[This blog entry originally appeared at MovieMaker.com.]

Q: There’s quite a lot of information that leads me to believe I should create an LLC before I undertake a documentary project. Since I am the only person who is involved on the production end, is this highly necessary?

I’m asking any on-screen interviewees to sign release forms and I’m also obtaining signed release forms for any locations. What about still photos and home videos? If I use the photos and old home video footage, do I need to obtain permission from every individual who might appear in the photos/videos?

A: Should you create an LLC? First things first: What is an LLC? LLC stands for limited liability company (not “limited liability corporation,” which is something of a redundancy). Because LLCs were originally modeled after certain types of partnerships, most states’ early LLC laws required more than one member. Most states today (including California, for example) have modified their laws to allow for an LLC to be composed of a single member. Like a corporation, an LLC has limited liability, meaning that the owners (or members) of the LLC can only be liable for the LLC’s actions in certain circumstances.

However, LLCs are generally easier to operate than corporations and have thus become more popular than corporations for certain types of small businesses. Without knowing more about your situation (e.g., Do you plan to exploit the documentary commercially? Is there any possibility that subjects of the documentary may be offended by it and sue over it? Will you need to obtain financing for the documentary?), I can’t definitively say whether or not you should form an LLC in connection with your documentary. However, I can say that the fact that you are the “only person involved on the production end” would not tend to weigh against forming an LLC. In fact, it would probably weigh in favor of forming an LLC. This is because if there are ever liability issues associated with the production of your documentary, you will likely shoulder that liability alone as you are the only person involved in its production. Creating an LLC and using it correctly might permit you to avoid certain types of personal liability that may result from the production of your documentary.

Your question regarding release forms for photos and home video footage raises a number of interesting issues. First, if you did not create the photos and home video you plan to use, you will probably need to obtain permission from the creator of those works (regardless of whether or not the creator is in the photos or videos). As a general matter, a photographer owns a copyright to photos or videos upon their creation (and regardless of whether the photos or videos have ever been registered with the Copyright Office). Thus, to use those works, you will need a license from the photographer(s). I strongly recommend you get written permission from the photographer(s) to use whatever photos and home videos you plan to use in your documentary. If you do not, you run the risk of being sued for copyright infringement and, among other things, seeing a federal court enjoin you from distribution or exhibition of your documentary and make you responsible for payment of monetary damages and the photographers’ attorneys’ fees. I imagine that this is something you’d rather not deal with.

Second, to the extent possible, you should obtain written releases from any person who is identifiable in the photographs and home videos. Although the remedies here would probably not be as drastic as those associated with copyright infringement, there is a risk that the use of images of an individual, or even a person’s voice, may violate an individual’s right to publicity. Courts usually grant documentary-makers quite a bit of freedom to use the likeness of persons when those images are reasonably related to the subject matter of the documentary. But it is a good idea to get a release in advance so you do not run the risk of having to deal with this unpredictable issue after your documentary is finished.

Good luck with your documentary.

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[This blog entry originally appeared at MovieMaker.com.]

Q: In shooting promotional/marketing or educational/instructional videos, my clients often seem confused about who owns the raw footage and who owns the finished piece when the project is complete. My understanding is that the clients own the finished piece that I was contracted to produce, but I reserve the rights to the master, raw footage I shot to be able to make that video. I’ve since written into my contracts that I own the raw footage and can use it for non-competing marketing materials as well as my own company’s marketing materials. But I also say that they can have access to a copy (the non-master files) of that footage if they request it and can use it however they best see fit. I added the last part when clients became unhappy with not owning all the raw takes/shots. Is there a right or wrong way to approach this issue and is there an appropriate way to phrase it in a contract?

A: While I am unable to offer specific advice about how to structure your contracts, as that would improperly cross the line between blog response and the provision of legal services, I can explain to you the fundamentals underlying this situation—i.e., who owns what and why.

