movie set, filmmakers would do well to examine their facts in deciding on props to be used in their own movies. It is not unheard of in the annals of filmmaking to see a prop or part of a set being elevated to a symbol for the movie itself. This could elevate the prop into trademark status, as merchandising of objects from the film ensues. If the prop turns into a trademark identifying the film itself, a Lanham Act[75] suit could be brought by the creator of the prop if it is a copyrighted work such as a sculpture or photograph. Remember, the Lanham Act is intended to prevent consumer confusion as to the source of goods, and the artist could be using or intending to use the artwork as a trademark for his or her goods. Lanham Act also governs unfair competition and trademark dilution or tarnishment[76], and a prop used in a film in a certain way could leave the filmmaker open to a lawsuit.[77] Copyright and trademark rights are often overlapping and often both causes of action, in addition to doctrines of privacy and publicity and state laws protecting artist’s rights, should be considered in the context of clearing rights for items used in your film.

Product placement is sometimes seen as a panacea for filmmakers, a way to make extra money from their film or to raise funds for the production. Conceivably you can charge a trademark holder for the privilege of being selected for use in your film, but often the company holding the rights to the product does not desire an association with a smaller film. There have been films financed by a non-film company so that their products are featured prominently. This has already happened – Adidas bankrolled a movie entitled Goal! The Dream Begins which was about a Mexican-American boy who follows his dream to play professional soccer in Europe. Of course, all the products in the film were made by Adidas, and the real soccer teams featured in the film were sponsored by Adidas in real life.[78] The movie did not do that well at the Box Office, but a large company like Adidas probably used the film as a part of its advertising campaign, not expecting to recoup the money spent. The goal of Adidas was not to advance or support the creativity of the film, but just to sell its products. Filmmakers and the creative people who work with them on a movie may not want to turn their vision of a film into a mere commercial for a company who is willing to fund it. The issue of artistic control of such a commercialized movie may cause a filmmaker to think twice about giving up its creative ideas in favor of showing the product paying for the film. With a big budget movie, there are usually specific requirements for product placement such as use of the product and screen time, which are negotiated in advance. Ten seconds of screen time is a common minimum requirement, and the value received by the filmmaker is directly related to the screen time. Favorable lines from a lead actor are also valuable. A large studio will probably have as staff person to help obtain product placements. There are also companies who help independent filmmakers obtain product placement deals. Good Unit Production Managers maintain a list of product placement companies, such as International Promotions (www.productplacements.com) and Hollywood Product Placement (www.hollywoodproductplacement.com).[79] However, the owners of a famous mark or product probably would not be as receptive to allowing its use in a small independent film, much less pay for prominent placement. More likely a trademark holder would not want to share its goodwill and reputation by allowing the indie film to “piggyback” onto it with product placement, especially in the advertising or trailers for the film. There has been special concern recently with the YouTube appearance of trademarks; large media companies routinely demand the removal of clips from shows, and there is double trouble if the material uploaded to YouTube contains copyrights or trademarks that a holder may object to. For independent films, product placement could take the form of the company supplying food or drinks for the cast and crew, if the actors drink the brand on screen, or the filming takes place in their establishment. Some entrepreneurs may want to have their product featured in a film, no matter how small the audience; a local filmmaker may want to help out a local concern by featuring its product, which may be a good deal for all involved. Realistic expectations and achievable goals are the best bet for an independent filmmaker contemplating the use of product placement. Matching the size and reach of your film to a similarly situated product will be the key to a good relationship. Perhaps a fledgling firm just launching its product would like to help out a smaller film that has a subject matter that fits its target audience. In turn, a filmmaker may want to associate its film with that target audience by featuring or placing the firm’s product or service in its film. The larger film may not reach the target audience of a product as well as a smaller film more focused on a certain niche audience. 

© 2011 Mary Ellen Tomazic


[1] Michael C. Donaldson, Clearance & Copyright 427 (3d Edition, Silman-James Press 2008).

