Legal Issues: What Can and
Can't Be Visible on Set
by Thomas A. Crowell, Esq.
ON-SET IP INFRINGEMENT
When the director yells “action,” what the camera captures can spark lawsuits. All it takes is one suddenly inspired art director to place an uncleared Warhol print on the wall of the hero’s apartment or the Coca-Cola® logo on the mirror the drug-addicted villain uses to cut his cocaine. Unless the producer has the permission of all of the respective copyright and trademark owners, photography can lead to infringement.
Copyrighted materials appear everywhere: posters, sculptures, product labels, makeup designs, even the tinny music playing over the radio held by an extra. All of these should be cleared for use. Indeed, copyright is the bane of the conscientious art director. Don’t fall into the trap of thinking that just because you have a valid location release from a homeowner that you also have the right to photograph any of the copyrighted materials in his or her home. The homeowner may no more have the right to authorize the photography of the Warhol print than the art director does.
BE CAREFUL THAT YOUR INSPIRATION IS NOT INFRINGEMENT
In a scene in the film “12 Monkeys,” Bruce Willis’s character spends a few minutes being interrogated while being restrained in a futuristic chair. The design of the chair was inspired by a drawing of a chair, titled “Neomechanical Tower (Upper) Chamber,” by the artist Lebbeus Woods. The film’s director, Terry Gilliam, discussed the drawing with his production designer, and the film’s chair was constructed without Mr. Wood’s permission being obtained.
When Mr. Woods sued,
the court found that substantial portions of his drawing were copied; in other words, unless the copying was excused, it would constitute infringement. Universal tried to argue that because the chair appeared in less than 5 minutes of the 130 minute film, the copying was de minimis, in other words, insignificant. The court disagreed with Universal and granted Mr. Woods motion for a preliminary injunction enjoining Universal from “distributing, exhibiting, performing or copying those portions of the motion picture entitled ‘12 Monkeys’ which reproduce his copyrighted drawing, or any portion of it.” The movie company settled the suit and paid a license fee to Mr. Woods.
Filmmakers must worry about more than artwork on the set. Trademarks can also cause problems. It’s a sign of the breadth of the global economy that some trademarks, such as Coca-Cola® or the Nike® “swoosh,” are among the most recognized symbols in the world. With a trademark’s fame comes tremendous legal power to control its use. Unauthorized trademark use can often bring the unwelcome attention of the trademark owner’s lawyer—especially when the trademarked goods are shown in a bad light. Famous trademarks may be tarnished if they are placed in a vulgar or slanderous context, and the trademark owner can sue.
CLEARANCES
Clearance is the process of:
Determining which trademarks and copyright-protected artwork and music used in a film require the rights owner’s permission before it can be used, and then
Obtaining permission to use that trademark or copyright.
When a film or video is “cleared,” all of the necessary intellectual property (IP) rights associated with the film or video—the copyrights, trademarks, and rights of publicity—have been granted. Consequently, the film or video work may be distributed and shown to the public without undo fear of costly IP infringement suits. However, clearances can be time-consuming. IP law controls virtually every aspect of a film—the soundtrack, the screenplay, an actor’s appearance, a corporate logo, stock footage—everything. The best tactic is to know what clearances are needed before production starts and to work with a staff trained in securing the proper permissions.
Caution: Artwork and Logos Ahead
The following items can cause problems if featured in a scene without first clearing their trademarks and copyrights:
Paintings
Posters
Sculptures and sculptural reproductions
Books and magazines
Product labels
T-shirt logos and designs
Dolls, action figures, and other toys
Location background music
Halloween masks
Television or video clips which play over an on-screen television
Video games
Street performances
Billboards
Storefront signs
Trademarks used in a manner that tarnishes their image