To use a simple hypothetical, let’s assume that a moviemaker is hired by a third-party client to film and edit a promotional video, and the moviemaker does so without outside assistance. The default rule under the Copyright Act is that the moviemaker owns all copyrights in the video. This would include both the raw footage and the final, edited version of the video. This is so because under the Copyright Act, the artist who fixes the work in a tangible medium owns the copyright, not the third party for whose benefit the work was created. (Note that, although the client does not own the copyrights to this hypothetical video, it could generally argue that it enjoys an implied license to use the video for which it paid.)

In practice, of course, the moviemaker in the above example often ends up not owning the copyrights to his or her work. That occurs because the parties contract around the default rule of the Copyright Act. There are two typical ways in which an artist is divested of its copyright in a work that it creates: (1) Through an assignment; or (2) through a work for hire agreement (or arrangement).

An assignment agreement is the most common way for the client in the example above to obtain the copyrights to the video it commissioned. An assignment can operate to assign rights prospectively. Thus, production agreements of all types commonly contain clauses by which the artist assigns all rights of any kind to the “producer” of the work. The result is that from the inception of the work, the copyright is owned by the financier. Assignment agreements of this type often contain provisions requiring the artists to execute all documents necessary to effectuate the assignment, should further documentation be required.

This can also be accomplished through a work for hire arrangement or agreement. Under the Copyright Act, a work created by an employee acting within the scope of his or her employment is automatically deemed a work for hire, the copyright to which is owned by the employer. Thus, if the moviemaker in my example was not an independent entity, but was instead an employee of the company that commissioned the work, all copyrights in the video would be owned by the employer as a matter of course.

A work for hire arrangement can also be established by contract. Where a work has been specifically commissioned, the parties can provide in a written agreement that the work will be a “work for hire” or “work made for hire.” The Copyright Act limits such work for hire agreements to eight categories of works, one of which is “a part of a motion picture or other audiovisual work.” Accordingly, in the hypothetical, the client could contract to have its video produced as a work for hire, and all copyrights in the raw footage and final video would be owned by the client.

There are numerous ways in which these rights can be restructured. By agreement, the copyrights to the video could be jointly owned. Further, the parties could exchange licenses under which a non-owner would have certain limited rights to use the video or materials. Through these and other devices, a contract between the client and moviemaker can dictate a vast range of options in which the parties have varying rights to own and/or use the video. How the moviemaker chooses to structure its particular contracts will, of course, be the subject of negotiations with the client.

For a moviemaker seeking advice on how to structure and draft its contracts, I strongly suggest the retention of an attorney who is not only experienced in film production, but who also has a solid understanding of copyright law. Beware: They do not always go hand-in-hand!

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[This blog entry originally appeared at MovieMaker.com.]

Q: Can you explain to me the legalities surrounding “public domain,” specifically in regards to literature? My dream project is a reinterpretation of a classic Shakespeare story. Do I need to be granted permission to proceed with such a project?

A: The short answer to your question is NO. You do not need to obtain permission to proceed with a project based on one of William Shakespeare’s works. However, let me talk a little about the legalities surrounding public works and copyright law.

The term “public domain” is used to describe creative works (which can include books, artwork, songs, photographs and movies) that are not protected by intellectual property laws. Literature is protected by copyright law. Copyright protection provides the author of a work with an exclusive bundle of rights, which include the right to make copies of the work, to sell or distribute the work to the public, to prepare new works based on the protected work (often called adaptations or derivative works) and to perform the work in public. Third parties are not entitled to use copyrighted works without the permission of the copyright owner. By contrast, works that are in the public domain can be freely copied, sold, distributed, adapted, performed, etc. without seeking permission or paying for the use.

Works typically enter the public domain as a result of limits in copyright protection (e.g., copyright protection may only extend for a certain number of years after the death of the author) or because the work was created prior to the existence of copyright laws. The works of William Shakespeare were created well prior to the existence of any copyright laws, and are therefore in the public domain and can be copied, sold, distributed, adapted or performed without seeking anyone’s permission or paying for the use. As a result, you are free to copy or adapt a Shakespeare story in making your movie, and then sell and distribute the movie without seeking permission. As you embark on your project, however, there are a couple of additional issues to keep in mind.