[2] See 15 U.S.C. §1125 (a)(1)(A) (providing a cause of action for a confusion claim).

[3] See 15 U.S.C. §1125 (a)(1)(b) (providing a cause of action for a misrepresentation claim).

[4] O.R.C. 2913.34(F)(1)(a)(ii), which provides for criminal penalties for trademark counterfeiting.

[5] 15 U.S.C. § 1125(a).

[6] 15 U.S.C. § 1125(c)(2).

[7] J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 2:39 (4th ed. 1999).

[8] See, e.g., Dallas Cowboys Cheerleaders v. Pussycat Cinema, Ltd., 604 F.2d 200 (2d Cir. 1979).

[9] 15 U.S.C. § 1125(c)(2)(c).

[10] See, e.g. Pillsbury Co. v. Milky Way Prods., Inc., 215 U.S.P.Q. (BNA) 124 (N.D. Ga. 1981) (noting that Georgia’s anti-dilution statute requires only a likelihood of dilution). Ohio does not have an anti-dilution statute; O.R.C. 2913.34(F)(1)(a)(ii), the criminal Trademark Counterfeiting law requires a likelihood of “confusion or mistake or to deceive other persons”.

[11] See, e.g., Cal. Bus & Prof. Code § 14320(a) (West 2005).

[12] 15 U.S.C. §1127; 15 U.S.C. §1125(c) added by Pub. L. No. 104-98, § 3(a)(1996).

[13] Trademark Dilution Revision Act, Pub.L. No. 109-312 § 2(1).

[14] 15 U.S.C. § 1117(a), §1118.

[15] 15 U.S.C. § 1125 (c)(3).

[16] McCarthy, supra note 6, at § 11:47.

[17] Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).

[18] 15 U.S.C. § 1051 et seq.

[19] New Kids on the Block v. News Am. Pub. Inc., 971 F.2d 302 at 308 (9th Cir. 1992).

[20] Wham-O v. Paramount Pictures Corp., 286 F.Supp.2d 1254 (N.D. Cal. 2003).

[21] Id.

[22] James G. Sammataro, Esq., The Increasing Judicial Tolerance Towards the Unauthorized Display of Trademarks in Motion Pictures, 4 Andrews Intellectual Property Litigation Reporter 13 (June 7, 2005).

[23] 604 F.2d 200 (2d Cir. 1979).

[24] Id. (citing Lloyd Corp. v. Tanner, 407 U.S. 551, 567 (1972)).

[25] Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994).

[26] Id.

[27] 346 F. Supp. 1183 (E.D.N.Y. 1972).

[28] Id. at 1186.

[29] Id. at 1188-89 & n. 5 (noting that customers had actually written to Coca-Cola demanding an explanation why the soft-drink company was promoting illegal drug use).

[30] See Id. at 1192-93.

[31] Policing the Border Between Trademarks and Free Speech: Protecting Unauthorized Trademark Use In Expressive Works, Pratheepan Gulaskaram, 80 Wash. L. Rev. 887, 900 (November 2005).

[32] Id. at 887.

[33] 622 F.Supp. 931 (D.D.C. 1985).

[34] Id.

[35] 182 F. Supp. 2d 897, 901 (N.D. Cal. 2002).

[36] Id.

[37] 875 F.2d 994 (2d. Cir. 1989).

[38] Id. at 1001.

[39] Id.

[40] 934 F.Supp. 868 (N.D. Ohio 1996).

[41] Rock and Roll Hall of Fame and Museum, Inc. v. Gentile Prods., 134 F.3d 749, 754 (6th Circuit 1998).

[42] Id. The case was heard in 1996, which was only a year after the building was finished, so it did not have much time to serve as trademark.

[43] Id.

[44] Id at 756. On remand the district court found that the museum had not used an image of the museum as a trademark, and granted defendant’s motion for summary judgment. 71 F.Supp.2d 755 (N.D. Oh. 1999).

