Copyright Law for Video

A Presentation by Attorney David M. Slater

© 2014 David M. Slater. All rights reserved.

www.davidmslater.com

Legalese

Disclaimer: No attorney client relationship is created with this presentation and no legal advice has been rendered. This is for general informational purposes only and does not apply to any specific set of facts which have been reviewed by me. The information contained in this presentation has not been fully verified and is not necessarily accurate or reliable in all instances and jurisdictions. Always hire a licensed attorney to represent your legal interests.

-The Law Offices of David M. Slater

What is Copyright Law?

• The copyright law is derived from the US Constitution. The Copyright Clause of the Constitution (Art.1, § 8, Cl. 8) empowers Congress:

To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

• The last major amendment of the copyright law was The Copyright Law of 1976 (Title 17 of the US Code). Federal copyright law exclusively governs copyrights and preempts state laws.

What is Copyright?

Title 17, § 102. Subject matter of copyright: In general

(a) Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. . .

Copyright – Exclusive Rights of Owner

Title 17, § 106. Exclusive rights in copyrighted works (emphasis added)

Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:

(1) to reproduce the copyrighted work in copies or phonorecords;

(2) to prepare derivative works based upon the copyrighted work;

(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;

(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;

(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and

(6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.

What Copyright Is Not

There are three major types of Intellectual Property (IP): Copyrights, Trademarks and Patents. Each is protected by its own set of laws:

• Copyright laws protects certain original expressions of ideas.

• Trademark laws protect trademarks, which are recognizable signs, designs or expressions that identify products or services of a particular source.

• Patent laws protect inventions which are products or processes designed to solve specific technological problems.

Copyright Categories

Works of authorship include the following categories (emphasis added):

(1) literary works;(2) musical works, including any accompanying words;(3) dramatic works, including any accompanying music;(4) pantomimes and choreographic works;(5) pictorial, graphic, and sculptural works;(6) motion pictures and other audiovisual works;(7) sound recordings; and(8) architectural works.

Idea/Expression Dichotomy

Copyright law protects specific expressions of ideas, but not the ideas themselves.

A movie describing the story and characters of a crime family, for example, is copyrightable. It may not be reproduced or adapted without the author's permission. But the general idea of a crime family (which is an idea rather than a specific expression) is not copyrightable. Another author is free to describe the same general idea in their own film without infringing on the original author's copyright.

However, it is not always easy to separate ideas from the expression of ideas. As Judge Learned Hand observed:

Obviously, no principle can be stated as to when an imitator has gone beyond copying the ‘idea,’ and has borrowed its ‘expression.’ Decisions must therefore inevitably be ad hoc.” Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir. 1960).

Some General Copyright Principles

• Originality Requirement. Works that are not "original works of authorship fixed in any tangible medium of expression" are not subject to copyright. So unoriginal works (like a re-typing of the Bible) and unfixed works (like an unrecorded improvised performance) are not subject to copyright.

• Facts. Facts are not copyrightable, but creative compilations of facts are copyrightable.

• Not Copyrightable: typeface designs, fashion designs, useful articles (lamps, computer monitors, bathroom sinks), blank forms, titles, names, short phrases, slogans, lists of ingredients and contents (e.g., recipes with no creativity), URLs, links, domain names, band names and works by the federal government. But note that some of the foregoing may be protected by trademark and design patent laws.

Fair Use, Parody, and First Sale Doctrine

• The Fair Use Exception (17 U.S.C. § 107) states that "the fair use of a copyrighted work ... is not an infringement of copyright." There are four factors that must be assessed to determine whether a particular use is fair. (More about this later)

• Parody is not an infringement of copyright. Parody "is the use of some elements of a prior author's composition to create a new one that, at least in part, comments on that author's works." Campbell v. Acuff-Rose Music, Inc. That commentary function provides some justification for use of the older work. A satire, on the other hand, is not targeted at the work borrowed from, and does not require use of the original work to make its point.

• The First Sale Doctrine (17 U.S.C. § 109) is a limitation on the rights of copyright holders to prevent the distribution and display of copies of their works. The owner of a particular copy is entitled to "sell or otherwise dispose of the possession of that copy" and to "display the copy publicly ... to viewers present at the place where the copy is located."

Copyright Registration and Notice

• Since 1989, when the US joined the Berne Convention, copyright registrations and notices are no longer required for copyright protection. The copyright to a work is automatically created upon the fixation of the work in a tangible medium.

• However, utilizing a copyright registration and notice will often afford greater damages in a federal infringement action.

• A good form of copyright notice is:

© 2014 John Doe. All rights reserved.

Duration of Copyright

• Works created in or after 1978 are extended copyright protection for a term ending 70 years after the death of the author.

