Author
Fran Smallson specializes in intellectual property and international law with Donahue, Gallagher, Woods & Wood, with offices in Oakland, Mill Valley and Walnut Creek. The co-author of NAFTA: Protecting and Enforcing Intellectual Property Rights in North America (Shepard's/McGraw-Hill 1994), she is contributing editor and author of monthly legal articles for Morph's Outpost on the Digital Frontier, a multimedia/high-technology magazine. Robyn R. Newcomb, an attorney with Donahue, Gallagher, assisted in preparing this article.
The promise of multimedia, touted as the single most promising technological innovation in decades for fields as varied as entertainment to health care to the automotive industry, has one major obstacle: the maze surrounding obtaining rights to use content supplied by others. The most difficult questions in that maze are not just how to license the content once it has been identified, but rather which content needs to be licensed and where one will find the potential licensor.
The closest analogy to this process is a title search when purchasing real property. Unlike the real property search, however, when a client chooses to license someone else's pre-existing works rather than create original content, the owners of the pre-existing works are often numerous, difficult to identify and hard to locate.
Although this article sets forth a general road map for locating right-holders, a "do-it-yourself" approach may not be your or your client's preference. There are companies that will research and negotiate all appropriate clearances, which means finding the right-holders and negotiating the license to use the work and the appropriate license fee. These types of companies provide "one-stop shopping," which allows the developer to avoid the problems of trying to contact and negotiate with the numerous potential licensors.
An example of one such company is Total Clearance of Mill Valley, which specializes in obtaining clearances for the entertainment and multimedia industries on a worldwide basis for rights relating to film, cartoons, stills, text, television, video, music, artists, authors, actors, photographers and stunt performers and also deals with U.S. and international guild and union issues. In addition, there are clearinghouses that have purchased the rights to certain motion pictures, videos, still photos and the like specifically to market these rights for re-use, as detailed below.
These companies are a convenient resource for the multimedia developer because often they can negotiate most if not all licenses needed for the entire body of work one wishes to use, whether that work is a film clip, piece of music, or other creative effort. Other companies and organizations have more specialized licensing arenas or simply can be used as means for locating the appropriate right-holder. The primary sources for clearances are listed in a separate section adjoining this article.
Acquiring a license to use a film clip presents the developer with perhaps the most complicated licensing challenge, as it involves the most numerous set of potential licensors. Using film licensing as a hypothetical, similar search suggestions apply to the related rights discussed even where the developer is seeking a license for some other kind of pre-existing creative product.
Although a motion picture may be protected as a single "work," it is often composed of many other protected works. The following categories are potential rights that the developer may need to acquire separately:
These rights fall into two basic categories: "intrinsic" and "extrinsic." Generally, intrinsic rights include the script and any works created by motion picture studio employees for use in the film. These rights are usually considered the property of the studio and thus are most likely included in a license granted by the studio to use the clip.
Extrinsic rights are those retained by other parties, such as performers, musicians or composers, and must be licensed separately. Generally, pre-existing works fall within this category and include, among others, music rights and any literary work upon which the screenplay is based.
Although these right-holders may have licensed their work for use in the film, the licensee may not have the authority to allow others to use the works in a new multimedia production. For this reason it is important to check, whenever possible, the agreements surrounding the creation of the motion picture, including collective bargaining agreements with various unions, and to obtain warranties that the licensor of the motion picture clip actually has the authority to grant the relevant related rights.
To determine whether a work and its related rights are protected by a registered copyright you may wish to consider a copyright search through United States Copyright Office records. The Copyright Office charges $20 for each hour or fraction of an hour searched. A copyright (and trademark) search may be performed online using DIALOG. Such a copyright search, however, will only reveal copyrights registered in the United States, and even if works are not registered they may still be protected by copyright law.
Other leads for locating right-holders include film archives, such as those at the University of California-Los Angeles and University of Southern California. At UCLA, searches may be performed online to locate information on the films archived there. In addition, the Library of Congress, the American Film Institute and the Academy of Motion Picture Arts and Sciences are useful resources in tracking ownership of motion picture-related rights.