[45] 76 Fed. Appx. 389, 2003 U.S.App. LEXIS 20106 (2d Cir. 2003).

[46] Complaint, Sherwood 48 Associates v. Sony Corporation of America, 02 CV 2746 (April 9, 2002), ¶ 23.

[47] Id. ¶ 50.

[48] Id. ¶ 74-77; NY General Business Law §360-1.

[49] Sherwood 48 Associates v. Sony Corp., 76 Fed. Appx. 389, 2003 U.S.App. LEXIS 20106 (2d Cir. 2003).

[50] 69 F.Supp.2d 479, 494 (S.D.N.Y.1999); affirmed and reversed in part, 293 F.3d 550 (2d Cir. 2002).

[51] 293 F.3d 550 (2d Cir. 2002).

[52] Id.

[53] Id.

[54] 17 U.S.C. § 120 (2010).

[55] Larry Witham, Sculptor Backed on `Advocate’ Lawsuit, WASHINGTON TIMES, Feb. 11, 1998, at A8; see also John T. Aquino, IP Issues Concerning Art and the Movies, 6 NO. 1 INTELL. PROP. STRATEGIST 1 (1999).

[56] N.Y. Art. & Cult. Aff. Law § 14.03 (1), (2).

[57] 40 USPQ 2d 1299 (SDNY 1996)

[58] Ringgold v. Black Entertainment Television, Inc. Home Box Office, Inc., 126 F.3d 70 (2d Cir. 1997).

[59] 17 U.S.C. § 106 (1994).

[60] N.Y. Arts & Cult. Aff. Law § 14.03 (McKinney Supp. 1995).

[61] 37 C.F.R. § 253.8 (1996) (implementing 17 U.S.C. 118(b)).

[62] Id. § 253.8(b)(1)(i)(A), (B).

[63] 126 F.3d 70 (2d Cir. 1997).

[64] 17 U.S.C. § 107.

[65] Id. footnote 60.

[66] 973 F.Supp. 409 (S.D.N.Y. 1997); affirmed 147 F.3d 215 (2d Cir. 1998).

[67] Internet Movie Database: <http:imdb.com/Title?0114369>.

[68] Id. fn. 58.

[69] Sandoval v. New Line Cinema Corp., 973 F.Supp. 409, 412-414 (S.D.N.Y.1997).

[70] Sandoval. New Line Cinema Corp., 147 F.3d 215 (2d Cir. 1998).

[71] 973 F. Supp 409, 412 (S.D.N.Y 1997).

[72] Id. at 414.

[73] Website of Pryor Cashman LLP, Attorneys at Law, http://www.pryorcashman.com/f-39.html

[74] Amsinck v. Columbia Pictures Industry, Inc., 826 F. Supp. 1044 (S.D.N.Y. 1994).

[75] 15 U.S.C. § 1125.

[76] 15 U.S.C. § 1114.

[77] See, e.g. Wham-O v. Paramount Pictures Corp., 286 F.Supp.2d 1254 (N.D. Cal. 2003).

[78] Michael C. Donaldson, Clearance and Copyright 265 (3d Edition, Silman-James Press 2008).

[79] Id. at 266.

Legally Obtaining Rights to Music for Your Film

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 19th 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


[1] 17 U.S.C. § 106 (2006).

[2] Id.

[3] 17 U.S.C. §114(b) (2006).

[4] 17 U.S.C. §115 (2006).

[5] 17 U.S.C. § 115 (b) (2006).

[6] 17 U.S.C. § 115 (c)(3)(B)

[7] Sound Recording Act of 1971, Pub. L. No. 92-140, 85 Stat. 391 (1971) (codified at 17 U.S.C. § 102.

[8] 17 U.S.C. § 301(c) (2006).