• If the work was a work for hire (e.g., those created by a corporation) then copyright persists for 120 years after creation or 95 years after publication, whichever is shorter.

Who Owns the Copyright to a Video?

Generally, if a video does not meet the requirements of a “work made for hire,” the copyright to the video is owned by the person or organization that shot it.

But, in the absence of a written agreement, the client for whom the video was shot probably has certain implied contractual rights to use the video for its intended purpose.

Work Made For Hire Doctrine

In order for a party other than the videographer to be the “author” of the copyright in a video, the video must be made as a “work made for hire.” There are only two ways that this can be done:

1. The video is prepared by an employee within the scope of his or her employment; or

2. The video is made as a “specially ordered or commissioned work made for hire” pursuant to a prior signed written agreement.

Transfer of Rights

• If a video does not meet the requirements of work made for hire (i.e., it was not created in the scope of employment or as a specially commissioned work), the videographer, as the author of the video, can still transfer, assign, or license some or all of the rights to the video.

• But, the videographer still remains the “author” of the video, and therefore has a right to terminate any such transfers between 35 and 40 years after the date of transfer (or publication). Clients do not want their videographers to have such termination rights, and therefore prefer that a video be created as a work made for hire for the client, so that the client is the author of the video, not the videographer.

Copyright Infringement

A claim of copyright infringement consists of the following two elements:

1. Ownership of the copyright in a work; and

2. Proof of copying or other violation of the owner’s exclusive rights in the work.

Infringements can be direct, contributory, or vicarious. Vicarious infringement only requires that the defendant received a financial benefit and was able to supervise the infringing activity. It does not require that the defendant had knowledge of the infringing activity.

Copies in Scripted v. Unscripted Programs

• Uses of decorative works such as posters, paintings, sculptures or photographs in scripted television programs or movies may infringe the copyright of such works if they are clearly recognizable and shown for more than a de minimis amount of time. A producer will usually “clear” such uses because they are creating the set and adding props.

• But, the risk of liability for this type of copying in news, reality, and documentary programming is much lower. In this case, producers are allowed to “take the world as they find it.” Thus, a teenager in a documentary or news story does not have to change her t-shirt because it has a copyrighted design on it. And a story about a nightclub does not have to remove the music that was playing over their speaker system. (So long as the producer did not select the t-shirt or music).

Drawings

• Producers of the film 12 Monkeys used an artist’s drawing as the basis for creating a three-dimensional set. The Court enjoined the film, holding that the artist would likely prevail on the merits of his infringement action. Woods v. Universal Studios, 920 F.Supp 62 (SDNY 1996).

• An artist lost an infringement action on de minimis grounds where one of his medical drawings appeared in a Nextel commercial for 10 seconds out of focus in the background and the other appeared for 7 seconds in closeups that did not focus on the drawing but the words around it. Gordon v. Nextel, 345 F3d 922 (6th Cir 2003).

Film and Television Clips

• A producer generally cannot use a film or television clip without the permission of the copyright holder and actors unless such use is protected by the fair use doctrine.

• The copyright owner of the movie The Story of G.I. Joe did not prevail against news outlets for using film clips of Robert Mitchum from the movie for their obituaries of him. The court held that the public would be hindered by denying defendants’ fair use defense. Video-Cinema Films v. Cable News Network, 98 CIV. 7128 (SDNY 11/28/2001)

Photographs

• Producers should be very cautious about using photographs without written permission as their unauthorized use is heavily policed by copyright owners. A fair use defenses for the unauthorized use of a photograph is weaker because the entire photograph is used instead of just a portion of it. A stronger fair use defense can be asserted when using just a screen grab, film frame, or short film clip from a movie or television show because it is not using the entire copyrighted work.

• A court held that the use of 10 photos in the movie Seven was so fleeting, obscured and out of focus, that they were virtually unidentifiable and thus not infringements. Sandoval v. New Line Cinema Corp. 147 F.3d 215 (2d Cir. 1998).

Posters, Paintings, and Sculptures

• An artist prevailed on her infringement claim against a network that used her decorative poster to dress the set of a sitcom. The poster appeared onscreen for only 26 seconds.The court held that the producers had used the poster “for precisely a central purpose for which it was created—to be decorative” and that it was a use for which the artist could have obtained a licensing fee. Ringold v. Black Entertainment Television, Inc., 126 F.3d 70 (2d Cir. 1997)

• In a scene from The Devil’s Advocate, starring Al Pacino and Keanu Reeves, Warner Brothers used a bas-relief sculpture containing human-like figures that writhe and squirm. The sculpture, however, was copied without permission from one that was hanging in the National Cathedral in Washington, DC. The artist sued for copyright infringement and the case was settled out of court. Hart v. Warner Bros. Inc. 1:97 cv 1956 (E.D. Va. 12/4/1997)

Written Material

• Using more than de minimis amount of someone’s writings without permission could be an infringement.