First, it is important to note that because public domain works are essentially “free” to the public, no one can obtain copyright protection for the public domain work. However, one who uses the public domain material to create a new work can obtain copyright protection for the revisions and additions to the public domain material if such revisions and additions are original and entitled to copyright protection (which they most likely will be). For instance, if you make a film based on Romeo and Juliet, you could copyright your film as it would undoubtedly include original elements aside from the public domain material. As a result of that copyright protection, no one would be able to copy, sell, distribute, adapt or perform your work without your permission. On the other hand, however, you could not prevent someone else from using the underlying public domain work to make his or her own Romeo and Juliet film.

Second, because Shakespeare’s works are in the public domain, adaptations and re-interpretations of the works have been created and most likely copyrighted. In creating your interpretation, you obviously need to respect that copyright protection and not copy or use any part of a copyrighted work.

Best of luck with your project.

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[This blog entry originally appeared at MovieMaker.com.]

Q: A screenwriter and I signed a non-disclosure/non-circumvent agreement in late 2007 with the intention to make a movie together, myself serving as producer and bringing $6 million for the budget.

I found an overseas investor, the writer got paid WGA scale ($125,000 plus 14 percent) and as soon as the writer signed the deal with the investor, they conspired to leave me out and started production. But as the writer—a first-time writer-director—was so incompetent, the investor pulled his money out after only one-and-a-half weeks of shooting.

In the meantime, they left me hanging with no compensation. I had an old attorney friend write a demand letter, but they still ignored me, even after I told them I wouldn’t be serving as producer. At that point I was simply asking for a finder’s fee. Yet still nothing, and since I didn’t get compensated, I’m unable to file a complaint at the moment.

Suggestions?

A: Being squeezed out is an all-too-common problem which proves the importance of finalizing contracts before you do the work.

In your case, depending on the terms of your agreement, you may have a claim against the screenwriter for breach of contract. (I’m assuming from your use of the term “non-circumvent agreement” that the writer agreed not to cut you out of any deal for the film.) It is unclear from your question whether your attorney friend sent a demand letter to the screenwriter or just the investor. If you have not made a claim against the screenwriter, you may want to do so.

Be careful in making any announcements that you will not serve as producer, since such statements can be used as an excuse for not paying you. Under California law, another party’s breach excuses your obligation to perform. This legal tenet applies to both sides. Thus, if part of your deal was that you would produce, the writer or investor can claim that you refused to perform as an excuse to not pay you. By the same token, their prior refusal to pay may excuse your obligation to perform.

Unfortunately, there is no easy way to seek redress and it is likely that you will have to file a lawsuit to recover. Ask your attorney friend if he/she can recommend a contingent-fee lawyer who has experience in entertainment matters. If your friend does not have a recommendation, the Beverly Hills Bar Association (www.bhba.org) has a lawyer referral service that may be of help.

Good luck.

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In a new case filed by Los Angeles realtors Scott and Melinda Tamkin, the Tamkins allege they were defamed by the CBS Corporation and CSI writer Sarah Goldfinger when Ms. Goldfinger wrote an episode of the television show CSI featuring two characters allegedly based on the Tamkins. According to the Complaint:

After Defendant Goldfinger was involved in a failed real estate transaction with Plaintiffs, Scott and Melinda Tamkin, she hijacked their complete names, physical characteristics, personal characteristics, marital relationship, ages and professions to craft, without their knowledge or consent, an episode of the global blockbuster CSI: Crime Scene Investigation. Defendant Goldfinger then proceeded to embarrass the Tamkins, and potentially damage the successful business relationships they have taken years to build, by creating from whole cloth characters engaged in a reckless lifestyle of sexual bondage, pornography, drunkenness, marital discord, depression, financial straits, and possibly even murder.

The Tamkins allege that early versions of the script even referred to the characters as “Scott and Melinda Tamkin,” though the last name of the characters was apparently changed to Tucker “at the eleventh hour.” However, early versions of the script with the Tamkin name were allegedly distributed prior to the name change, resulting in Internet synopses and blog entries referring to the characters as the Tamkins.

