A

A FILMMAKER’S GUIDE TO INTELLECTUAL PROPERTY LAW

This section will provide you with a general background on those areas of intellectual property law that most impact the filmmaking process. Here you will find resources to help your understanding of the following:

•  Copyright law (p. 249)

What is a copyright? (p. 249)

Copyright rights. (p. 250)

Copyright terminology. (p. 250)

What is not protectable under U.S. copyright law? (p. 253)

Fair Use. (p. 256)

Copyright ownership. (p. 260)

Work made for hire. (p. 263)

Copyright duration. (p. 268)

Copyright infringement. (p. 269)

•  Right of Publicity (p. 271)

What is the right of publicity? (p. 271)

First Amendment and the right of publicity. (p. 272)

Tests to determine infringement of the right of publicity. (p. 272)

•  Violation of Privacy Rights (p. 273)

Intrusion upon seclusion. (p. 273)

Public disclosure of private facts. (p. 274)

False light. (p. 274)

•  Libel and Defamation (p. 276)

Defamation defined. (p. 276)

Public figures. (p. 278)

Defenses to defamation. (p. 279)

•  Moral Rights (p. 282)

Note: Trademark issues have been discussed in Trademarks on the Set. (See Trademarks on the Set, p. 192.)

1. COPYRIGHT LAW

WHAT IS A COPYRIGHT?

Copyright is actually a collection of legal rights, all of which protect “original works of authorship fixed in a tangible medium of expression.”¹

Copyright can protect

•  Literary works, such as screenplays, novels, magazine articles, poems

•  Motion pictures, television shows, and other audiovisual works

•  Musical works, including any accompanying words

•  Dramatic works, such as plays, including any accompanying music

•  Pantomimes and choreographic works

•  Pictorial, graphic, and sculptural works

•  Sound recordings

•  Architectural works

•  Other works of original authorship

Copyright is one of the easiest forms of intellectual property protection to obtain: just create an original work of authorship, write it down or record it in some way, and you automatically have a copyright in that work. Only a minimum amount of creativity is required. You don’t even have to fill out a form or put a “C” in a circle to get copyright protection, but you will get more legal protections if you do. (See Copyright Registration, p. 268.)

Example: You write a screenplay. If you’ve written it yourself, and haven’t based it upon anybody else’s work, it’s original to you. Because you’ve written it down (or saved it to your hard drive), you’ve recorded it. Smile—you’ve automatically been granted a copyright in your work without having to do anything else.

Copyright in Selection and Arrangement

When we think of what can be copyrighted, we often think of types of expression, like paintings, sculptures, films, screenplays, etc. In addition to these works, a particularly creative arrangement or selection of materials may also be copyrighted, despite the fact that what is arranged or selected may be in the public domain. (See Public Domain, p. 252).

Examples include:

•  A collage made from scraps of 19th-century advertisements

•  A creative sequence of yoga poses

•  A selection of words, for example: “terms of venery” in James Lipton’s work “An Exaltation of Larks.”

It is important to note that since it is the creativity of the selection and arrangement that is granted copyright (as opposed to the public domain elements themselves) the choices and organization of the elements must sufficiently creative. For instance, the alphabetical listing of data is not creative enough to warrant copyright protection, nor is the chronological ordering of data.

COPYRIGHT RIGHTS

For filmmakers and other authors, copyright law gives the copyright owner the exclusive right to take his or her work and:

•  Make copies of it

•  Distribute it

•  Perform that work publicly

•  Publicly display the work

•  Make derivative works based upon the original work

Anyone who, without the copyright owner’s permission, performs any of the above actions, may be infringing the copyright. (See Copyright Infringement, p. 269.)

COPYRIGHT TERMINOLOGY

Many of the following terms are taken directly from the federal copyright statute itself, and may be helpful in interpreting copyright law. More definitions can be found in the United States Copyright statute, 17 U.S.C. §101. See: http://www.copyright.gov/title17/92chap1.html#101.

Author

The author is the original copyright owner of a work. For instance, if you write a screenplay by yourself, and it is completely original with you, and no one has hired you to write it, you are the author. However, under the work-made-for-hire rules, the author of the work is the person who commissions the writer to write the screenplay or the writer’s employer, and not the writer. (See Work Made for Hire, p. 263.)

Audiovisual Works

Copyright law considers your film or video to be an audiovisual work.

“‘Audiovisual works’ are works that consist of a series of related images which are intrinsically intended to be shown by the use of machines or devices such as projectors, viewers, or electronic equipment, together with accompanying sounds, if any, regardless of the nature of the material objects, such as films or tapes, in which the works are embodied.”²

Common examples include:

•  Movies

•  Television programs

•  DVDs and videocassettes

•  Animation, in whatever format

Derivative Work

A “derivative work” is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications, which as a whole, represent an original work of authorship, is a “derivative work.”³

Examples of derivative works in the film and television industry include:

•  A movie script based on a play

•  A movie is a derivative work of a script

•  A television series based on a movie

•  An action figure based on a movie character

•  A novel based on a movie

•  The recording of a song composition

Motion Picture

“‘Motion pictures’ are audiovisual works consisting of a series of related images which, when shown in succession, impart an impression of motion, together with accompanying sounds, if any.”⁴

Perform

“To ‘perform’ a work means to recite, render, play, dance, or act it, either directly or by means of any device or process or, in the case of a motion picture or other audiovisual work, to show its images in any sequence or to make the sounds accompanying it audible.”⁵

Publication

In copyright law, publication is the act of distributing a copyrighted work to the public. Specifically, it is “the distribution of copies […] of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending.”⁶

The date of publication is a critical one in determining whether a work is still protected by copyright.

Example: Many films are works made for hire. For any work made for hire that you create today, copyright protection will last for 95 years from the year of first publication or 120 years from the year of creation, whichever expires first.

Publication of a motion picture publishes all the components embodied in it including the music, the script, and the sounds. Thus, if a motion picture made from a screenplay is published, the screenplay is published to the extent it is contained in the published work.

The performance itself of a motion picture (e.g., showing it in a theater, on television, or in a school room) does not constitute publication. According to the United States Copyright Office,⁷ a motion picture is published when—

•  “One or more copies are distributed to the public by sale, rental, lease or lending, or when an offering is made to distribute copies to a group of persons (wholesalers, retailers, broadcasters, motion picture distributors, and the like) for purposes of further distribution or public performance.”

•  “Offering to distribute a copy of a motion picture for exhibition during a film festival may be considered publication of that work. For an offering to constitute publication, copies must be made and be ready for distribution.”

Public Domain

If a work is NOT protected by copyright it is in the public domain. This means that it can be used by anybody without seeking permission from the original author. Some things are in the public domain by virtue of their nature, for example, facts, ideas, concepts, and works created by the federal government. (See Appendix A: What Is Not Protectible Under U.S. Copyright Law? p. 253.)

Even formerly copyrighted works can fall into the public domain for a number of reasons, including:

•  Expiration of copyright. Copyrights have a life span. When it runs out, the copyright dies and the artwork becomes part of the public domain, where it can enrich the work of other artists. It’s the karma of copyright, man.

•  Copyright notice was not placed on the work. Earlier versions of the copyright law required the © to be placed on the work when it was published. If a work was published prior to 1989 without proper copyright notice, the work may have fallen into the public domain. Be careful here: a number of exceptions to this rule apply. Don’t automatically assume a pre-1989 work published without notice is in the public domain.