• Short quotes from books and poems are generally protected by fair use so long as they are not the “heart of the work.”

• Headlines and short quotes from newspaper and magazine articles are generally protected by fair use.

• The full front page of a newspaper or a whole magazine cover is protected by fair use provided it is timely and directly relevant to the context of showing it. But using out-of-date covers may not be protected by fair use.

Music

In general, all music that is used in a production must be licensed. The only possible exceptions may be if: (i) the music is naturally and incidentally occurring in the background of a news, reality or documentary program; or (ii) the music is protected by fair use (e.g., an educational documentary about the Beatles could probably show clips of the Beatles performing their music, but probably could not use Beatles music as a background soundtrack.)

Music infringements are aggressively policed by copyright owners.

Architecture

• 17 USC § 120 (a): The copyright in an architectural work that has been constructed does not include the right to prevent the making, distributing, or public display of pictures, paintings, photographs or other pictorial representations of the work, if the building in which the work is embodied is locate in or ordinarily visible from a public place.

• But, beware of using decorative, non-utilitarian gargoyles, hand carvings, painted frescoes, graffiti, and other design elements which are physically or conceptually separable from the building itself. An artist sued Warner Bros. for showing his four artistic towers that were attached to the top of a building in Batman Forever. The court, however, denied the infringement claim, holding that the towers were “part of the architectural work.” Leicester v. Warner Bros., 232 F.3d 1212 (9th Cir. 2000)

Clothing and Makeup

Clothing is considered a “useful item” and therefore its design is not protected by copyright. However, certain artistic aspects of clothing may be copyrightable if it “incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 USC § 101.

Makeup designs that are original and creative, such as those used for the actors in the Broadway musical Cats, are subject to copyright protection. Carell v. Shubert Org., Inc., 104 F.Supp.2nd 236 (SDNY 2000). But the usual application of makeup is generally not copyrightable.

Remedies for Infringement

• Injunction – This can destroy the financial viability of a film.

• Monetary Damages - $750 to $30,000 per work infringed. Wilful infirngements increases awards to $150,000. The prevailing party is entitled to costs and attorney’s fees.

• Criminal Infringements – Willful infringement for profit are subject to penalties of fines and imprisonment of up to three years, depending on the number and value of copies made.

Public Domain

Works can be in the Public Domain for the following reasons:

1. They were created for the Public Domain.e.g., open code software, most political posters, creative commons licenses.

2. Their copyright protection has expired. As of 2014, all American works created prior to 1923 are in the Public Domain.

A common misconception is that anything on the internet is in the public domain and can be used without permission. Not true!

Fair Use

17 USC § 107 - Limitations on exclusive rights: Fair use[T]he fair use of a copyrighted work…for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—

(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.

The Four-Factor Test of Fair Use

The four-factor test of Fair Use requires one to weigh the four different factors in determining whether a proposed usage is protected by Fair Use. So the test, to the extent it requires a “weighing of factors” is not a bright-line test on what is acceptable or not, but a weighing test that requires an individual evaluation on a case-by-case basis. However, a body of case law interpreting these Fair Use factors has developed over the last 20 years, and familiarity with these decisions can help a producer see what factors are important for determining whether certain uses will be protected by Fair Use (some helpful links to summaries of these cases are listed at the end of this presentation).

First Factor – Transformative Use

The most important factor for determining fair use is the first factor concerning the “purpose and character” of the use. Critical to this determination is whether a usage is “transformative.” According to the US Supreme Court, whether a the use of a work is “transformative” depends on whether the new work merely “supersedes” or “supplants” the original creation, or whether it “instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is ‘transformative.’ Campbell, 510 U.S. at 579 (quoting Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. at 1111)

First Factor – Commercial or Nonprofit

While the first factor of Fair Use considers whether a use is commercial or for nonprofit purposes, a number of cases hold that this consideration is not as important as whether the work is transformative. Thus, Fair Use will be found even though a defendant benefits commercially from the unlicensed use of the copyrighted works. See, e.g., Blanch, 467 F.3d at 253; Bill Graham Archives, 448 F.3d at 612. See also Castle Rock Entm't, Inc. v. Carol Publ'g Grp., Inc., 150 F.3d 132, 142 (2d Cir. 1998) (observing that Second Circuit does "not give much weight to the fact that the secondary use was for commercial gain").

