Intellectual property (“IP”) is a term that generally refers to different areas of law that protect the products of the mind and the personality. For our purposes, copyright, trademark, privacy rights and publicity rights fall under the umbrella of “intellectual property.”
Copyright law may be the most important area of intellectual property for filmmakers because filmmakers are copyright owners as well as copyright users. In other words, you should know how to protect your own work and be willing to respect the rights of other artists. For a comprehensive overview of copyright law, please download our free publication, Copyright Basics. Here are a few key concepts:
Creation of Copyright
It is a common misconception that copyright in a work is difficult or complicated to obtain. It’s actually quite simple. All you have to do is produce a minimally creative “original work of authorship” and fix or record your creation in some way — write it down, capture it on film, record it on tape, etc. It is important to understand that you cannot copyright ideas, only the fixed expression of ideas.
“Original” Work of Authorship
There are two requirements for a work to be an “original work of authorship.” First, you must be the “author” of the work, meaning it was you who created the work, such as writing a screenplay. Second, the work must be “original,” which means that it was not copied from any other source.
Also, you should be aware that you might not own the copyright in a work that you were hired to create for someone else.
Owning a copyright is different than physical possession of the work. The copyright is not some sort of official document you can hold in your hands or show to your friends. When you own a copyright, you actually own a number of exclusive rights in the work you created. They are the rights to:
• Make copies of the work,
• Distribute the work,
• Perform the work in public,
• Display the work in public, and
• Make derivative works based on the original work.
Generally, only the copyright owner is allowed to exercise these five rights. Anyone who uses someone else’s copyrighted work without permission could face a lawsuit.
Courts have long recognized that in some situations it’s just not sensible or fair to penalize someone for using another person’s work without permission. That, in a nutshell, is the principle behind the doctrine of fair use. Examples include reproduction for criticism, news reporting, teaching, scholarship and parody.
The inherent tension between copyright and the First Amendment — a topic of concern for documentary filmmakers who have been forced to pay exorbitant licensing fees — is addressed in Will Fair Use Survive? Free Expression in the Age of Copyright Control and also our scripts page.
A trademark is a word, phrase, design or symbol, or a combination of words, phrases, designs or symbols, that identifies and differentiates one set of goods from another. A service mark relates to services in the same way a trademark relates to products. Examples include the Nike swoosh, the name Cadillac for cars and the MGM lion’s roar.
Trademarks and service marks — which are a form of commercial shorthand — are valuable business assets because they establish goodwill between a purchaser and seller. So, unauthorized use in a film could bring the unwelcome attention of the trademark owner’s lawyer — especially when the trademarked goods or services are shown in an unfavorable light.
The legal standard for trademark infringement is “likelihood of confusion.” The confusion may involve a misunderstanding related to the source of goods or services. For example, the unauthorized use of the name Cadillac on tires would probably lead people to mistakenly believe that General Motors made the tires. Confusion may also relate to an incorrect assumption that one party has endorsed the goods or services of another. For example, the unauthorized use of the Nike “swoosh” on a poster publicizing a marathon would probably lead people to mistakenly believe that Nike sponsored the event.
Generally, there are broader fair use rights when it comes to trademarks than there are for copyrights. So, if you use a trademark to describe or depict the goods or services, the use would likely be considered informational, which means you don’t need permission from the trademark owner. But you should be aware that E&O insurance policies may require clearance.
Filmmakers run into trouble when it appears as if the trademark owner endorsed, approved or sponsored the film, when the use tarnishes the owner’s reputation and when the case for a parody defense is weak.
The Rights of Privacy and Publicity
“While the appropriation branch of the right of privacy is invaded by an injury to the psyche, the right of publicity is infringed by an injury to the pocketbook.”
— J. Thomas McCarthy, law professor.
The rights of privacy and publicity recognize that people have certain personal and economic interests in their names, voices, likenesses and other identifying characteristics that should restrict use of these attributes without the individual’s consent. These quasi-IP rights are not absolute and often are in tension with the rights of freedom of the press and freedom of artistic expression.
Right of Privacy
The right of a person to be free from intrusion into matters of a personal nature is known as the right of privacy. The underlying premise is that some facts are so intimate that they should not be made public without the person’s permission. Although not explicitly mentioned in the Constitution, the right of privacy — the “right to be left alone” — has been held to be implicit in the Bill of Rights.
The term is used to describe several different principles, including the rights of personal reproductive freedom underlying Roe v. Wade and related decisions that relate to abortion; consumer rights related to controlling personal information that is stored on mailing lists, credit reports, medical records and other data bases; and journalism — the gathering and reporting of news.
Like the paparazzi photographer who followed Jackie Onassis, a documentary filmmaker may violate a person’s right of privacy if the filmmaker unreasonably intrudes (physically, electronically or otherwise) on an area in which that person has a reasonable expectation of privacy. Examples include trespassing and the use of concealed cameras or recording devices.