[9] Beethoven, Symphony No.1 in C Major and Symphony No.2 in D Major, George Szell, The Cleveland Orchestra (Epic records)

[10] Sony remastered and released Beethoven Symphony No 1 on January 29, 2002 under its “Sony Classical Essential Classics” label. Few of the monaural recordings of Szell and the Cleveland Orchestra have been reissued, according to George Szell’s Myspace page.

[11] Sonny Bono Copyright Term Extension Act of 1998, Pub. L. No. 105-298, 112. Stat. 2827 (1998).

[12] 17 U.S.C. §304 (b) (2005).

[13] 17 U.S.C. §304 (a)(3)(B) (2005).

[14] 17 U.S.C. §304 (c)(3) (2005).

[15] 17 U.S.C. §304 (c)(3) (2005).

[16] 17 U.S.C. §304 (a)(4)(A) (2005).

[17] 17 U.S.C. §304 (c)(6)(A) (2005).

[18] http://www.ascap.com/ace/

[19] Clearing House, Inc., A Guide to Clearing Music in Audio/Visual Mutimedia Products, 467 PLI/PAT 783, at 797 (1997).

[20] Clearing House, Inc., A Guide to Clearing Music in Audio/Visual Mutimedia Products, 467 PLI/PAT 783, at 791 (1997); Sam Adler, Melody Lingers On, Soundtrack Album Agreements, 13 No. 1 Ent. L & Fin. 1 (1997).

[21] Sam Adler, Melody Lingers On, Soundtrack Album Agreements, 13 No. 1 Ent. L & Fin. 1 (1997).

[22] Id.

[23] Michael London, Legal Snarl, Springsteen or Seger?, L.A.Times, February 27, 1985.

[24] IMDB Trivia for Mask (1985), http://www.imdb.com/title/tt0089560/trivia.

[25] Vincent D. Paragano, Making Money from the Airwaves: The Basics of Music Licensing, 183-APR N.J. Law. 10 at 12 (March/April 1997).

[26] Id.

[27] 68 F.3d 621, U.S.P.Q.2d 1449, 1995 Copr.L.Dec. P 27 at 460 (1995).

[28] Id. at 631.

[29] Brown v. Twentieth Century Fox Film Corporation, 799 F.Supp 166, 26 U.S.P.Q.2d 1626 (1992).

[30] Id. at 170.

[31] Id. at 171.

[32] Id. at 172.

[33] Kimberlee Weatherall, Fear Factor: Films and the Copyright Clearance Jungle (September 30, 2005), http://www.artslaw.com.au/articles/entry/fear-factor-films-and-the-copyright-clearance-jungle/

[34]Copyright Clearing House, Inc., A Guide to Clearing Music in Audio/Visual Mutimedia Products, 467 PLI/PAT 783 at  786 (1997); Joy R. Butler, Five Good Reasons to Clear Rights Properly and to Request Permission When Needed, (Jan. 08, 2008), http://www.guidethroughthelegaljungleblog.com/2008/01/five-good-reaso.html. See also Part III of this paper on Errors and Omissions insurance.

[35] Themusicbridge.com.

[36] PrimaryElements.com

[37] Tamara Krinsky, Notes to play by, a primer on music and independent film, 25 The Independent Film and Video Monthly 35 at 2. (March 1, 2002).

[38] Kimberlee Weatherall, Fear Factor: Films and the Copyright Clearance Jungle (September 30, 2005), http://www.artslaw.com.au/articles/entry/fear-factor-films-and-the-copyright-clearance-jungle/.

[39] Id.

[40] Melinda Newman, I Want My Mobile TV, Billboard, July 8, 2006, at 32.

[41] Newman, at 32.

[42] Vincent D. Paragano, Making Money from the Airwaves: The Basics of Music Licensing, 183-APR N.J. Law. 10, 12 (March/April 1997).

[43] www.ascap.com (ACE title search.)