Second Factor – Nature of Copyrighted Work

The second factor of the Fair Use test is the “nature of the copyrighted work.” For this factor, the courts generally consider whether the work is published or unpublished or a work of fiction or non-fiction. Works that are published and nonfictional weigh in favor of Fair Use under the second factor. See, e.g., Arica Inst., Inc. v. Palmer, 970 F.2d 1067, 1078 (2d Cir. 1992) ("Whether or not a work is published is critical to its nature under factor two because the scope of fair use is narrower with respect to unpublished works.")

Third & Fourth Factors of Fair Use

The third factor of Fair Use is "the amount and substantiality of the portion used in relation to the copyrighted work as a whole." 17 U.S.C. § 107(3). Using an entire photograph is more problematic than using a film clip that comes from an entire movie.

The fourth factor is "the effect of the use upon the potential market for or value of the copyrighted work." 17 U.S.C. § 107(4). A lot of the cases analyzing the fourth factor under Fair Use are influenced by whether or not a use is competing directly with the market for the original work. For example, the use of a film clip to illustrate some educational point would probably not be taking away business from the market for an entire film. On the other hand, using photos, music, or decorative art that is usually licensed by authorized owners and agencies would be directly impacting their market for these works.

Is it Fair Use or Not?

Stanford University’s website has an excellent summary of cases where Fair Use has been upheld or denied (See Helpful Links at end of presentation)

On the next two slides are examples from the Stanford website on how principles of fair use have been applied to either uphold or deny the use of film and video clips.

Fair Use Upheld – Film Clips

Fair Use Upheld. The producers of a movie biography of Muhammad Ali used 41 seconds from a boxing match film in their biography. Important factors: a small portion of film was taken and the purpose was informational. (Monster Communications, Inc. v. Turner Broadcasting Sys. Inc., 935 F.Supp. 490 (SDNY 1996).

Fair Use Upheld. A seven-second clip from the Ed Sullivan TV show was used in a staged musical history (The Jersey Boys) based on the career of the musical group, the Four Seasons. An important factor was that the use was transformative: “Being selected by Ed Sullivan to perform on his show was evidence of the band’s enduring prominence in American music ....By using the film clip as a biographical anchor, [the defendant] put the clip to its own transformative ends.” Further, the use caused no financial harm to the copyright owners of the show. SOFA Entertainment, Inc. v. Dodger Productions, Inc., No. 2:08-cv-02616 (9th Cir. Mar. 11, 2013).

Fair Use Denied – Film Clips

Fair Use Denied. A television news program copied one minute and 15 seconds from a 72-minute Charlie Chaplin film and used it in a news report about Chaplin’s death. Important factors: The court felt that the portions taken were substantial and part of the “heart” of the film. (Roy Export Co. Estab. of Vaduz v. Columbia Broadcasting Sys., Inc., 672 F.2d 1095, 1100 (2d Cir. 1982).

Fair Use Denied. A television station’s news broadcast used 30 seconds from a four-minute copyrighted videotape of the 1992 Los Angeles beating of Reginald Denny. Important factors: The use was commercial, took the heart of the work, and affected the copyright owner’s ability to market the video. (Los Angeles News Service v. KCAL-TV Channel 9, 108 F.3d 1119 (9th Cir. 1997).

Other Legal Issues

• There are other important legal issues for producers to consider that do not involve copyright law. They include the following:

• Defamation (libel and slander)• Right of Publicity• Invasion of Privacy• False Light• News-Gathering Torts• Production Safety

Further Reading

These are all excellent guides. The first two come with CD-ROMs containing a library of legal forms for producers. You can find them online by Googling their titles.

Helpful Links

US Copyright Office: www.copyright.gov

Stanford University’s Summary of Fair Use Cases: www.fairuse.stanford.edu/overview/fair-use/cases/

Cornell University’s Chart on Copyright Durations: www.copyright.cornell.edu/resources/publicdomain.cfm

Documentary Filmmakers' Statement of Best Practices in Fair Use: www.cmsimpact.org/fair-use/best-practices/documentary/documentary-filmmakers-statement-best-practices-fair-use

588 Free Film Contracts and Forms: www.filmmakeriq.com/2009/04/588-free-film-contracts-and-forms/

Film Anchor Free Film Contracts and Forms: www.filmanchor.com/contracts-forms

Mark Litwak’s Entertainment Law Resources: www.marklitwak.com

Legal Ease, a Blog on Production Law: www.filmindependent.org/category/legal-ease/#.VAEH5Okg_3g

Film Lawsuits in the News: www.indieclear.com/film_lawsuits.htm

One-Page Guide to Copyright Law: www.chart.copyrightdata.com/OnePageGuide.html

Conclusion

This has been a presentation of David M. Slater.

This presentation will be available at: www.davidmslater.com

Inquiries or comments may be directed to Mr. Slater at mail@davidmslater.com. Thank you.

© 2014 David M. Slater. All rights reserved.