•  Failure to renew the copyright. Earlier versions of the copyright law required authors to renew their copyright registrations with the federal government. If a copyright was not renewed it died.

•  Relinquished copyright. Sometimes authors want their works to be public domain and have voluntarily given up their copyrights.

WHAT IS NOT PROTECTIBLE UNDER
U.S. COPYRIGHT LAW?

From screenplays to sound tracks, from dailies to final cut, copyright law protects the majority of the components used to make a film and television program. However, there is a host of things copyright law simply will not protect. In general, copyright law will not protect the “building blocks” required to make a work of art. For instance, while you can copyright a script, you will not be able to copyright a word. You can copyright a novel, but not an idea, and so on.

BOTTOM LINE: Copyright protects the particular way an author has expressed himself; it does not extend to any ideas, systems, or factual information conveyed in the work.

Works That Have Not Been “Fixed in a Tangible Form” of Expression

If you want to protect something by copyright, you have to write it down, record it, paint it, save it to a hard drive, and so forth.

Example: If an actor improvises a speech on set, it will not be protected by copyright until it is captured on film or written down.

Titles, Names, Short Phrases, and Slogans

These are the domain of trademark, not copyright law. Copyright will not protect them.

Example: You’re trying to market your new vampire film, using the phrase “The ultimate power drink—blood!” on all of your posters and ad copy. Rather than turn to copyright law to protect that phrase, the best bet would be to try to register it as a trademark. Keep in mind, that to be registered as a trademark the phrase, word, or slogan would have to meet the all of requirements of a trademark, like identifying the source of a good or a service. However, the entire poster, phrase, and art work combined, could be copyrighted.

Familiar Symbols or Designs; Mere Variations of Typographic Ornamentation, Lettering, or Coloring.

In other words, you will not be able to copyright a plain blue triangle. As in the previous example, you may be able to get trademark protection for a symbol that would otherwise not be copyrightable.

Raw Data

Copyright protection is unavailable for raw data. For instance, you will not be able to protect:

•  Mere listings of ingredients or contents.

•  “Works consisting entirely of information that is common property and containing no original authorship.”

•  “Standard calendars, height and weight charts, tape measures and rulers, and lists or tables taken from public documents or other common sources.”⁸

Historical Facts and Theories

Despite the fact that the author may have invested a good deal of time and money researching a subject, historical facts and theories are also unprotectible.

It may seem unfair, but just because you’ve spent time and effort laboriously researching a topic does not mean that you can copyright that research.⁹ However, you certainly can copyright the text which contains that writing. As a result, you can’t use copyright law to stop someone from reading your well-researched book or script and copying the facts and other data which you, alone, have uncovered. You can sue for copyright infringement when that person copies the words, pictures, and structure that you’ve used to discuss your research.

Example: Dana Documentarian has spent the past 10 years researching her film “E.T. on the Grassy Knoll,” a groundbreaking documentary which demonstrates that John F. Kennedy was actually killed by extraterrestrials. Although her film may be protected by copyright, her actual theory will not be.

Ideas, Themes, Concepts

Copyright law does not protect ideas. Let me state that again: COPYRIGHT LAW DOES NOT PROTECT IDEAS! This is, perhaps, one of the hardest concepts for many artists to grasp. Copyright only protects an idea’s expression, not the idea or concept itself.

One of the problems has always been how to determine where an “idea” stops and “copyrightable expression” begins. As one court pointed out:“The line [lies] somewhere between the author’s idea and the precise form in which he wrote it down … protection covers the ‘pattern’ of the work … the sequence of events, and the development of the interplay of characters.”¹⁰

Example: The idea of a band of rebels who fight an evil Galactic Empire is not copyrightable. The fully expressed screenplay for “Star Wars^®” is copyrightable. The former is merely a concept, and is capable of being expressed in any number of ways. George Lucas’s screenplay, on the other hand, is a collection of specific scenes, dialogue, detailed characters, plot, and a sequence of events, all of which form a unique and copyrightable whole.

Procedures, Methods, Systems, Processes, Principles, Discoveries, or Devices

Systems, processes, methods, procedures, and devices may be protected, but not by copyright law. You need to turn to patent or trade secret law, not copyright law, for help.

Example: Fiona Filmmaker invents a great new system for preparing film budgets. She cannot use copyright law to stop other people from using her system.

Expired: Work in Which the Copyright Has Expired

Copyright protection expires after certain amount of time. (See Copyright Duration, p. 268.) Once a copyright expires, the copyright is in the public domain and anybody can freely use the copyrighted work without the permission of the former copyright owner.

Works Created by the U.S. Government

Works created by the U.S. government are not protected by copyright.¹¹ A work of the U.S. government is “a work prepared by an officer or employee of the United States government as part of that person’s official duties.”¹²

Example: Jolene wants to use photographs from NASA’s Hubble telescope as a background to her music video. She may do so without seeking NASA’s permission because NASA is a federal agency and its images are generally not copyrighted. She must, however, be careful when using those images for commercial purposes, so as not to give the appearance that NASA is endorsing the particular product or service. Restrictions on endorsement fall outside of copyright law and must be analyzed under right of publicity, trademark law, or particular federal statutes that may prohibit the appearance of commercial endorsement by a federal agency.

In contrast to U.S. government works, state government works may or may not be protected by copyright law. Nor does the law prevent independent contractors, working on behalf of the United States government, from owning the copyright to their works.

Be careful here. Even though the U.S. government cannot create a copyrighted work, it can hold the copyright assigned to it by others. This is why, when using material from the U.S. government, you should still verify that the material is not copyrighted.

Scènes à Faire

Scènes à faire (French for “scenes to be made”) are common themes typical of an artistic genre, and thus appear in numerous works.“Incidents, characters or settings which are as a practical matter indispensable, or at least standard, in the treatment of a given topic are Scènes à faire.”¹³ Furthermore,“thematic concepts … which necessarily must follow from certain plot situations” are not entitled to copyright protection.¹⁴

Example: Molly is filming a Western movie, and she wants to shoot a scene involving a showdown between a sheriff and an outlaw. Because this scene is so common to the Western movie genre, she need not be concerned that she will infringe the copyright of “High Noon.” Although the scènes à faire doctrine will allow her to use the concept of a showdown without fear of copyright infringement, she must be careful not to use the same dialogue, characters, or choice of shots that are used in another Western, as these may be protected by copyright.

FAIR USE

Among filmmakers, “fair use” is one of the most widely known and widely misunderstood copyright doctrines. Fair use is a defense to copyright infringement. It allows the taking of some part of the copyrighted work without needing to secure the author’s permission. The trick is figuring out what part and how much of a copyrighted work one can take.

Categories of Fair Use

General categories of fair use include news reporting, criticism, comment, teaching (including multiple copies for classroom use), scholarship, or research. The 1961 Report of the Register of Copyrights on the General Revision of the U.S. Copyright Law cites examples of activities courts have regarded as fair use:

•  “Quotation of excerpts in a review or criticism for purposes of illustration or comment;

•  Quotation of short passages in a scholarly or technical work, for illustration or clarification of the author’s observations;

•  Use in a parody of some of the content of the work parodied;

•  Summary of an address or article, with brief quotations, in a news report;

•  Reproduction by a library of a portion of a work to replace part of a damaged copy;

•  Reproduction by a teacher or student of a small part of a work to illustrate a lesson;

•  Reproduction of a work in legislative or judicial proceedings or reports;

•  Incidental and fortuitous reproduction, in a newsreel or broadcast, of a work located in the scene of an event being reported.”