Does the Tamkins’ defamation claim have a shot? Maybe. Although cases alleging defamation by fictional character are difficult to win, this one might be successful—assuming the facts alleged in the Tamkins’ Complaint are true, of course.

One of the issues that typically arises in fictional character cases is whether the character is sufficiently similar to the real life person such that viewers would identify the character with the actual person. As one court put it, “[t]he test is whether a reasonable person, viewing the motion picture [or television show], would understand the character . . . was, in actual fact, [the Defendant] conducting herself as described.” See Aguilar v. Universal City Studios, Inc., 174 Cal.App.3d 384, 219 (1985). Giving the character a similar name to the plaintiff is not sufficient, by itself, to meet this test. There also must be factual similarities between the character and the actual person.

Here, the Tamkins have a strong argument that viewers would “reasonably understand” the characters in the episode referred to them. Not only did the characters have the same first names as the Tamkins, but there were also factual similarities—most importantly that both the fictional characters and the actual Tamkins are a husband and wife real estate team. Throw in the fact the television episode allegedly featured actors who resembled the actual Tamkins—and the fact that the early script contained the actual last name of the Tamkins—and it seems the Tamkins will be able to satisfy this element.

Another issue in defamation cases is that the allegedly defamatory statement must be “provably false.” (This is because the truth of the statement is a defense to a defamation claim.) For instance, opinions can only be defamatory in certain instances because they generally cannot be proven true or false. Similarly, a work of fiction is generally not provably false because, by definition, it is a work of imagination. The argument here would be that anyone who watches CSI understands it is a work of fiction that is inherently false, and therefore the Tamkins’ claim must fail.

This same argument was made in a recent Georgia case where Vickie Stewart sued the author Haywood Smith, among others, claiming that Ms. Smith’s book The Red Hat Club contained a character that was based upon her. See Smith v. Stewart, 291 Ga.App. 86 (Ga. Ct. App. 2008). Ms. Stewart claimed she was defamed by the book because, unlike the character in the book, she was not promiscuous, alcoholic, lewd, “insensitive and ill-mannered, a ‘right-wing reactionary’ and atheist, and a ‘loose cannon’ with a bad temper.”

The Georgia Court of Appeals allowed the case to go forward:

[T]o the extent that the defendants argue that merely because a book is labeled as “fiction” or a “novel” it is automatically protected from being considered defamatory, such argument lacks merit. Simply because a book is labeled “fiction” does not mean that it may not be defamatory. In other words, the test for libel “is not whether the story is or is not characterized as ‘fiction,’ or ‘humor,’ but whether the charged portions, in context, could be reasonably understood as describing actual facts about the plaintiff or actual events in which she participated.”

Id. at 95.

Could the CSI episode “be reasonably understood as describing actual facts about the plaintiff[s] or actual events in which [the Tamkins] participated”? Maybe. On the one hand, some of the facts that occur in the show are clearly not true—for instance, the allegation that Mr. Tamkin is potentially a murderer. On the other hand, other alleged facts—such as that “Scott Tamkin’s business is failing financially”—might not be seen as fictional by a reasonable viewer. At the very least, the Tamkins should be able to avoid summary judgment on this issue.

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[This blog entry originally appeared at MovieMaker.com.]

Q: I am currently developing a documentary about life in a Section 8 apartment complex in our neighborhood. Beyond obvious things like releases from those who appear on camera, what other legal issues (short of defamatory issues) should I consider? For example, do I need permission from the apartment complex owner to film a tenant in his or her apartment? Do I need permission to film the exterior of the complex (e.g., as tenants walk into the building, etc.)? I know permission is always better, but it may constrain the ability to tell the story if asked for (e.g., intimidation by owners of the participating tenants, etc.).

