Trademark and Copyright Clearance in New Media Projects

Introduction:

In our last article, we explored how trademark and copyright clearance is handled for film and television projects. In this article, we examine how rights clearance has altered in the “digital age” for so-called “new media” projects.

One recent example of a “new media” project gone awry comes from the successful home exercise company Peloton. Peloton creates high-end stationary bicycles with built-in screens that allow users to stream fitness classes while exercising. Peloton’s streaming classes are known for their high energy and for the various popular music used in the videos during the workouts.

Recently, Peloton was sued by members of the National Music Publishers’ Association (“NMPA”) for a staggering $150 million in damages. According to a press release from the NMPA:

“Peloton has released thousands of videos that include unlicensed music recorded by artists such as Rihanna, Bruno Mars, Lady Gaga, Katy Perry, Justin Timberlake, Shawn Mendes, Ed Sheeran, Wiz Khalifa, Thomas Rhett, Ariana Grande, Justin Bieber, Florida Georgia Line, Drake, Gwen Stefani and many more.”

This press release also quotes NMPA President and CEO David Israelite as saying that:

“Music is a core part of the Peloton business model and is responsible for much of the brand’s swift success. Thousands of exclusive videos and playlists are a major reason hundreds of thousands of people have purchased Peloton products.”

Needless to say, these allegations – if proven true – could have a major detrimental impact on Peloton.

In another recent instance, President Trump posted a campaign video to his personal Twitter Account which allegedly used music from Hans Zimmer’s score from the movie The Dark Knight Rises. Warner Bros. Pictures reportedly filed a copyright infringement complaint which resulted in Twitter deactivating the video (as shown below):

These examples show the critical importance of trademark and copyright clearance for startups, tech companies, and even individuals involved in “new media” projects.

As discussed in our last article, navigating rights clearance in “old media” can be a major challenge for production companies. That being said – if anything – navigating rights clearance has become even more difficult for content producers in “new media” projects including YouTube, Facebook and Instagram projects. This is particularly true given the widespread availability of technology. In the not-so-distant-past, content creators had to use large, expensive and cumbersome technology to take photographs and record audio / video. Today, however, legions of content creators can use a simple smartphone to capture and create content – multiplying the potential copyright and trademark issues involved for such creators.

Four Steps for Trademark and Copyright Clearance:

In our last article, we explained a four-step methodology for conducting trademark clearance and copyright clearance for film and/or new media projects, namely:

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 content creator;

category two – elements currently owned by third parties (but which could potentially be owned by the content creator if proper steps are taken);

category three – elements currently owned by third parties (where ownership by the content creator 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).

The application of these four steps to new media projects is similar in structure to traditional film/television projects. That being said, there are some issues which are more characteristic of new media projects. Several such issues are explored below.

Trademark & Copyright Clearance in New Media Projects:

Trademark and copyright clearance in new media projects should follow the same general process as trademark and copyright clearance in traditional media projects, i.e., the four steps outlined above. Many such elements should be immediately obvious to content creators. For example, using a third party’s songs, video clips or photographs in a new media project should raise an immediate red flag – and should compel a content creator to seek a proper license depending on the nature of the use.

One less obvious issue associated with new media projects lies in the abundance of potential inadvertent trademark and copyright issues in connection with the location of filming. As noted above, film and television projects were historically created “on the lot.” Even many shots of “public” places such as restaurants or stores were filmed on a carefully created soundstage at the studio. Thus, the film crew could take care to ensure that:

all of the film extras signed appropriate releases;
none of the film extras wore clothing with visible, uncleared trademarks;
no unlicensed music was playing in the background;
no uncleared artwork or posters appeared on the walls; and
no other uncleared visual elements (e.g., the ketchup bottle on a restaurant table or the clothing on a store rack) were visible in the shot.

Contrastingly, new media projects are rarely created “on the lot” – and, instead, are usually filmed on smartphones or commercially available digital cameras in public places. Notwithstanding this, a litigation-warry new media project creator should still be mindful of avoiding such elements.

One extreme example of a less-than-litigation-warry new media project is the horror film Escape from Tomorrow which was surreptitiously filmed at Walt Disney World® and Disneyland® without permission from the Walt Disney Company. Even in this film, however, the filmmakers wisely:

replaced the copyrighted music in the It’s A Small World and Enchanted Tiki Room attractions with other music; and
replaced the film projected as part of the Soarin’ attraction with generic stock footage;

in an effort to avoid a copyright infringement claim by Disney. Despite potential other claims, Disney chose to simply ignore the film. While this litigation gamble paid off, other new media projects have been less fortunate (such as the instances discussed above regarding Peloton and President Trump). If the goal of a new media project is to be successfully distributed in theaters / on television, content creators should be aware of and seek to minimize these potential issues.

“Newsworthiness” and First Amendment Issues:

Under the Copyright Act, 17 U.S.C. § 107, a content creator has a right to make “fair use” of a copyrighted work “for purposes such as criticism, comment, news reporting, teaching… scholarship, or research….” This fair use exception provides fertile ground for content creators working on YouTube, Facebook, Instagram and other new media projects to properly use third party copyrighted content without needing to secure a license.

While it is never possible to evaluate a fair use defense with complete confidence, common examples which we believe would constitute fair use include:

reproducing low-resolution scans of classic comic book covers as part of a series of social media posts providing artistic criticism of classic versus contemporary comic book illustrations;

using still photographs / video clips featuring celebrities alongside commentary as part of a YouTube channel commenting upon celebrity fashion;

filming video tutorials in how to use clothing patch design software and doing so by using such software to create fabric cutouts of protected DISNEY® cartoon characters; and

quoting from books / articles as part of an ITUNES® podcast series conducting book reviews.

Perhaps the biggest category of fair use relevant to many new media projects is the “news reporting” category. Whether or not the use of copyrighted text, audio, still images or video is “newsworthy” is a hotly litigated “grey area” in the law which is highly fact specific. In our practice, this “newsworthiness defense” is often raised by parties accused of copyright infringement. While there are many good resources, PBS offers an especially helpful online checklist of five important points to consider from the “non-legal” perspective of a journalist. Of these, we think that “timeliness” is the most critical of these points. As PBS’s helpful checklist notes:

“ It’s news because it’s ‘new.’ ”

New media project creators should be mindful of this helpful adage by understanding that the right to use the same content could be different depending upon its “newness.”

By way of illustration, using Facebook Live to stream a car accident involving a COCA-COLA® delivery truck should count as a form of citizen journalism, i.e., “news reporting” under the Copyright Act. A content creator should be free to live stream such video without fear of potential third-party rights (e.g., trademark rights in the COCA-COLA® brand which is prominently displayed on the truck). Chiefly, this is because the accident is unfolding in “real time” and constitutes news.

By contrast, imagine an amateur filmmaker incorporating a copy of this exact same video clip into an independent film about a disgruntled Coca-Cola Company employee who deliberately stages an accident. While the issue concerns the exact same video clip, such a filmmaker’s use no longer has the “new” dimension of “news reporting” – and should be done only after securing consents from the Coca-Cola Company in order to minimize the risk of an electronic takedown notice (which could delay or halt online distribution) or a cease and desist letter / lawsuit (which could delay or halt traditional distribution).

If you or your company need help with clearances or securing options, licenses, releases or other intellectual property matters regarding new media projects such as YouTube videos or social media videos / photographs, call us today for a free consultation.