Determining Fair Use

Courts must give weight to the following four factors in determining fair use:

•  “The purpose and character of the use, including whether such use is of the commercial nature or is for nonprofit educational purposes;

•  The nature of the copyrighted work;

•  The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

•  The effect of the use upon the potential market for or value of the copyrighted work.”¹⁵

Transformative Uses

A court will give greater weight to a defendant who is asserting a fair use defense if he can show that his use is transformative. A transformative use “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message….”¹⁶ So, if instead of merely slavishly copying a film clip, a producer modifies it by using digital effects, and uses the clip to comment upon its original source, creating new expression or meaning, the court may be more likely to find fair use.

Examples of Fair Use

Two examples may illustrate how a court will analyze whether an unauthorized use is fair or infringement.

Scenario #1: Daniel, a television commercial director, makes a commercial for a local car dealership. He uses a film clip from “Star Wars” showing Darth Vader swinging his light saber and cutting down Obi-Wan Kenobi. Over this, he puts a voiceover saying “we slash prices and kill the competition.” The film clip is used without permission, and the commercial airs. Lucasfilm Ltd. sues for copyright infringement, and Daniel defends asserting a fair use defense.

•  In determining whether his use was fair use, the court first looks to see “purpose and character of the use.” Here, the court is analyzing what Daniel did with the clip he used. His use was clearly commercial, and not educational, and therefore Daniel loses on this prong of the analysis.

•  Second, the court turns to the clip itself and looks to “the nature of the copyrighted work.” “Star Wars” is a work of fiction, not news or a documentary, and thus is afforded the highest protection under copyright law. This factor is also weighed against Daniel.

•  Third, the court examines how much Daniel took, and how important that clip was to “Star Wars” as a whole. Here, Daniel argues, that his clip was only 5 seconds long—hardly significant given the movie’s 2-hour length. The attorney for Lucasfilm counters that while the clip may have been short, it was a critical moment in the movie, and thus its importance should not be judged by its length alone. The court will give weight to an argument like that one—and will look to see whether the “heart” of the work was appropriated. The court decides that this factor should also be counted against Daniel.

•  Fourth, the court will look to see how Daniel’s unauthorized use affects the market for the movie “Star Wars.”This may be one of the most important factors. The court will take a look to see whether Daniel’s commercial affects, not only the market for the movie, but also for the market for Lucasfilm’s right to license clips in advertising. Because Lucasfilm has licensed clips from “Star Wars” for use in other television commercials, this factor, like the others, is counted against Daniel. The court finds that Daniel has not made a successful fair use defense, and thus has infringed the copyright to “Star Wars.”

Scenario #2: Flaherty Filmmaker is shooting a documentary about the media’s treatment of the issue of global warming and wants to use a few shots from an evening news story focusing on the world’s biggest tire fire.

Flaherty tries to get permission from Nosey News Networks, Inc. (NNN), the company that produced the footage, but they turn him down. He decides to use it anyway, taking a 1-minute clip from the 6-minute story. The clip features a reporter who jokes about the impact on global warming the tire fire will cause, saying:“Will the fire warm the globe or just cause a few paranoid scientists to get hot under the collar … over to you, Cathy.” Flaherty adds “pop-up video”-style graphic bubbles with global warming statistics over the reporter’s derisive commentary. The overall effect of Flaherty’s editing and graphic additions makes the reporter seem extremely biased and ignorant of the issues. Even though Flaherty has been denied permission to use the clip, he nonetheless includes a copyright notice under the footage properly attributing the clip to NNN.

Flaherty’s documentary is released and he is sued by NNN. In court, he defends on the grounds that his use of NNN’s clip was fair use. The court reasons as follows:

•  In determining whether his use was fair, the court first looks to see “purpose and character of the use.” Flaherty used the clip as criticism of the news program and as social commentary. Furthermore, his use was educational. This factor is decided in his favor.

•  Second, the court turns to the clip itself, and looks to “the nature of the copyrighted work.” News broadcasts, although protected by copyright, are themselves more prone to be used under fair use. As the U.S. Supreme Court has stated: “Copying a news broadcast may have a stronger claim to fair use than copying a motion picture.”¹⁷ This factor is decided in Flaherty’s favor as well.

•  Third, the court examines how much Flaherty took, and how important that clip was to the news broadcast as a whole. Flaherty took 1 minute of a 6 minute broadcast. The court decides that this was a substantial amount, and, because the clip contained the heart of the piece—the tire fire—the factor is decided in NNN’s favor.

•  Fourth, the court looks to see how Flaherty’s unauthorized use affects the market for the NNN news segment. The court holds that because NNN does not license its clips, the nightly news market is NNN’s primary market. Flaherty’s use does not have any appreciable affect on the market, and this factor is decided in his favor as well.

•  The court also points out that Flaherty’s use was transformative—the “pop-up news bubbles” recast the clip. Furthermore, Flaherty acted in good faith by placing the NNN copyright notice below the clip.

•  The court rules that Flaherty’s unauthorized use was excused under fair use principles.

DE MINIMIS TAKING

“De minimis” is a fancy Latin phrase which means “of the least,” or “of trifles.” It refers to the taking of an insignificant amount of the copyrighted work, so trifling that a court will rule that no harm is done even though what was taken was taken, without permission. Although this is a defense to infringement, rather than an exception to copyrightability, it does underscore the fact that courts will rule that some infringement is just too harmless to worry about.

Example: Several years ago, a federal court was faced with the issue of potential copyright infringement within the movie “Seven.” In the movie there is a scene in which two police officers search a photographer’s apartment, looking for clues to a murder. They enter the photographer’s darkroom, which is filled with disturbing photographs. The copyrights to 10 of the photographs were owned by an artist who had never given his permission to use them. However, in the final version of the film, the photographs are out of focus and only appear on screen for a matter of seconds. When the artist sued, the court ruled that the unpermitted use of the artist’s photographs was a de minimis taking.¹⁸

The Legal Test. For films, the court pointed out that whether the use was de minimis is based upon:“1) the amount of the copyrighted work that is taken, as well as […] 2) the observability of the copyrighted work in the allegedly infringing work. Observability is determined by the length of time the copyrighted work appears in the allegedly infringing work, and its prominence in that work as revealed by the lighting and positioning of the copyrighted work.”¹⁹

THE DOCTRINE OF INDEPENDENT CREATION

This is not an exception to copyright law, but a rule that allows two people to have copyright ownership in what is essentially the same work. The way it works is this: if two authors come up with the same work independently of each other, and neither has copied the others’ work, both works will be entitled to copyright protection—even though both works are substantially similar to each other. This is true because copyright is based on originality, rather than novelty. As long as the work originated with an author, and is not copied from another author, that author may claim a copyright.

Example: Wendy Writer spent 2 years writing her script “The Platypus Papers.” Because she doesn’t have any contacts in Hollywood, her script sits on her hard drive without being seen by anyone but her mother. To her dismay, she opens up the paper one day and sees an ad for the new film “The Platypus Diaries,” produced by Monotreme Pictures, Inc.

When she goes to see the film, she is even more upset. The film is substantially similar to her screenplay. So much so, that if she could prove that the Monotreme Pictures had seen her script she would have a great claim for copyright infringement. However, because she can’t prove that anyone has seen her script—let alone copied it—she has no claim. She owns a copyright in her script and Monotreme Pictures has a copyright in their script and movie.²⁰

COPYRIGHT OWNERSHIP

Who Is the Owner?

The person or entity, which creates a copyrighted work is considered the “author.”