A: First, you probably do not need permission from the owner of the apartment complex to film a tenant in his or her apartment. The tenant’s lease governs his or her use of the apartment. Unless the lease specifically prohibits filming, you should be fine. As one court put it in a different context: “The lease contains no limitation of the uses to which the lessee may put the leased property. In the absence of such limitation, the tenant may use the property for any lawful purpose not materially different from that in which they are usually employed, to which they are adapted or for which they were constructed.”

The above answer assumes that your filming is low-impact and limited to the documentary context. If you plan on using complex lighting, sets or anything else that might disturb other tenants, then you probably need permission from the owner of the complex and the affected residents. Also, if you were making a non-documentary film, it would be far more likely that you need permission from the owner of the complex. This is because most residential leases restrict the tenant’s use of the premises to non-commercial uses. Shooting a non-documentary film would likely breach such a provision and might lead to the tenant’s eviction.

You also probably do not need permission to film the exterior of the apartment complex. You may have heard of “building release forms,” which are similar to actor or model release forms. Examples are widely available on the Web, for instance here, here, here and here. However, the legal arguments for using such forms are tenuous. Unlike people, buildings do not have a “right to privacy” or a “right of publicity,” and a release is therefore probably not necessary. With that said, this is an unsettled area of the law, and if you think the owner would sign a release, it’s definitely not a bad idea.

Even if you have a property release, there are still some issues you need to consider. First, be careful not to portray the building in an unfair or inaccurate light, as this could result in a defamation claim from the owner. For instance, say your film portrays the apartment complex as a dilapidated slum. The building cannot sue you for unfairly portraying it as a slum, but the owner of the building may be able to sue you for unfairly portraying him as a slumlord-by-association. Second, if the building contains any identifiable trademarks or logos, you may want to avoid filming them. See my colleague Amber’s article on filming trademarks here for more information on this issue. Third, if the building contains any art—such as a sculpture or mural—you should not include the art in your film without the artist’s permission.

You also need to make sure that you are not on private property when you’re filming the apartment exterior. If you’re on private property and you do not have permission to be there, you may be liable for trespassing, regardless of what you’re filming.

Finally, because the apartment complex you will be filming is Section 8 housing, you may want to speak to a lawyer who specializes in this area. (For those of you reading this article who are unfamiliar with the Section 8 housing program, it is a federal program that provides rental subsidies to certain low-income families.) As far as I know, nothing in the Section 8 statutory framework prohibits moviemaking. Moreover, Section 8 tenants are explicitly allowed to “engage in legal profitmaking activities in the unit, but only if such activities are incidental to primary use of the unit for residence by members of the family.” Still, you do not want to do anything that might affect a family’s eligibility for the program or cause them to be evicted.

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[This blog entry originally appeared at MovieMaker.com.]

Q: I made a short film in 1983 and now a feature film is being made with the same title. The storylines are not the same but nobody checked with me about using my title. What options do I have? To whom would I file a complaint? Would it be with the studio making the film? The director? Or the screenwriter? Do I even have a case for suit?

A: A title can make a major difference in the success or failure of a motion picture, and it certainly makes sense that you would attempt to seek legal protection for your movie title. Surprisingly, such protection can often be difficult to obtain, as movie titles cannot be copyrighted. Thus, a film owner must look to trademark law as the source of legal protection for his or her movie title, but obtaining such protection is not automatic.

In general, a person can seek to register a trademark with the Patent and Trademark Office (“PTO”). Once a registration is obtained from the PTO, the trademark is presumed to be valid and the registrant is presumed to be the exclusive owner of the trademark. But the PTO will not register a single movie title as a trademark. To obtain a registration from the PTO, there must be at least one sequel for the movie to qualify as a series. In your case, you cannot obtain a registration from the PTO for your movie title since you’ve only made a single short film.

Courts have not been as rigid in their treatment of legal protection for movie titles. Courts have said that a movie title can qualify for trademark protection if the owner can prove that the title has obtained “secondary meaning.” To prove that a movie title has secondary meaning, an owner would need to show that, in the minds of the public, the movie title has become associated with a single source. In your case, this would mean that you would have to prove that the public associates the title of your movie with you. If your movie was a short film in 1983 that was not a major success, this would be nearly impossible to prove. Thus, the bad news is that it is highly unlikely that you have a case for a lawsuit.