In addition, various online services are beginning to address, in part, the needs associated with multimedia licensing. One such service is being developed by the USC Entertainment Technology Center -- ETC -- which is sponsored by a mix of high-technology and entertainment companies including Apple Computer, Viacom, Pacific Bell and Warner Brothers. The ETC has developed HollyNet, which is an online marketplace for film producers to locate everything needed to make a film, including the location of actors, stock footage and music.
If the motion picture to be used is based upon a pre-existing work such as a novel, the multimedia developer must generally obtain permission to use that work. Since the novel will most likely be protected under copyright law, the U.S. Copyright Office search described above should be considered. Contacting the publisher of the novel is also a good way to begin negotiations to acquire the necessary rights.
Although the script is usually considered an intrinsic part of a motion picture and the rights to use it often accompany the rights to use the motion picture, the screenwriter may have retained rights under what is known as the "separation of rights." This includes such rights as publication, sequel and merchandising rights. If the writer must be located, one option is to contact the Writers Guild of America.
The characters in a motion picture may be based upon an underlying literary work and protected by copyright. Titles, although not protectable by copyright, may be registered with the Motion Picture Association (which will only perform searches for their members). In addition to risking copyright infringement for the unauthorized use of characters, use of a well-known title or character without permission may result in liability for unfair competition or a violation of a person's right of publicity. Thompson & Thompson, a data base search service, will perform character and title searches to assist in determining whether the use might potentially infringe on others' rights.
Privacy and rights of publicity are other issues of concern when using characters since use of a character may infringe on right to privacy or publicity if the character is similar to or actually based upon an existing person. The right to prevent others from commercially exploiting their performances and persona is generally known as the right of publicity. A performer, and any other individual for that matter, has a protectable identity that may be represented by his or her name, nickname, picture, voice, physical attributes or performing style; individually or together they form a "persona."
The right of publicity is protected by many states and is also protected by the agreements between the performers' unions and most motion picture studios. Unless the performer has specifically assigned the rights to use his or her image, persona and voice to the studio for use in other productions, the multimedia developer must obtain permission from that actor to avoid potential liability for defamation, violation of the performer's right to privacy or publicity and possibly unfair competition. This also applies to the use of famous stunts performed by recognizable stuntpersons.
Even if a film is within the public domain, the developer may still be required to obtain clearance from the performers. The performers' rights are distinct from any copyright on the film itself and will survive the actor and will be passed along to the performer's heirs even after the copyright expires.
Most actors will be identified in the film credits. However, there may be smaller, non-speaking parts not contained in the credits but that may still require clearance. In such cases, the performers may sometimes be identified by referring to the American Film Institute's catalog of films, through the directories of the Academy of Motion Pictures Arts and Sciences or by using HollyNet as described above. Once the performer has been identified, he or she may be located through the organizations mentioned above or through the appropriate union (the Screen Actors Guild or the American Federation of Television and Radio Artists). Generally, when obtaining rights from union performers, the developers may also be required to compensate the unions to which the performer belongs.
If the desired clip contains pre-existing works of art, such as a painting or statute, a separate release may be required. Generally, the test is whether or not the art is background. Simply put, if the piece of art is one of the main focal points in the scene, it is not considered background and permission of the owner is necessary to use it. If it is barely noticeable and not mentioned, then it can most likely be re-used without any special permission. When in doubt, however, it is best to obtain a clearance or remove the artwork from the clip, if possible.
An animation clip included in a film clip has many protectable components, including the script, voice-overs and characters. In addition to copyright, animated characters may be protected by trademark law. The Screen Cartoonist Union may help you locate artists involved in the actual screen production. If the animation is based upon a pre-existing comic strip, that material must be considered also. To determine ownership of the previously published work, you may also contact the publisher or the Graphic Artists Guild.