The right of privacy also embodies other types of possible emotional harm: public disclosure of private facts and publicly placing another person in a false light. The public disclosure tort (a civil wrong that is recognized by law as grounds for a lawsuit) is based on the premise that certain truthful information about a person is so intimate or offensive, and of so little legitimate public interest or concern, that it can and should be removed totally from public discourse.
While what constitutes “offensiveness” or “legitimate public interest” is highly subjective, plaintiffs have successfully sued over disclosures about their medical treatment, embarrassing state of undress or homosexuality. False light is similar to defamation. It covers statements that give an inaccurate and offensive picture of a person. For example, including footage of a woman walking down the street in a documentary about the “world’s oldest profession” could put the woman in a false light by suggesting that she is a prostitute. Claims for invasion of privacy are extremely unlikely against independent feature films because the actors are aware that their filmed performances will be publicly shown.
When the individuals appearing on-screen have not signed employment agreements or release forms or feel deceived or ridiculed by the filmmaker, privacy laws can come into play. For example, Frederick Wiseman’s first documentary, Titicut Follies, exposed the squalid conditions of the Bridgewater State Hospital for the Criminally Insane. The state of Massachusetts, embarrassed by the publicity over the conditions at the hospital, sought an injunction against the showing of the film on the grounds that it violated the right of privacy of an inmate shown naked in his cell. Although Wiseman had releases from the patients or their legal guardian (the superintendent), the judge agreed and banned the film. It was not until more than 20 years later, after most of the patients in the film had died, that a court reversed the original ruling. More recently, comedian Sacha Baron Cohen’s film, Borat: Cultural Learnings of America for Make Benefit Glorious Nation of Kazakhstan (2006), led to several, albeit unsuccessful, lawsuits by people who appeared in the film. All but one of the plaintiffs signed releases. But they felt duped because they thought Cohen was a Kazakh journalist and that the film was a documentary, not a feature film, which would only be shown abroad.
Right of Publicity
What do Rosa Parks, The Three Stooges, Tiger Woods, Bette Midler and Vanna White have in common? All have been involved in litigation involving their right to benefit economically from their celebrity.
An individual’s right to control and profit from the commercial use of her/his name, likeness, and persona is called the right of publicity. This right varies from state to state, but most states protect public figures and celebrities from the unauthorized commercial exploitation of their identities. The laws attempt to strike a balance between an individual’s right of publicity and freedom of speech. The greatest protection is provided for news. Somewhat lesser protection is provided for entertainment and fiction, and the least protection is available for advertising.
In numerous instances, the courts have recognized an exception to the right of publicity doctrine based upon artistic expression. For example, John Guare’s play, Six Degrees of Separation, was inspired by a real-life hoax conducted by a young man who gained access to the homes of several New York families by saying that he was the son of the actor Sidney Poitier and that he had been mugged and needed a place to stay overnight. The perpetrator of the scheme attempted to sue the playwright, but the court would not permit the suit because New York’s right of publicity only protects against advertising or trade and not works of fiction.
In Florida, the Supreme Court held that the state’s right of publicity law did not provide protection for the families of the crewmen portrayed in The Perfect Storm. Warner Bros. did not provide any compensation to the plaintiffs nor did the company seek their permission to make the film. The Court held that the statute was not applicable to the film or other forms of media that “do not directly promote a product or service.” The Court also cautioned that finding the statute applicable to movies, which are protected under the First Amendment even though their production, distribution and exhibition are a large-scale business conducted for private profit, would raise potential constitutional concerns.
But the line between protected artistic uses and unprotected commercial uses can be murky. In Missouri, Tony Twist, a former professional hockey player successfully argued that the creator of the comic book series Spawn had violated his right to publicity by creating a mob enforcer character named Antonio “Tony Twist” Twistelli and by marketing Spawn products specifically to hockey fans. In this case, the court found that the commercial elements overshadowed the artistic elements.
So, what’s the bottom line? In The Pocket Lawyer for Filmmakers, Thomas A. Crowell offers this advice: The use of a person’s identity in news, entertainment and creative works for the purpose of communicating information or expressive ideas may be protected by the First Amendment, but the use of a person’s identity for purely commercial purposes, like advertising goods or services or the use of a person’s name or likeness on merchandise, is rarely protected. When a filmmaker is dealing with the gray areas of the rights of publicity, including life-story rights, the best practice is to seek permission. Obtaining a written release (rather than one on tape) from each person whose name, likeness or identity will be included in your film is highly recommended. In some states the consent must be in writing and, like every contract, the forms will help avoid misunderstandings. If your film is based on someone’s life story, your release agreement should include additional language. Finally, without a paper trail proving that a producer owns the film and has cleared all rights, a distributor won’t undertake the risk of releasing the film.
We are indebted to VLAA volunteer Mark Sableman for assistance with preparing the sections on trademark, privacy and publicity rights.