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Trademark and Copyright Clearance in Film / Television Projects

Introduction:

Production companies interested in a new film or television project have a multitude of challenges to overcome. Finding the right story, casting the right actors, choosing a location, raising the needed funds, editing hours upon hours of raw footage and negotiating with a film or television studio are typical challenges which immediately come to mind. However, there is another, equally important issue which many novice production companies fail to fully consider – the importance of proper intellectual property rights clearance. Failure to consider such rights could expose a production company to lawsuits and/or financially catastrophic delays in the commercial release of a project.

Clearly, production companies need to take rights clearance seriously – but how can they go about doing so? This article provides a brief introduction to the topic by proposing a four-step methodology for approaching intellectual property issues in the film and television industry.

Four Steps for Trademark and Copyright Clearance:

The methodology for conducting trademark clearance and copyright clearance for a film and/or new media project can be broken down into the following four main steps:

• Step One – create an inventory of all the literary, visual and auditory elements that will be involved in the final cut of the project.

• Step Two – categorize each of the literary, visual and auditory elements into one of the following four categories:
  • category one – elements owned by the production company;
  • category two – elements currently owned by third parties (but which could potentially be owned by the production company if proper steps are taken);
  • category three – elements currently owned by third parties (where ownership by the production company is impractical or unprofitable and, instead, a license or a consent might be secured); and
  • category four – elements in the public domain, i.e., elements which are not “owned” by anyone.

• Step Three – protect elements in category one while securing ownership / licenses for elements in categories two and three.

• Step Four – repeating Steps One through Three at each stage of the production process (e.g., during final screenwriting, pre-production, filming, editing and post-production).

Steps One, Two and Three are each examined more fully below.

Rights Clearance Step One: Creating an Element Inventory:

The first step to approaching intellectual property rights clearance is to create an inventory of all the various literary, visual and auditory elements which the production company envisions will be embodied in the final project.

Often, production companies begin a project by acquiring an option right in an underlying literary project. For example, a production company might secure an option right (i.e., a contractual option to obtain film rights at a later date for a particular price) in a book, play, comic book, etc. If the production company decides to move forward, the rights clearance process self-evidently starts with: (i) exercising the option to secure the needed film rights; then (ii) hiring a screenwriter(s) to draft a script. In hiring a screenwriter, the production company would likely be best served by doing so under a work-for-hire relationship (giving the production company “ownership” of the copyright rights embodied in the script).

Using this script (and, later, the film’s storyboards, “rough cut” footage and final edited footage), the production company’s clearance department should carefully look for current or envisioned literary, visual or auditory elements. For example, if a script calls for two characters to meet at a diner, a note should be made to check on the diner and even product brands which might be visible inside the diner. Similarly, if a script calls for a montage of stock footage from World War II, a note should be made to secure rights to such footage (or look for suitable footage which is in the public domain).

All of these potential “red flags” should be kept in a spreadsheet to create an “element inventory” of potential rights-issues for further investigation and handling.

Rights Clearance Step Two: Categorizing each Element:

The second step to approaching intellectual property rights clearance is to categorize each element from the “element inventory” into one of the four categories discussed above.

Category One:

With respect to category one – elements owned by the production company – this includes all various intellectual property rights owned by the production company. This could include option rights for film / television adaptation of an underlying literary work, copyright rights in a script, or copyright rights in footage filmed by the production company.

In evaluating elements in this category, production companies should review the various contractual relationships which evidence the production company’s rights. This includes, for example, reviewing assignment agreements with the artists of an underlying literary work.

Category Two:

With respect to category two – elements currently owned by third parties which could be owned by the production company if proper steps are taken – this includes all potential copyright rights, trademark rights and rights of publicity embodied in the production of a project. By way of example:

• set designers should be required to sign work for hire agreements to ensure all copyright rights in set designs are owned by the production company;

• choreographers should be required to sign work for hire agreements to ensure all copyright rights in the choreography are owned by the production company;

• makeup artists and the wardrobe department should be required to sign work for hire agreements to ensure that all copyright rights in unique makeup / wardrobe ensembles are owned by the production company;

• extras should all be required to sign release / work for hire agreements before filming starts; and

• stage hands and other non-actor personnel should be required to sign release / work for hire agreements to ensure that the production company can capitalize on a production by also filming “behind the scenes footage” – which is often used in creating “bonus features” once film / television projects are released for home video sale.

Each of the examples listed above can be done with relative simplicity and, often, at no additional expense, e.g., requiring the crew to sign the needed paperwork as a condition of their employment.

Unfortunately, novice production companies sometimes leave such rights “on the table” – resulting in tremendous future headaches. For example, a set designer arguably gives an implied license to use a set in connection with a film for which the set was constructed. However, there is arguably no such implied license if a production company were to try and reuse this set in filming a sequel. Similarly, it can be nearly impossible to track down extras – especially in scenes involving large crowds of extras. Proactively securing such rights is critical.

Category Three:

With respect to category three – elements currently owned by third parties where ownership by the production company is impractical or unprofitable – this includes all third-party copyright rights, trademark rights and rights of publicity embodied in a project where acquiring ownership of such rights is either impractical or unprofitable.

This category includes numerous elements. Obvious examples include songs used in connection with a project and trademarked logos of products which appear on film. Less obvious – but still important – examples include securing releases to film inside a particular building or at a particular location and securing releases for any paintings, sculptures or other artwork visible in the background while filming.