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[This blog entry originally appeared at MovieMaker.com.]

Q: I got a grant to go and make a short documentary film in India this summer, on a certain type of musical style, which I am now editing. While I was there, I did not make any of the musicians I filmed and recorded sign any type of paper. I would like to send the finished movie to festivals, and maybe distribute it, but don’t want to have any legal trouble. What type of contract stipulating that they give me the right to what I filmed can I send them to have signed? And can I quote a passage of a book without asking for any authorization?

A: Your questions raise a number of interesting issues. Unfortunately, when questions are “interesting” to a lawyer, this usually means that the answers are not simple and straightforward.

Of course, I always recommend that moviemakers get releases in advance of filming anyone. This cannot be stressed enough and, regrettably, your situation illustrates why this is the case.

You filmed in India. Thus, the first issue is the most complicated, and it probably could have been avoided by a written release. Specifically, we need to analyze what law applies here: Do we apply the law of India? If so, is there some local Indian law we need to consider? Do we apply the law of the United States? If so, which state’s law do we apply? I would have to learn a lot more about, for example, the circumstances of the filming, your distribution plan and the law and policy of India before I could give you an answer to the preliminary question of what law even applies here, let alone what type of release you should get signed.

This is why any release you use should always include a “choice of law” clause. A choice of law clause is a standard provision in a contract providing that a particular jurisdiction’s law applies to the contract. Regardless of where you film, you should always have such a clause. For example, if you film in the United States, you will want to provide that one particular state’s law applies to your contract. For example, I generally include provisions in releases stating that the laws of California apply to any disputes between the parties to the contract.

So that’s the first thing you should have in any release: A choice of law clause. Let’s say you pick California as the law you want to apply. Then you will probably want to use broad language stating that the persons you filmed grant you the right to use their likeness, voice, photographs, etc. in perpetuity in all forms of media (known or unknown) in connection with your documentary, including in advertising related to the documentary and in derivative works based on your documentary.

Now, assuming that we can apply American law here, the good news is that you might be able to get by here without a release at all. If the subjects of the documentary knew that they were being filmed for your documentary, they probably consented, either explicitly or implicitly, to their use in the documentary. As a general matter, you don’t need a written consent to use a person in a documentary if they implicitly consented to their appearance in the film—though, as I stressed above, a signed writing is always preferable. Just don’t defame the person or depict them in a false light—people usually don’t implicitly consent to being defamed.

As I said at the outset, your questions raise a number of interesting issues, and we are not out of the woods yet. Specifically, you said that your documentary is about a musical style, and this raises some red flags regarding copyright law. Assuming you showed musicians playing music, you may need a license to use that music. Now, if a musician is playing his or her own music and knows that you are filming it for your documentary, he or she likely granted you an implied license to use that music in the film—again, the subject implicitly consented to the use.

However, if a musician is playing someone else’s music, and that music is copyrighted, you may need a license from the copyright owner of the musical composition. Whether you need a license or not would depend on whether your use is a “fair use.” The fair use doctrine is codified in the Copyright Act at 17 U.S.C. § 107 and provides that the use of a copyrighted work for purposes such as criticism, comment, news reporting, teaching, scholarship or research is “fair” and is thus not an infringement. The fair use analysis is a fact-intensive one, but courts generally consider several factors in determining whether there is a fair use, including the purpose and character of the work, the amount of use, and the effect upon the market for the copyrighted work.

Finally, your question regarding whether you can quote a passage from a book without authorization also raises classic fair use issues. But if you are only reading a small portion of the book, and the subject matter of what you read is directly related to the subject of your documentary, there is a good argument that this use is fair. The use is likely educational, you are only using a small portion of the book that is directly related to the subject of the documentary, and the reading of that portion would not likely adversely affect the market for the book. Again, without knowing more, I cannot provide you a definitive answer. And as any copyright lawyer will tell you, fair use issues are notoriously difficult.

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[This blog entry originally appeared at MovieMaker.com.]