•  If two or more people jointly create a work, they may be joint authors.

•  In addition to people, companies can be authors.

•  When an employee creates a work on behalf of a company, that company, and not the employee, is considered the author of the work. (See Work Made for Hire, p.263.)

Joint Authors and Joint Works

When two or more authors work together to create a screenplay or film, copyright law may consider them to be joint authors. To be considered a joint author, each co-author must:

•  Contribute copyrightable elements to the joint work, and

•  Intend to merge their own contributions with the contributions of the other co-authors.

Joint authors have certain rights under copyright law; if the authors want to change these rights, they need to do so by a contract between them, such as a Writers’ Collaboration Agreement.

Copyrightable Contributions Required for Joint Authorship

Copyright law requires that each joint author’s contributions must be copyrightable in its own right. If you have one writer and one “idea person”you have only one author—the writer—unless the agreement specifies otherwise. As one court pointed out:

“[…] the person with noncopyrightable material who proposes to join forces with a skilled writer to produce a copyrightable work is free to make a contract to disclose his or her material in return for assignment of part ownership of the resulting copyright.”²¹

Example: Charlie and William are working on a screenplay together. Charlie just contributes the idea for the screenplay, and William does all of the writing. Because ideas are not copyrightable, Charlie cannot be considered a joint author. To share in the ownership of the copyright to the screenplay, Charlie must do so by entering into a contract with William.

What Are the Rights of a Joint Author?

When someone is a joint author, he or she has the following rights (again, unless a contract says otherwise):

•  Each joint author is entitled to an equal and undivided interest in the copyright with the other joint authors. Note:Their contributions do not have to be equal, and they will still share equally with other joint authors!

•  Joint authors may grant nonexclusive licenses to the joint work. But ALL joint authors must agree to grant an exclusive copyright license to the joint work.

•  Any joint author who sells or licenses the joint work must pay other joint authors an equal share of the money.

•  Joint authors are not liable to each other for copyright infringement.

•  Joint authors have a duty to avoid destroying the joint work.

•  Some courts require a signed contract to change a joint author’s rights from those guaranteed by copyright law.

License That Destroys the Value of the Work

A joint author is under a duty not to destroy the joint work. Some, but not all, courts have taken the view that a license substantially reducing the value of a joint work is a destruction of the work. In the case of the motion picture industry, one could make an argument that any license of the motion picture rights to a screenplay destroys its value to be licensed for other pictures: no studio wants to make the exact same picture another studio is making at the same time. But even if one joint author sues another for destroying the joint work and wins such a lawsuit, the recovery of damages is only as good as the defendant author’s ability to pay. No money can be recovered by the plaintiff author from the movie studio for the value of the destroyed work.

Is Everybody Who Contributes a Joint Author?

Not everyone who contributes to a movie is a joint author. In a case involving the authorship of the film “Malcolm X” the 9^th circuit held that a technical consultant was not a joint author, even though he “helped to rewrite, to make more authentic” the script and the movie.

The court stressed that for a movie (in the absence of a contract), authorship was generally limited to the above-the-line cast and crew—in short, those who “mastermind” the movie:

“[The Author is] the person to whom the work owes its origin and who superintended the whole work, the ‘master mind.’ In a movie this definition, in the absence of a contract to the contrary, would generally limit authorship to someone at the top of the screen credits, sometimes the producer, sometimes the director, possibly the star, or the screenwriter—someone who has artistic control. […] So many people might qualify as an ‘author’ if the question were limited to whether they made a substantial creative contribution that that test would not distinguish one from another. Everyone from the producer and director to casting director, costumer, hairstylist, and ‘best boy’ gets listed in the movie credits because all of their creative contributions really do matter. It is striking in ‘Malcolm X’ how much the person who controlled the hue of the lighting contributed, yet no one would use the word ‘author’ to denote that individual’s relationship to the movie. A creative contribution does not suffice to establish authorship of the movie.”²²

WORK MADE FOR HIRE

Normally the person who creates a work is considered the author and will own the copyright as well. Not so for a work made for hire. The copyright to a work made for hire is initially owned by the employer or other hiring party, not by the artist who created it.

For motion pictures, there are two ways a work gets to be a work made for hire²³:

•  Employees: Any copyrighted work created by employees within the scope of their employment is considered work made for hire, and is automatically owned by the employer.

Example: Artie the Animator is employed full-time by Rat Trap Productions, Inc., creating animations for the interstitial shorts they supply to the networks. Any time Artie creates a work for his employers, the copyright to that work is automatically owned by Rat Trap. Even if Artie creates that work at home, if it is for a Rat Trap client, the copyright will vest initially with Rat Trap. However, if Artie works on his own anime feature film—a project that is separate and distinct from any Rat Trap projects—he will initially own the copyright to that anime film. To be on the safe side, Artie may want to document that his anime project is not connected with any Rat Trap project, nor does it use any elements that he created in the course of working on any Rat Trap project.

•  Independent Contractors: For an independent contractor’s work on a motion picture to be considered a work made for hire, he or she must sign a written agreement explicitly stating that the work is a “work made for hire.”Without both the signed, written contract, and the clause that says the work produced is “work made for hire,” the independent contractor’s work is NOT a work made for hire.

Example: Artie the Animator quits Rat Trap Productions, Inc., and works as an independent contractor for several animation facilities. He picks up a project from Gertie and McCay Productions, Inc., creating backgrounds for a children’s cartoon series. He does the work at his home studio, on his own equipment, and with the exception of the delivery date, on his own schedule. Artie is clearly an independent contractor.

To own Artie’s work product as a work made for hire, Gertie and McCay Productions better have a written contract with Artie, which Artie must sign. The contract must expressly state that any work he produces for them is considered work made for hire.

Who Is an Employee for Purposes of Works Made for Hire?

Because an employee’s work product is automatically a work made for hire, it is critical to determine just who is an employee. This may not be as easy as you think. Merely writing the word “employee” on a contract does not automatically create an employee–employer relationship.

In determining who is an employee for work-made-for-hire purposes, courts will look at the following factors²⁴:

•  The hiring party’s right to control the manner and means by which the product is accomplished.

•  The skill required to make the product.

•  The source of the instrumentalities and tools.

•  The location of the work.

•  The duration of the relationship between the parties.

•  Whether the hiring party has the right to assign additional projects to the hired party.

•  The extent of the hired party’s discretion over when and how long to work. The method of payment.

•  The hired party’s role in hiring and paying assistants.

•  Whether the work is part of the regular business of the hiring party. Whether the hiring party is in business.

•  The provision of employee benefits.

•  The tax treatment of the hired party.

Duration of Work Made for Hire

Works made for hire have a shorter copyright life span than do works that are not made for hire. For any work made for hire created after January 1, 1978, copyright protection will last for 95 years from the year of first publication or 120 years from the year of creation, whichever expires first.

Work Made for Hire/Copyright Assignment Clause

To be doubly sure that the copyright is effectively transferred from the creator to the hiring party, most work-made-for-hire agreements provide for an alternative copyright assignment. That way, if for some reason the work is not considered a work made for hire, the hiring party gets the copyright anyway by virtue of the alternate copyright assignment clause:

Example: “Director acknowledges and agrees that all of his contributions to the Motion Picture, including, but not limited to writing, directing, storyboarding, gag creation, and any other result of the director’s services provided under this contract (the ‘Results and Proceeds’), are created as a ‘Works Made For Hire,’ with all copyright and other rights thereto vesting initially in the production company. Accordingly, the production company shall be considered the sole and exclusive author and copyright owner of the Results and Proceeds and of the Motion Picture. To the extent, if any, that ownership of the Motion Picture produced hereunder or the Results and Proceeds of Director’s services do not immediately vest in production company by virtue of this Agreement, Director hereby immediately assigns to production company all rights (including all rights of copyright) of every kind and character in and to the Picture and the results and proceeds of Director’s services. Director hereby waives all ‘moral rights,’‘droit moral,’and similar rights. All rights hereunder assigned shall be assigned in perpetuity, and such assignment shall be irrevocable. This effect of this clause shall survive any termination of this Agreement.”