[47] Tamara Krinsky, Notes to play by, a primer on music and independent film, 25 The Independent Film and Video Monthly 35, at 5. (March 1, 2002).

[48] Paragano, at p.12.

[49] One website offering royalty-free compositions is PrimaryElements.com.

[52] Krinsky, at p.2.

[53] Sam Adler, Melody Lingers On, Soundtrack Album Agreements, 13 No. 1 Ent. L & Fin. 1 (1997).

[54] Adler, at p. 1, quoting Pat Lucas, head of EMI Music Publishing’s film and soundtrack division.

[55] Id.

[56] Paragano, at p.13.

[57] Adler, at p. 3, quoting Michael Selverne, a partner with New York’s Selverne, Flam, Mandelbaum & Mintz, LLP.

[58] Winnie Wong, Lights, Cameras, Insurance: I need Errors & Omissions coverage N OW! Film Independent (July 28, 2009) www.filmindependent.org/content/lights-cameras-insurance-i-need-errors-omissions-coverage-now.

[59] Id.

[60] Clearing House, Inc., A Guide to Clearing Music in Audio/Visual Mutimedia Products, 467 PLI/PAT 783, 788 (1997).

[61] Id.

[62] Winnie Wong, Lights, Cameras, Insurance: I need Errors & Omissions coverage NOW! Film Independent (July 28, 2009) www.filmindependent.org/content/lights-cameras-insurance-i-need-errors-omissions-coverage-now.

[63] Deborah L. Stein, Hollywood’s Spin on Business Interruption Insurance, L.A. Daily Journal (1-20-2010).

[64] Id.

[65] Id.

[66] Id.

[67] Copyright Clearing House, Inc., A Guide to Clearing Music in Audio/Visual Mutimedia Products, 467 PLI/PAT 783, 786 at 791 (1997); Joy R. Butler, Five Good Reasons to Clear Rights Properly and to Request Permission When Needed, (Jan. 08, 2008), http://www.guidethroughthelegaljungleblog.com/2008/01/five-good-reaso.html.

[68] 17 U.S.C. § 504(c) (2005).

[69] 17 U.S.C. § 503(a)(1)(B) and (C) (2005).

[70] Copyright Clearing House, Inc., at 791.

[71] Joy R. Butler, Evaluating Risk of Using Copyrighted Works Without Permission, (October 25, 2007). http://www.guidethroughthelegaljungleblog.com/2007/10/evaluating-risk.html.

[72] Joy R. Butler, Five Good Reasons to Clear Rights Properly and to Request Permission When Needed, (Jan. 08, 2008), http://www.guidethroughthelegaljungleblog.com/2008/01/five-good-reaso.html.

 

[73] 17 U.S.C. § 107 (2005).

[74] Id.

[75] Id.

[76] 510 U.S. 569, 114 S.Ct. 1164 (1994).

[77] Campbell, at 572.

[78]Id., at 581.

[79]Id., at 574.

[80] Id., at 585, quoting Sony Corp. v. Universal Studios, Inc., 464 U.S. 417, 451.

[81] Campbell v. Acuff-Rose Music, Inc., 972 F.2d 1429 at 1442 (1992).

[82] 17 U.S.C. §107 (4).

[83] 510 U.S. 569, at 587.

[84] Leibovitz v. Paramount Pictures Corp., 137 F.3d 109 (2d Cir. 1998).

[85] Id.

[86] 109 F.3d 109 (9th Cir. 1997).

[87] Id.

[88] Alan R. Friedman, Copyright Fair Use: A Comment On the Parody Defense, 242 NYLJ No. 74, October 15, 2009.

[89] 410 F.3d 792, 2005 Fed. App. 0243A, 74 U.S.P.Q.2d 1865 (2005).

[90] Id. at 801.

[91] Id. at 804.

[92] Id. at 801.

[93] 555 F.Supp.2d 310 (S.D.N.Y. 2008).

[94] Id.

[95] Id.