Copyright protection extends to two separate aspects of music: the musical composition, which also may be divisible into two aspects, the music itself and the lyrics; and the embodiment of the music, that is, the sound recording. Licenses may need to be obtained for each aspect. The appropriate license will depend on how the multimedia product will incorporate the music. There are seven distinct types of music licenses:
Although the music industry is slowly adapting to the various new uses for its products, the original licensing categories were not initially created with multimedia products in mind and do not necessarily cover the seemingly infinite possibilities created by multimedia. Since the intended use of licensed music may not fall squarely within any of these categories, it is important that rights, whatever the named category, are clearly set forth in the license agreement.
The distinction between whether your client wishes to license the music itself or the sound recording of the music is a very important issue in a licensing matter, particularly where music has fallen into the public domain. Although a work such as Beethoven's Symphony No. 9 is now within the public domain, the specific music recording of a given performance, say by the New York Philharmonic, may be copyrighted. Moreover, there may be several individual copyright-holders who have copyright interests in the sound recording. They might include the conductor, orchestra and choral group.
The process of locating copyright-holders in a particular piece of music can be very complicated. The first step should naturally be to look at a copy of the work for such details as a copyright notice, when and where the work was published and the identity of the author and publisher. Unfortunately, this is not always the most reliable way to find copyright-holders, because music jackets may not properly identify all of the copyright-holders to a particular work, and it often will not provide an address or other means to contact the record producer.
If the music is an audio recording and a synchronization license is needed for a multimedia production, the best place to begin is the Harry Fox Agency in New York or Copyright Management Inc. in Nashville. These companies license synchronization rights on behalf of the vast majority of music publishers. If these companies do not represent the copyright-holder, they may know who does. In addition, the Clearing House in Los Angeles also performs clearing services for music rights.
Another good source for locating copyright-holders is performing-rights societies. You can call the "index" department of ASCAP (American Society of Composers, Authors & Publishers), BMI (Broadcast Music Inc.) or SESAC (formerly Society of European State Authors and Composers, now just SESAC), and ask for the names and telephone numbers of the music publishers who own the songs you want to use.
Public-performance licenses may also be obtained from these societies; however, they do not generally grant the other licenses that likely will be necessary for use with a multimedia product. With the growth of multimedia, this is changing, and new departments are currently being developed at these societies to meet the emerging needs. Finally, other organizations such as TRF Music Libraries provide a more full range of music licensing that includes rights relating to multimedia productions.
One aspect of music licensing that may need special attention is the area of rock or music videos. As with a film clip, it is important to obtain the full range of rights in addition to the video rights, such as performance rights of the musicians, actors and/or models, and the music rights discussed above. Unfortunately, there is no uniform means of obtaining such clearances.
In some cases, it is sufficient to negotiate with the band or its representatives (which may be the record company) to obtain all the music, visual and performance rights of the band members. In other instances, it may be necessary to obtain a release from each individual band member who performs in the video, as well as releases from the record company, unions, video producers and other performers.
Other less obvious areas include trademark releases. For instance, if the video or film clip contains trademarks of companies that may be promoting the concert or simply T-shirts worn by the band members that bear the logos of shoe companies, for instance, the developer may need to obtain releases from those companies as well.
Unfortunately, there is no standardized way to obtain the rights necessary to use most motion picture clips in a multimedia production. There are several means, however, to protect the developer in the process of locating and obtaining the required consent of each necessary right-holder.
When negotiating with a party who claims to have title to all rights in a clip, check other sources whenever possible and obtain a warranty of title and indemnification. A warranty or indemnity is only good if the licensor has sufficient financial resources to back up such assurances. Thus, the developer should also consider obtaining an errors-and-omissions insurance policy, requiring that a due-diligence search be conducted. This will help protect the developer in the event the developer somehow innocently infringes on someone else's rights.
Finally, be aware that just because the developer obtains the rights to use a work, the developer does not necessarily have the right to alter the work without specific permission to do so. The concept of "moral rights" allows the author of a work to maintain some control over its manipulation and may limit the multimedia producer's ability to change, modify or enhance the work, despite receiving permission to reproduce it in a multimedia work.