LICENSING AND ASSIGNING THE COPYRIGHT

A copyright license is the grant of a portion of the copyright (usually limited by time, geography, medium, etc.). The person giving the license is the licensor; the person receiving the license is the licensee.

Example: Dingo Distributors, LLC., the licensor, grants a license to Bandicoot Broadcasting, Inc., the licensee, to broadcast “Wombats in Love” in North America, for a period of 3 years, or for a total of 9 runs, whichever comes first.

•  An exclusive license, also known as an assignment, is a license that gives the licensee the exclusive power to a certain right. It is a transfer of ownership of a copyright or any of the exclusive copyright right. Even if it is called a “transfer of ownership,” that transfer may be limited in duration, scope, geography, or any other way you can think of. Once an exclusive license is granted, the licensor no longer has any power to grant another license to that right or to exercise that granted right herself. An exclusive copyright license must be in writing and signed by the licensor.

•  Example: Pickled Piper Productions is negotiating a distribution deal for its film “Pickled Petunias” with Diamond Distributors, LLC. The distribution agreement grants the distributor the exclusive right to distribute the film in North America for 5 years. This is an assignment, because the right to distribute a copyrighted work is an exclusive copyright right. The assignment is limited by territory (North America) and duration (5 years). Because it is a copyright assignment, it must be in writing and signed by Pickled Piper Productions to be effective.

•  A nonexclusive license is a license that may be granted to any number of licensees at the same time. A nonexclusive license may be granted orally, or may even be implied from conduct. The holder of a nonexclusive license may not grant licenses to the work to others without the copyright owner’s permission.

The Copyright License Request Letter

From literary characters to stock footage to musical recordings, some form of copyright license will be used in virtually every stage of the production’s legal housekeeping.

The license and the request letter are the transactional workhorses of the production attorney. The two are often combined into one form—a letter of agreement that—

•  Asks the owner’s permission to use the copyrighted material.

•  Offers the owner licensing terms for the requested material’s use.

To accept the terms, the rights owner merely countersigns the letter and sends it back to the producer.

The request letter should be specific about how the producer intends to use the material, where the producer intends to exhibit the finished film or video, and the format of the film or video. Alternatively, depending on the owner’s leverage, the producer may be sent the copyright owner’s contracts and terms on a take-it-or-leave-it basis.

COPYRIGHT REGISTRATION

To fully protect a copyright, it should be registered. The advantages of registration and the registration process are covered in the section Copyright Registration, p. 268.

COPYRIGHT DURATION²⁶

A copyright has a life span, called a term. When that term expires, the work falls into the public domain, and anyone can use all or a portion of the copyrighted work without first seeking the permission of the copyright owner.

The life span of a copyright has changed many times over the last hundred years. For the majority of the 20^th century, a copyright was given an initial term, which could then be extended if the copyright was properly renewed with the government. Although the copyright of modern works no longer need to be renewed, the renewal status of a copyright may need to be researched when determining the life span of older copyrights.

How long the copyright lasts for a work is largely dependent upon—

•  When the work was made.

•  If the work has been published.

•  If the work needed to be renewed, and whether the work was, in fact, renewed.

•  When the author of the work died.

Copyright Duration of Works Originally Created on or After January 1, 1978

•  These works are protected the moment they are created and embodied in a tangible form.

•  The copyright lasts until 70 years after the author dies.

•  For joint works the term lasts for 70 years after the last surviving author dies

•  For works made for hire the duration of copyright will be 95 years from publication or 120 years from creation, whichever is comes first.

Copyright Duration of Works Originally Created Before January 1, 1978, but Not Published or Registered by That Date

•  The duration is the same as the preceding section. The life-plus-70-year or 95-/120-year terms will apply to these copyrights as well.

•  In no case will the term of copyright for works in this category expire before December 31, 2002.

•  For works published on or before December 31, 2002, the term of copyright will not expire before December 31, 2047.

Copyright Duration of Works Originally Created and Published Between 1964 and 1977

•  Protection started when the work was published with a copyright notice. The duration of protection is 95 years from date of publication with copyright notice.

•  Copyright renewal was automatic.

•  Registration was required.

Copyright Duration of Works Originally Created and Published Between 1923 and 1963

•  Protection started when work was published with a copyright notice.

•  Protection is for 95 years from date of publication with copyright notice—but only if the copyright was properly renewed.

•  Registration was required.

Copyright Duration of Works Originally Created and Published Before 1923

•  The work is probably in the public domain.

•  Registration was required.

COPYRIGHT INFRINGEMENT

Anybody who violates any of the exclusive rights of a copyright owner may be liable for copyright infringement. Keep in mind that you don’t have to intend to infringe a copyright in order to be liable for copyright infringement!

Proving Infringement

To prove copyright infringement, the copyright owner (the plaintiff) must prove both ownership and copying.

•  Ownership. That he or she owned a valid copyright.

•  Copying. That the defendant copied copyrightable elements of the plaintiff ’s copyrighted work.

•  There must be copying of copyrightable material. Copying of unprotectible elements is not enough. For instance, if all that was taken was an idea (which is not copyrightable), that would not be enough to prove copyright infringement, even if the plaintiff could show that the idea was directly taken from his or her copyrighted work.

•  Copying is composed of two parts, access and substantial similarity.

•  Access. Although it’s great if you can actually prove that the defendant copied your work, the evidence of copying is usually hard to come by. Recognizing that, courts will accept circumstantial evidence of the defendant’s access to the copyrighted work. A plaintiff proves access by showing that the defendant had the opportunity to view or to copy the plaintiff ’s work.

•  Substantial Similarity. In addition to access, the two works (the plaintiff ’s copyrighted work and the defendant’s work) must also be substantially similar. The test for “substantial similarity” is “whether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work.” ²⁷

Penalties for Infringement

Courts have a plethora of punishments in store for the copyright infringer:

•  Damages and Profits²⁸: a court may order an infringer to pay either:

•  The copyright owner’s actual damages and any additional profits of the infringer, or

•  Statutory damages in a sum of not less than $750 or more than $30,000 as the court considers just.

•  For willful infringement the court, in its discretion, may increase the award of statutory damages to a sum of not more than $150,000.

•  Costs and Attorneys Fees.²⁹ The court in its discretion may allow the recovery of full costs by or against any party … and the court may also award a reasonable attorney’s fee to the prevailing party as part of the costs.

•  Injunctions.³⁰ A court may issue injunctions halting the manufacture or distribution of infringing articles. (See Appendix C: No Injunction, p. 302.)

•  Impounding and Disposition of Infringing Articles.³¹ A court may order the destruction of all infringing copies of a copyrighted work. In addition to ordering the destruction of the copies, it can also order that the instruments that made the copies also be destroyed. This includes:“all plates, molds, matrices, masters, tapes, film negatives, or other articles by means of which such copies or phonorecords may be reproduced.”