How to approach elements in this category is more fully discussed below under “step three.”

Category Four:

With respect to category four – elements in the public domain – this includes all material which has entered the public domain due to a copyright’s expiration, a copyright owner’s failure to comply with statutory formalities or for some other reason (such as being a work authored by the U.S. Government). In general, public domain works may be freely used by production companies.

That being said, there is an important caveat – just because a work has entered the public domain does not mean that derivative works are necessarily also in the public domain. For example, Mozart’s compositions have long since entered the public domain. However, a recent audio “cover” (i.e., recorded performance) of one of Mozart’s works likely is not in the public domain.

Bottom line: production companies need to be cautious in evaluating public domain elements (and should have their legal counsel provide an opinion as to the status of any supposed public domain element to mitigate potential legal action).

Rights Clearance Step Three: Protection, Ownership & Securing Licenses:

With respect to elements: (i) owned by a production company (category 1 above); or (ii) eventually acquired by a production company (category 2 above); the goal should be to protect and monetize the rights embodied in such elements. For film/television projects, this will generally take the form of filing copyright applications covering the script, the film and various ancillary materials (such as character sketches, costume sketches, movie posters, promotional photographs, etc.).

Production companies should also explore securing trademark rights by filing federal trademark applications for the project’s name, i.e., the film or series title.

Production companies should also consider whether to seek trademark protection over the name / likeness of key characters. Perhaps the best example of this comes from the STAR WARS® franchise, were the name / likeness of numerous characters were protected by securing trademark registrations; including:

• Reg. No. 2454916 for LUKE SKYWALKER in Class 28;

• Reg. No. 1272311 for YODA in Class 28;

• Reg. No. 1272312 for DARTH VADER in Class 25; and even

• Reg. No. 3646330 covering the image of the Darth Vader image as shown below in Classes 25 and 28:

With respect to elements owned by third parties where ownership by the production company is impractical or unprofitable, in general, a prudent production company has two courses of action:

• obtaining a license / release from the third-party rights holder; or

• removing the element from the project.

By way of illustration, a production company wishing to use a popular song from The Rolling Stones in an episode of a television program would find it nearly impossible to “own” (i.e., secure an assignment of) the rights in such song. Rather, a production company would have to negotiate for the proper licenses to use the song in the television program (e.g., synchronization licenses, master recording licenses (a/k/a master use licenses) and/or videogram licenses – depending on the nature of the envisioned project).

By way of another illustration, production companies should seek releases from third party rights holders where possible – especially with respect to the inclusion of trademarks in a project. For example, where a script calls for a character to eat at a fast food restaurant such as a McDONALD’S® brand restaurant, the production company should proactively seek a release from McDonald’s Corporation before filming such scene. Critically, such decisions need to be made at a corporate level – merely having the consent of an individual McDonald’s restaurant manager to film at his or her location would not be enough to constitute consent for intellectual property rights purposes.

For informational purposes only, our firm has attached examples of agreements whereby a rights holder permitted the use of its intellectual property in connection with:

• a movie;
• a television show;
• a magazine; and
• a retail store commercial.

Prudently policing intellectual property rights often comes with hard decisions which can conflict with the creative direction of a film. Say, for example, that a movie calls for a scene involving a violent altercation at a McDONALD’S® brand restaurant – and McDonalds Corporation refuses to grant a release. The production company is now left with two choices: moving forward (and raising a fair use argument if/when McDonalds Corporation objects) or changing the script by filming the altercation elsewhere. This is not an enviable position since production companies can rarely afford to “gamble” on having a film’s release potentially delayed for years during the pendency of litigation. Thus, business realities often necessitate removing any such third-party elements for which licenses / releases are unavailable.

Paying Attention to the “Little Things”:

Throughout the process outlined above, production companies need to be vigilant and highly detail oriented when conducting the steps outlined above since even one seemingly little mistake could spell disaster for a film project.

For example, when securing rights in a script, production, companies should be mindful of any quotes from third party works which are included in the script. Similarly, if a production company secures rights to a pre-existing literary work (such as a book or a play), the production company needs to investigate the history of such literary work. Does the underlying literary work infringe any third-party rights? Is the underlying literary work a derivative of another work, e.g., a sequel to or a parody of another work?

Another example comes in the form of inadvertent product placement. While filming and while reviewing footage, the production company needs to be cautious about the inadvertent inclusion of trademarks and other protected elements. For example, filming an extra wearing a t-shirt featuring a company logo or even filming a conspicuously placed can of COCA-COLA® brand soda on a table while actors are speaking in the foreground could be potentially problematic. Such an issue becomes even more problematic if the trademarked product is deliberately used in a denigrating, offensive or otherwise controversial manner.

One final real-world example occurred several years ago. As reported by Variety Magazine, Italian filmmakers shot a scene which included Jesus Christ drinking a can of COCA-COLA® brand soda. The Coca Cola Company reportedly sent a cease and desist letter – triggering the film’s distributor to halt the film’s release. By following the steps outlined above, production companies can help ensure that a similar – potentially disastrous – fate does not befall other film / television projects.

In our next blog post, we will be exploring how rights clearance has altered in the “digital age.”

If you or your company need help with clearances or securing options, licenses, releases or other intellectual property matters regarding film / television projects, call us today for a free consultation.