The legal concept of "moral rights" in copyrighted works is fairly new in the United States but exists with wide application in various foreign countries. Moral rights have now limited recognition in the United States for works of visual art, which includes, with limitations, paintings, drawings, prints, sculptures and still photographs. It does not include applied art, motion pictures or other audio-visual works, books, periodicals, data bases, electronic information services or publications.
The entertainment and software industries are slowly adjusting to licensing practices that will be more suitable for multimedia. It will be some time, however, before obtaining rights to many pre-existing works can be described as anything but arduous.
The Clearing House Ltd.
849 S. Broadway, seventh floor
Los Angeles, CA 90014
(213) 624-3947
Specializes in music clearances for television, film producers and interactive multimedia products.
BZ/Rights & Permissions Inc.
125 W. 72nd St.
New York, N.Y. 10023
(212) 580-0615
Clearing service for various rights including music, film, literature, film and television.
Bogner Entertainment Inc.
P.O Box 641428
Los Angeles, CA 90064
Specializes in supervising and clearing music and film clips for all types of uses.
The American Film Institute
2021 N. Western Ave.
Los Angeles, CA 90027
(213) 856-7600
Nonprofit organization dedicated to preserving film, television and video with extensive library of books, films, scripts, television programming, etc. Library is open to the public.
DIALOG Information Services Inc.
3460 Hillview Ave.
Palo Alto, CA 94304
(800) 334-2564
Online data-base information service.
Thompson & Thompson
550 Victory Road
North Quincy, MA 02171-1545
(617) 479-1600
Search service used for determining U.S. availability and registerablity of trademarks, copyrights, titles, designs and characters, film and TV titles, characters and designs. Will research chain of title of all copyrighted works.
UCLA Film and Television Archive
Archive Research and Study Center
46 Powell Library
(temporarily located in 160 Powell Library)
405 Hilgrad Ave.
Los Angeles, CA 90024-1517
(310) 206-5388
Contains the largest university-held collection of motion pictures and broadcast programming. The archive's collection can be found through ORION, UCLA's online information system. The archive's commercial services division makes its newsreel collection accessible to media producers to include vintage footage in production.
University of Southern California School of Cinema & Television
The Integrated Studio Project
Los Angeles, CA 90089-2211
(213) 740-6207
e-mail: etc@usc.edu
University research facility with online marketplace for filmmakers and multimedia developers to locate actors, footage and other materials necessary for filmmaking.
U.S. Copyright Office
Register of Copyrights
Library of Congress
Washington, D.C. 20559
(202) 707-3000
BMI
320 W. 57th St.
New York, NY 10019
(212) 586-2000
Performing-rights society and licensing organization representing over 160,000 music copyright owners; grants public-performance licenses to over 3 million musical works.
SESAC
55 Music Square East
Nashville, TN 37203
(615) 320-0055
Performing-rights society and licensing organization representing over 200,000 copyrighted compositions; grants public-performance licenses; maintains agreements with over 45 foreign performing-rights societies.
TRF Music Inc.
747 Chestnut Ridge Road
Chestnut Ridge, NY 10977
(914) 356-0800
Source for all types of music licensing for television, radio, film and multimedia containing over 50,000 selections.
Graphic Artists Guild
11 W. 20th St., eighth floor
New York, NY 10011
(212) 463-7730
Labor union of graphic artists; provides some assistance to locate member graphic artists or their publishers. GAG does not provide clearing services.
Screen Actors Guild
5757 Wilshire Blvd., eighth floor
Los Angeles, CA 90036
(213) 954-1600
Union representing over 78,000 professional actors and performing artists; provides resources for locating actors and artists. SAG does not provide clearing services.
The Songwriters Guild of America
6430 Sunset Blvd., Suite 1002
Hollywood, CA 90028
(213) 462-1108
Association of songwriters; provides resources for locating songwriters but does not provide clearing services.