•  Criminal Penalties. Courts may also sentence willful copyright infringers to jail for periods ranging from 1 to 10 years, depending upon the severity and amount of their willful infringement.³²

2. RIGHT OF PUBLICITY

WHAT IS THE RIGHT OF PUBLICITY?

An offshoot of privacy law, the right of publicity is a person’s right to benefit from the commercial exploitation of his or her own identity. Infringement of the right of publicity occurs from the unauthorized use of a person’s identity (or likeness, voice, name, etc.) for commercial purposes (i.e., labeling goods and services with the unauthorized likeness or using the unauthorized identity in commercials and advertisements).

A celebrity’s likeness is not the only part of his or her identity protected by their publicity rights. For instance, Johnny Carson won a suit against a company that was using the phrase “Here’s Johnny” to advertise a toilet.³³

Filmmakers tend to run into problems with right of publicity laws in two main areas:

•  When they attempt to create merchandise, such as action figures, T-shirts, lunch boxes, and so forth, that feature an actor whose publicity rights have not been obtained.

•  When they create television commercials for products or services that use a celebrity’s unlicensed likeness to help sell that product or service.

DURATION

The duration and extent of right of publicity protection differs from state to state. Some states require a signed writing to convey the publicity right.

•  In New York State, your right of publicity dies with you.

•  In California, it lasts for 70 years after your death; lawsuits for misappropriation of your right of publicity therefore can be brought by your estate.

•  Some states do not recognize rights of publicity.

FIRST AMENDMENT AND THE RIGHT OF PUBLICITY

The First Amendment greatly limits the extent to which the right of publicity can control areas outside of commercial exploitation of an image. Movies, television, some art, news, literature, and educational uses are usually not considered commercial use of a person’s right of publicity. Even TV commercials and other advertisements promoting movies and television shows do not infringe the rights of publicity of the actors who perform in those movies and television shows being advertised.

That being said, outside of obvious commercial use, such as featuring an unauthorized likeness in a television commercial, courts and state laws are literally all over the map with regards to what triggers infringement.

For instance:

•  A television news station broadcast of an entire human cannonball act without the performer’s permission. The court held this may misappropriate the right of publicity.³⁴

•  A movie recreated and fictionalized the events of the “Perfect Storm” and based its characters on real people. The court held this did not infringe the rights of publicity in the people depicted.³⁵

•  A film portrayed Bobby Seales’ participation in the Black Panthers without Mr. Seales’ consent. In rejecting Mr. Seales claim for infringement of the right of publicity, the court pointed out that a public figure had no exclusive right to his or her own life story. The court went on to state: “[I]n addressing right of publicity claims, courts have been mindful that the First Amendment provides greater protection to works of artistic expression such as movies, plays, books, and songs, than it provides to pure ‘commercial’ speech.”³⁶

•  A commercial which depicted a robot turning letters in game show violated Vanna White’s right of publicity.³⁷

One rule of thumb may be:

•  “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.”³⁸

TESTS TO DETERMINE INFRINGEMENT OF THE RIGHT OF PUBLICITY

The difficult part is determining where to draw the line between commercial and noncommercial use. Courts across the country have developed a variety of tests to determine whether a use is primarily commercial or primarily expressive.

•  Transformative Test. Does the work which allegedly infringes a person’s right of publicity contain significant transformative elements, so that the value of the work does not derive primarily from the celebrity’s fame?

•  Relatedness Test. Is the work which allegedly infringes a person’s right of publicity directly related to that person, like a life story? If so, then it may be protected under the First Amendment. However, if the name or likeness is used just to attract attention to that work and does not relate to the person himself, this may be a form of advertising and, therefore, require that person’s permission.

•  Predominant Use Test. Is the predominant purpose to exploit the person’s right of publicity or does it contain sufficient expressiveness so that it should be protected by the First Amendment?

When a filmmaker is dealing with the gray area of rights of publicity, the best practice, as always, may be to seek permission.

3. VIOLATION OF PRIVACY RIGHTS

Producers need to be careful to avoid stepping on the privacy rights of people whom they film. The extent to which privacy rights are recognized drastically differ from state to state. What a producer may do freely in one state may be actionable in another. As with most torts, consent is a valid defense to these causes of action.

There are four basic kinds of invasions of privacy:

•  Infringement of the right of publicity (previously discussed)

•  Intrusion upon seclusion

•  Public disclosure of private facts

•  False light

INTRUSION UPON SECLUSION

Intrusion upon Seclusion³⁹ is, perhaps, what is typically thought of when we think of invasion of privacy.

For a filmmaker to be liable for intrusion upon seclusion, all of the following elements must be present:

•  The filmmaker intrudes, physically or otherwise, upon the privacy, solitude, or personal affairs of his subject.

•  The intrusion must be of a kind that is objectionable to a reasonable person.

•  The intrusion must occur where the subject has a reasonable expectation of privacy.

Example: Polly Producer is shooting a documentary about money-laundering in the dry-cleaning industry. She tails Gus Grimes, CEO of Clean As A Whistle, Inc., a dry-cleaning chain. Hoping to get some dirt on his money-laundering activities, she sets up her camera in an apartment across the street from his house. Using a video camera with a powerful telephoto lens and a powerful microphone, she peers into the window of his house, recording his secret business dealings. Mr. Grimes may be able to sue Polly for the tort of intrusion upon seclusion. However, if Polly waited until Mr. Grimes was in a public park before photographing him, she might have a successful defense against his lawsuit: she would argue that there is no reasonable expectation of privacy for conversations which occur in a public place.

PUBLIC DISCLOSURE OF PRIVATE FACTS

A producer can be sued if he or she publishes private facts about the subject. For a filmmaker to be liable for public disclosure of private facts⁴⁰, all of the following elements must be present:

•  The filmmaker shoots a film which divulges private facts about the private life of the subject.

•  The filmmaker exhibits or shows the film to others (this is referred to as publication, even though it is a movie).

•  The publication of these facts would be highly offensive to a reasonable person.

•  There is no legitimate public interest in the disclosure of these facts.

Example: Polly Producer wants her audience to know everything about Gus Grimes—including the fact that he is secretly a homosexual. Polly learned of this from a friend of hers who works as a nurse in Mr. Grimes’s doctor’s office, where Mr. Grimes was tested last year for HIV. She photographs the lab reports showing Mr. Grimes’s medical condition, and includes it in her movie. Once again, Mr. Grimes may be able to sue her for invasion of privacy, this time for “public disclosure of private facts.” However, if Polly had obtained facts concerning Mr. Grimes sexual preference from a public record, she would have a good defense. Furthermore, if Mr. Grimes were a politician running on a platform in which he publicly attacked homosexuality, Polly would be able to defend the lawsuit brought against her on the grounds that “outing” Grimes and showing the hypocrisy of his platform was in the public interest.

Polly may have also violated the Federal HIPAA law,⁴¹ which protects the privacy of medical records, and thus may be looking at jail time.

FALSE LIGHT

False light⁴² is similar to defamation in some respects. (See Appendix A: Defamation, p. 275.) What is actionable here is publishing false information about somebody that attributes to that person viewpoints that he or she does not hold or actions that he or she did not take.

For a Producer to be liable for the tort of publicly placing a person in a false light, all of the following elements must be present:

•  The filmmaker publishes false facts about the subject.

•  A reasonable person would find these false facts highly offensive if the false facts were told about him or her.

•  The filmmaker had knowledge or acted in reckless disregard of the falsity of the published facts.

•  If the published information is a matter of public interest, or concerning a public figure, the Producer must have acted maliciously.

