The film industry has expanded well beyond traditional studios, as modern technology provides anyone with a phone, the ability to shoot and post videos online for online public consumption. At the same time, new financing methods have opened the door for more filmmakers to bring their projects to life. However, as more and more new talent rises through the industry, I am hearing of more people who are unsure of the legalities of including other peoples’ intellectual property as part of their project.
If you walk around the streets of New York City for long enough, you will surely come across a group of people shooting a video, or taking photos in front of a piece of art. If it’s a professional photographer, have they thought about whether they need permission from the creator of the art before publishing the photos? Does the video group need permission from people walking by in order to use that footage? What about the clothes the subjects are wearing?
You should embark on creating your movie only under the auspices of an expert intellectual property attorney, who can guide you and be there to answer questions on the spot. There are also clearance firms that will review your screenplay (and, even better, the resultant motion picture) with a fine tooth comb. And let’s not forget that (absolutely necessary) general liability and errors and omissions insurance policy just in case something gets through the cracks.
Nevertheless, while the following is not specific enough to rely upon when encountering genuine legal questions, below is a general guide that might help you navigate the process.
But first, a note about permissions. Get them in writing. Include the right to use whatever it is you are getting permission to include in the film and all exploitations thereof (including, without limitation, publicity, marketing and advertising), in all media, worldwide and in perpetuity. Get a “release” — so that they cannot make any claims based on the subject use in the film. Prohibit the right to obtain injunctive or equitable relief in case of dispute — you don’t want to give them the right to shut down the film (add that money damages at law shall be a suitable remedy).
I. THE RIGHT OF PUBLICITY
The right of publicity protects one from having his or her likenesses used “for advertising purposes”, or “for the purposes of trade…” which will most likely apply to protect someone who might have a commercially valuable name, face, or other aspect of their personal identity.
In general, it’s OK if a celebrity’s identity is used, as long as it is not to sell a product. If a character happens to wear a Dolly Parton t-shirt, that may be OK (but see below re: copyright). However, if you try to sell tickets by calling your piece “A movie Dolly Parton would love” it’s likely that infringes upon her right of publicity. You would be trying to sell your movie by leveraging the influence Dolly Parton has over her fans. Both celebrities and private people may be able to bring claims for infringement of their rights of publicity, but celebrities will likely have an easier time proving such a claim, because they have more evidence to establish that their likeness actually has some commercial value.
However, a right of publicity claim is less likely to be successful in a situation where someone is portrayed in an unauthorized documentary or other non-fictional use. Courts have upheld the use of one’s likeness in connection with the reporting of newsworthy events, finding that such use is protected by the first amendment. Courts tend to ignore any profit motive in connection with such reporting, as all news is inherently a business at a certain point, so it’s harder to prove that one’s likeness is being used solely for the value it adds to the project.
II. TRADEMARKS/ TRADENAMES/ LOGOS
Trademarks identify goods and services, and they may incidentally appear in a film in the form of brand logos on cars, clothing, and other items.
Brand Logos (e.g., a brand of soda): When the portrayal of a brand logo is minimal and incidental, e.g. it does not advance the actual story, it is protected under the concept of “Nominative Fair Use.” This covers situations where a Trademark is being used solely to identify the item itself. For example, in a scene at a bar, one most likely does not need to blur any alcohol labels in the background, as long as they play no part in the actual story. The analysis is the same for the use of logos on clothing, whether from the clothing brand, or, for example, a band logo. Lastly, in a scene with characters walking along a city street, clearance is not required to depict the logos on the cars in the background.
When is it not OK? It is likely not OK to depict an unhealthy redneck as always eating at McDonalds, working at McDonalds, and wearing a McDonalds T-Shirt or logo on his clothing (if such clothing exists). At the same time if you film him wearing Nike sneakers, that may very well be OK, as long as there is not undue attention on the brand logo (that is, more attention than necessary to film him as a person wearing shoes).
Generally, clearance is required for any copyrightable expression that finds its way into your film. However, there are a few exceptions:
a. Incidental usage — if a character is being chased in a museum, paintings will whoosh by since they are the wall.
b. Public Domain — generally, a copyright lasts for the life of the author + 70 years. If not renewed, a work falls into the public domain, where it is no longer protected by Copyright.
c. Fair Use — see Section below.
Architecture, furniture and Fashion: Mostly because of (a), above, but even if they remain seen on screen for more than a few fleeting seconds, the clothes worn by your characters, the architecture of the edifices see on screen, and the design of the furniture your characters sit on (or otherwise interact with) can generally be featured without having to get clearance.
Music is protected by two copyrights, one in the composition (and, if applicable, lyrics, which may be its own copyrightable work), and one in the given recording of a composition. You must always obtain the rights to both, that is, all the rights attendant to all the music being incorporated into a film, unless a specific exception applies.
You may not need to worry about getting the rights to a given recording of a song if one of your cast members is singing it. Presumably you have obtained ownership of the results and proceeds of the casts’ services, and have agreements with the parties playing instruments, recording the sounds and holding the camera — you are the owner of this recording (so all that’s left is getting a proper license in place for the music and lyrics).
One agreement with the composer (the “Composer Agreement”) is usually enough to cover all the musical composition composed by that composer, and these days they usually also are the ones recording the music, so you would own the sound recording rights as well, via your Composer Agreement.
FAIR USE DEFENSE
Sometimes the infringement of a Copyright may nevertheless be protected by a Fair Use Defense. However, note that this is a defense, meaning that one would raise it in court after you are already being sued for infringement.
The 4 factors used to determine whether certain use qualifies as Fair Use are: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect on the potential market for or value of the copyrighted work. To determine whether your use qualifies as Fair Use, important questions to ask include: How much of the original, copyrighted work is being used? Is the Copyright being included in a work being sold commercially? How much of your new work is made up of the original, copyrighted work? Will your use compete with the original work? There is no formula for determining whether your use will meet the threshold for “fair use”, as the more the better, but the only way to completely eliminate the risk of someone suing for infringement would be to obtain permission prior to any usage.