Question: I’m working on a short film that was inspired by a song. I’m not including the song in the film, but some of the lines of dialogue are the same as some of the song lyrics. Do I need to seek permission to use a song as the inspiration for my film? It’s a no-budget short being made for the love of the art—not to make any money. What legal issues could come into play?

Answer: This is a classic question of “fair use” under copyright law. Although nothing is certain when applying the subjective standard of fair use, the invocation of a few lines of lyrics in a short film, where those lyrics are artistically relevant to the work, would most likely be permissible.

The first step in understanding this application of the fair use doctrine is to understand, at least superficially, how copyright law affects the use of a song or sound recording in an audiovisual work. As most artists know, copyright protection attaches the moment that an original work is fixed in a tangible medium, regardless of whether the work is registered with the U.S. Copyright Office. Thus, the moment a screenplay is written or a song is recorded, the work is protected by copyright.

With recorded music, there are two distinct copyrights. The underlying song, including the chord progression and lyrics, is protected by a “composition” copyright. The recording of that song is protected by a separate “sound recording” copyright. Those two copyrights may be owned by the same person or entity, or they may not.

Barring an exception under copyright law, the use of a sound recording and/or composition in a film requires a license from the owner (or owners) of the copyrights. Thus, for example, for the film Donnie Darko to feature a slow, stylized version of Tears For Fears’ “Mad World,” a license to the underlying composition—referred to as a “synch license”—would be required. (Whether or not Gary Jules and Michael Andrews’s brilliant version of the song further required a license to make a “derivative work” is a separate issue.) Had the producers of Donnie Darko desired to use the original version of “Mad World,” an additional license for the sound recording by Tears For Fears would have been required.

When licensing a musical composition for the purposes of recording a “cover,” the artist may obtain a “compulsory” or “mechanical” license that cannot be refused by the copyright owner (assuming certain requirements are met). Conversely, to incorporate a musical composition or sound recording into an audiovisual work like a film, a synch license, subject to the discretion of the copyright owner, is required. This may seem unfairly stifling at first blush, but consider the alternative: Without the requirement of a discretionary synch license, you could find all of your favorite Radiohead songs, re-recorded by Yanni, as fodder for TV commercials hawking household products.

The wholesale use of lyrics from a song in a film would generally require a synch license to the composition. Here, however, the moviemaker proposes to use only some lines—“some” presumably meaning a few. Further, the moviemaker appears to propose using the lyrics in a manner that is relevant to the subject and story of the film. With the reminder that there are few “sure things” in law, this would likely be deemed a fair use of the song that does not require licensing.

The fair use doctrine is codified in the Copyright Act at 17 U.S.C. § 107, providing that the “fair use” of a work for purposes such as criticism, comment, news reporting, teaching, scholarship, or research, is not an infringement. The Act sets forth several factors to consider, including the purpose and character of the work, the amount of use, and the effect upon the market for the copyrighted work. The case law has distilled these factors down into two primary inquiries: Is the use for “commercial” purposes, and is it “transformative?” Thus, if a song is used for pure commercial purposes, such as in a television commercial promoting the sale of a product, that is presumably not a fair use. Although most films have the goal of turning a profit, the case law tends not to treat them as pure commercial speech—providing them more leeway in the fair use analysis—even with major studio releases that have profit as their primary goal. The fact that the film here is a low-budget film, with profit being a secondary concern, weighs even further in the moviemaker’s favor.

Most important is the “transformative” nature of the use. Courts look to see whether the use of a copyrighted work “adds something new, with a further purpose or different character, altering the first new expression, meaning, or message.” Lennon v. Premise Media Corp., 556 F.Supp.2d 310, 322 (S.D.N.Y. 2008). This definition may sound as impenetrable as the term itself, and copyright lawyers, judges, and professors frequently disagree in applying this subjective standard. Here, where the lyrics to a song are being used as dialogue, a court would likely find fair use if there is, what I call, an “artistic relevance” to the use of the lyrics. That is, if the song is relevant to the subject matter of the film, if it motivates the plot or protagonist, and if some of the lyrics are woven into the dialogue in a way that provides further expression or perhaps fuels the story, that sounds like fair use. On the other hand, if the lyrics are used gratuitously—plagiarized in the film not because of any pertinence to the story but rather because the author desires simply to capitalize on the songwriter’s creative writing—that sounds like infringement.