In contrast to defamation, the false light tort requires a higher level of publicity not required by defamation. And unlike the requirements for defamation, a person placed in a false light does not have to show harm to his reputation, but may only need to show he suffered mental distress or indignity from the false publication.

Example: Polly Producer has tailed Grimes for days. Her camera catches him heading into a McDonald’s restaurant to use their bathroom. Knowing that Grimes is a strict vegetarian, she intercuts the shot of him going into the McDonald’s with footage of hamburgers being fried, and close-ups of a hand shoving a cheeseburger into a mouth. She finishes the sequence with a shot of Grimes leaving the restaurant, and patting his stomach. People viewing her film assume that Grimes loves to stuff his face with cheeseburgers. When he discovers that people think he is a carnivore, Grimes suffers a nervous breakdown. The film is portraying him in a false light, and Grimes would be able to sue Polly yet again.

HIDDEN CAMERAS AND MICROPHONES

In addition to the privacy laws listed above, filmmakers can run into problems when they use hidden cameras and microphones. Federal law prohibits using microphones and cameras to eavesdrop on a conversation, unless the filmmaker has the consent of at least one of the parties to that conversation.⁴³

Example: Polly Producer wants to catch Gus Grimes in the act of talking to his mob connection, Tony Turpentine. She hides a small video camera in a flower vase and puts it on the restaurant table of the secluded booth where the two are to meet for lunch. The camera records the conversation between the two evildoers and transmits it to Polly’s laptop. Polly watches and listens to Gus and Tony’s nefarious schemes while hiding in the restaurant kitchen.

Polly has violated federal law, despite the fact that Gus and Tony were discussing criminal activities.

Some states allow the use of hidden microphones if only one of the parties to the conversation consents.

Example: Polly hides the microphone in the flower vase, but this time she has lunch with Tony and Gus and is part of their conversation. Polly may not have violated the law.

Be careful here! Twelve states require all of the parties to consent to having their conversations recorded: California, Connecticut, Florida, Illinois, Maryland, Massachusetts, Michigan, Montana, New Hampshire, Pennsylvania, and Washington.

Example: Polly has lunch with Gus and Tony in secluded luncheonette in Missoula, Montana. Unless she gets their permission to record the conversation, she may be violating Montana law – even though would probably not be violating federal law.

4. LIBEL AND DEFAMATION

DEFAMATION DEFINED

There are two forms of defamation, slander and libel. Slander is the spoken form of defamation, and libel is a written, televised, or otherwise recorded form.

To be able to sue for defamation, the following elements must be present:

•  A false and defamatory statement concerning another.

•  An unprivileged publication of that statement to a third party.

•  Fault amounting to at least negligence on the part of the publisher (fault amounting to “actual malice” in the case of a public figure). (See Appendix A: Public Figures, p. 278.)

•  Harm caused by the publication, or presumed harm because the statement falls within a special class of defamatory statements known as defamation per se.⁴⁴

A film that contains false statements damaging to someone’s reputation may expose the producer to claims of libel and defamation.

Defamatory Statement

A defamatory statement is one that is both false and that tends to “harm the reputation of another as to lower him in the estimation of the community or to deter third persons from associating or dealing with him.”⁴⁵ Usually statements that are “merely unflattering, annoying, irksome, or embarrassing, or that hurt only the plaintiff ’s feelings”⁴⁶ do not support a defamation claim. Nor will humor or parody.

Some kinds of defamatory statements are considered especially harmful. Examples include:

•  Accusations that the plaintiff has committed a crime.

•  Statements that hurt the plaintiff ’s business reputation.

•  Allegations that the plaintiff has a “loathsome disease.”

•  Accusations that the plaintiff has engaged in sexual misconduct.

Statements “Of or Concerning Another”

To sue somebody for libel, a plaintiff must prove that the libelous statement was aimed at him or her. The test, known as the of or concerning another test, looks to whether a reasonable person would assume the statement was made about or concerned the plaintiff.

Example: A documentary film alleges that Provincetown pharmacist Robert Martin poisoned all of his customers by filling prescriptions while he was drunk. If the allegations were false, a Provincetown pharmacist named Robert Martin could successfully sue the film company. However, it would be unlikely that a San Francisco pharmacist with the same name would win such a suit.

Defamation in Narrative Films

Although most people associate motion picture defamation with documentaries, narrative films can create problems for filmmakers as well. It may seem surprising that a work of fiction can give rise to a defamation claim—after all, unlike in a documentary, the author is not trying to say that the story is real. Trouble usually occurs when a filmmaker fictionalizes an actual person’s life or creates a character that closely resembles an actual person. When faced with such a claim, a court may satisfy the “of or concerning another” test by asking whether a reasonable person seeing the film would understand that the fictional character was, in actual fact, the plaintiff acting as described.⁴⁷

To establish a connection between the fictional character and the real person of the plaintiff, a court may compare a host of characteristics, such as the names, backgrounds, physical characteristics, ethnic backgrounds, personality, and age of the plaintiff and the character. A court may place emphasis on whether the filmmaker or author knew and had a relationship with the plaintiff. A disclaimer stating that the film is a work of fiction and is not intended to represent actual persons may be given weight by the court but is not conclusive.⁴⁸

Producers take heart: In cases involving fictional characters, similarity of names between fictional characters and real people, by itself, is usually not enough to transform coincidence into defamation.

Publication of Defamatory Statement

For a statement to defame someone, it must be published to a third party. “Published” does not mean printed in a book, nor does “published” have the same meaning as it does under copyright law (“the distribution of copies of a work to the public by sale”). For a defamatory statement to be published, it must be seen, heard, read, and so forth, by someone other than the person being defamed.

Example: Franco Filmmaker videotapes himself saying: “Barney Banker steals from the cash drawer at the First National Bank to fund his Hummel porcelain box collection.” The allegation is false and defamatory. Franco shows the tape only to Barney. Even though it is upsetting, Barney has not been defamed. But the moment Franco shows the tape to another person, Barney can sue for defamation.

Republication

If a defamatory statement is published again after its initial publication, it is considered “republished.” Generally, republishers may be sued for defamation as well. Filmmakers must be very cautious here! An interview in which a subject defames someone on-camera may create republication liability when it is broadcast, when it is screened in theaters, and when it is reproduced on a DVD. Because the filmmaker has indemnified the broadcaster, exhibitor, and DVD manufacturer, those parties’ legal claims and expenses will be passed on to the filmmaker.

There are exceptions to this rule of republication liability, but it is best to nip the problems in the bud by avoiding libel publication altogether.

PUBLIC FIGURES

A public figure is a politician, celebrity, or other individual who has voluntarily placed him- or herself in the midst of the public controversy. Public figures have a much more difficult time proving defamation. To prove defamation, public figures must show the statement was made with actual malice.

Actual Malice

In the context of defamation, actual malice is the knowledge that the statement was false or was made with a reckless disregard for its truth.

DEFENSES TO DEFAMATION

There are a number of possible defenses to a charge of defamation.

•  Truth. The most basic defense to defamation is truth. No matter how scandalous or injurious to a person’s reputation a statement may be, it will not be considered defamatory if it is true.

Example: Freddy Filmmaker shoots a documentary film titled “Prostitutes and the Policemen Who Love Them,” which features interviews with prostitutes naming the cops with whom they have had sexual congress. Sergeant Lou Scivious, named in the film, sues Freddy for libel. At trial, Freddy shows footage of Officer Scivious handing money to and entering a hotel room with the call girl in question. Freddy produces evidence showing that Officer Scivious was not engaged in an undercover vice operation targeting prostitution. The court will most likely find that the film’s statements about the officer were true, and therefore Freddy will not be liable for libel.

•  Consent. If someone consents to the publication of a defamatory statement, he will not be able to bring a claim for defamation. This is why any time you film, videotape, or photograph somebody you should get them to waive all claims of defamation.

Example: Freddy Filmmaker shoots an interview with Dusty Rinkle, the owner of a retirement home under investigation. Prior to the interview, Rinkle signs an interview release form in which he waives the right to sue for defamation. The final film intercuts footage of Rinkle discussing the benefits of his retirement home with cartoons showing Rinkle burying little old ladies alive. If Rinkle sues, Freddy Filmmaker might win with a defense that Rinkle consented and waived his right to sue for defamation.

•  Humor or parody. This is generally protected by the First Amendment and is considered a form of protected opinion (see below).

Example: Saturday Night Live does a sketch comedy routine about Gus Grimes, insinuating that he is a crook. Because this is a well-known humor and satire program, the skit will probably not be considered defamatory.

•  Privilege. Certain types of communications, such as judicial and legislative proceedings, are considered privileged, and therefore immune from claims of defamation.

Example: Freddy Filmmaker films congressional hearings in which a Congressman Abe O’Lition accuses a tobacco industry lobbyist of having a second job of selling crack cocaine to children. The lobbyist sues the filmmaker. The filmmaker may successfully defend by the virtue of the fact that the statement was made during the course of a legislative proceeding.

•  Opinion. Statements that reflect a point of view, or opinion, rather than specific allegations of fact are not considered defamatory. Also insulated from libel and slander are “vigorous epithets,” “rhetorical hyperbole,” “loose, figurative language,” or “lusty and imaginative expressions.”⁴⁹

Example: Freddy Filmmaker shoots a documentary about the history of New York pizza. In an interview with famous French chef, S. Cargo, the gourmet badmouths the owner of Pete’s Za, a popular New York pizzeria. Cargo says: “Pete’s pizza is the worst I’ve ever tasted. If you looked up the word disgusting in the dictionary you would find a picture of Pete. The man’s an idiot!” Pete sues Freddy Filmmaker and Cargo for libel. The court will most likely find that Cargo’s statements are opinion and, therefore, not actionable as libel.

BE CAREFUL HERE! Merely calling something an opinion does not insulate you from defamation. Whether a statement counts as an opinion depends upon whether it is falsifiable. In other words, can the statement be proven true or false? The statement, “In my opinion, Pete Za lied when he testified under oath,” if false may be defamatory, notwithstanding the use of the word “opinion,” because it accuses Mr. Za of the crime of perjury, and whether he lied might be proven true or false.

In determining whether a statement is an opinion, and therefore not defamatory, a court will take a look at the context in which the statement was made in the customary way in which the words used in the statement are typically uttered. The court may apply a “totality of circumstances” test to determine whether statement is fact or opinion. This test will take into account 1) the specific language used; (2) whether the statement is verifiable; (3) the general context of the statement; and (4) the broader context in which the statement appeared.⁵⁰

Examples of statements found to be opinion:

•  Union officials who are “willing to sacrifice the interests of the members of their union to further their own political aspirations and personal ambitions.”⁵¹

•  An attorney was a “very poor lawyer.”⁵²

•  A university vice president was the “Director of Butt Licking.”⁵³

BOTTOM LINE: It may be counterintuitive, but the more inflammatory and hyperbolic a statement is, the more likely a court will find it to be opinion, and not defamatory language. So instead of saying: “Pete Za cheats on his taxes,” you may be better off saying “Pete Za would cheat an orphan out of her last dime.”

MATTERS OF PUBLIC CONCERN: GROSS IRRESPONSIBILITY TEST

Thanks to the First Amendment, matters of public concern are given greater leeway.

In New York, if the allegedly defamatory material is of public concern, the allegedly defamed person will have to show that a television news reporter acted with gross irresponsibility with regard to the accuracy of his or her reporting. Said one court:

“Under this ‘gross irresponsibility’ standard, if an article is ‘arguably within the sphere of legitimate public concern’ or ‘reasonably related to matters warranting public exposition,’ the party allegedly defamed can recover only by establishing, by a preponderance of the evidence, that ‘the publisher acted in a grossly irresponsible manner without due consideration for the standards of information gathering and dissemination ordinarily followed by responsible parties.”⁵⁴

Gross Irresponsibility

In determining gross irresponsibility, courts look to whether the producer:

•  Followed “sound journalistic practices” in preparing the allegedly defamatory piece.

•  Followed “normal procedures,” including editorial review of the piece.

•  Had any reason to doubt the accuracy of the source relied upon and thus a duty to make further inquiry to verify the information.

•  Could have easily verified the truth.⁵⁵

SPECIAL RULES REGARDING DEFAMATION

•  You can’t defame a dead person.

•  “Defamatory statements” are not limited to words alone. Pictures, videos, and film may also contain defamatory material.

•  A filmmaker can be held liable for defamation even if she did not intend to defame somebody. The only intent that is required is the intent to publish a particular statement.

•  Defamation requires publication: the unprivileged dissemination of the statement to a third party. In other words, an otherwise defamatory statement made only to the person it allegedly defames is not defamation. However, for filmmakers, a motion picture containing defamatory statements shown or distributed to the public would be considered “published.”

•  The liability for defamation extends beyond the initial publisher. Even those parties who disseminate the defamatory material can be held liable if they should have known of the defamatory content.

•  Corporations may also sue for defamation when a film’s false statements prejudice it in the eyes of the business community by accusing it of criminal business practices, dishonest conduct, or lack of integrity.

•  Defamation law differs from state to state. However, federal constitutional law—primarily judicial interpretations of the First Amendment—sets limits to state defamation law.

•  In general, a producer has greater leeway regarding the kinds of statements she may publish when the statements concern a “public figure,” such as a politician or actor, than when they concern somebody who is not in the public eye.

•  Many states have retraction laws that allow the defaming party to retract her statements within a certain time period. If the statement is retracted, the defendant will be liable for fewer damages should she ultimately lose her case.

•  Groups of under 25 people can be libeled, and if so, they can each sue! For example, if you say “lawyers are all thieves,” that’s not libel. But if you say “All the lawyers living in Kalawao County, Hawaii are crooks,” you may be open to a libel claim. At 13 square miles, Kalawao County is the United States’ smallest county and probably has fewer than 25 attorneys (one would hope).

5. MORAL RIGHTS

Moral rights, sometimes referred to by the French name droit moral, are a collection of rights that allow the author of a work to have a say in how that work is used and whether it can be changed in any way.

Moral rights may include:

•  The author’s right to be credited for the film or to refuse to be credited.

•  The right of an author to prevent the film from being changed or altered in any way without the author’s permission.

•  The author’s right to determine how the film is shown.

•  The author’s right to receive royalties from the film.

•  The author’s right to stop the film from being exploited in any way that damages the author’s reputation.

In general, US laws do not protect moral rights in and of themselves. They leave these sorts of protections to a combination of copyright, trademark, and unfair competition law. Other countries, notably France and other European countries, do protect moral rights; as a result, moral rights issues may come in to play when the film is distributed in other countries.

Although moral rights generally cannot be transferped from one party to another, they may usually be waived (given up). To be on the safe side, production companies should include a clause that requires all writers, directors, actors, and other artists to waive their moral rights in the film.