I recommend reading the aforementioned opinion in Lennon v. Premise Media, in which a New York court found that the unauthorized use of 15 seconds of John Lennon’s recording of “Imagine” constituted fair use because of how the song and lyrics were woven together into a documentary about science and religion. Some (including myself) might question the result in that case, but the opinion at least offers additional insight into what I describe as “artistic relevance” and how that informs the fair use analysis.

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The use of social networking sites such as Facebook and MySpace increases exponentially seemingly every day.  As a result, more and more people are blogging, sharing online journals and posting photos and other personal information about themselves so that it can be viewed by others over the net.  Cases involving the use of such networking sites give us a glimpse into how the law is evolving to deal with the issues that arise from individuals posting personal thoughts and information on these sites.

A cautionary tale came recently out of the California Court of Appeal in a case entitled Moreno v. Hanford Sentinel, No. F054138 (April 30, 2008). The case involved a UC Berkeley student — Cynthia Moreno — who grew up in the suburban California town of Coalinga.  Ms. Moreno had posted to her online journal on her MySpace page a poem that she wrote entitled “Ode to Coalinga.”  The Ode began with the statement that “the older I get the more I realize I despise Coalinga.”  The Ode apparently went on to make other highly critical comments about Coalinga and its residents and portrayed the town in an extremely unflattering way.  Although Ms. Moreno removed the Ode from her MySpace page within less than a week, it was sent by the principal of a local high school to a newspaper in Coalinga.  The newspaper published the Ode along with Ms. Moreno’s full name.

The publication of “Ode to Coalinga” elicited an immediate and heated reaction in the Coalinga community.  Ms. Moreno’s family — including her parents and sister (who still resided in Coalinga at the time) — received death threats and shots were fired at the Moreno family home.  The family was forced to move out of Coalinga and, due to financial losses, shutter the twenty-year-old family business.  As a result, the Moreno family sued those involved in the publication of the Ode, including the school principal who had sent the poem to the local newspaper for publication and the newspaper itself, for invasion of privacy and intentional infliction of emotional distress.  The trial court dismissed the Morenos’ claims.

The Court of Appeal made several significant findings.  First, the Court affirmed the trial court’s ruling that the Morenos could not make a claim for invasion of privacy based on the private disclosure of public facts.  Because Ms. Moreno had published her opinions about Coalinga by posting the Ode on myspace.com (thereby making the Ode available to anyone online), she lost any expectation of privacy in the Ode.  The Court rejected Ms. Moreno’s arguments that she had expected only a limited audience for the work and that she had removed the work almost immediately from her MySpace page.  The Court also found that Ms. Moreno’s family could not have a claim for invasion of privacy as such a claim — if it existed at all — is highly personal and belongs only to Cynthia Moreno.

Also significant is the fact that even though Ms. Moreno’s last name appeared nowhere on her MySpace page (she referred to herself only as “Cynthia”), the Court rejected the notion that her last name, which was published by the newspaper, was a private fact which could support an invasion of privacy claim.  The Court based its finding in part on the fact that her MySpace page contained her photograph, thereby making her identity “readily ascertainable” and “a public fact.”

The Court of Appeal did hand the Morenos one victory — overruling the lower court and allowing the family’s claim for intentional infliction of emotional distress against the school principal who sent the Ode to the newspaper to proceed.  The Appellate Court held that it was up to a jury to decide whether the principal’s actions in sending the Ode to the newspaper for publication were extreme and outrageous in light of all the circumstances.

Ms. Moreno’s Ode therefore reminds us all that the self-publication of information and opinions on the internet will likely result in the loss of privacy rights in the material and at least some loss of the ability to control where and how the information is promulgated by others.

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