Get Permission. Contact the owner of the artwork in question and negotiate a license to use the work. If you are planning to feature a trademark prominently, try to get the trademark owners’ written permission.
Prop Rental Houses. One way to make sure that your props have been cleared is to rent them from a prop rental house. Most prop rental houses rent items that have already been cleared for use. Make sure, however, that your contract with the rental house stipulates that they have represented and warranted that the props to rent have been cleared for motion picture use.
Commission. If a particular piece of art is going to be crucial to your film, you may want to commission the artwork from an artist. Make sure that you have a written contract with the artist that grants you the copyright in the work as a work made for hire.
Public Domain Work. Artwork in which the copyright has expired is always a safe bet. Artwork and imagery that is prepared by the federal government is also in the public domain.
No Trademark Tarnishment. Don’t show trademarks in a scandalous manner.
No False Endorsement. Don’t imply the trademark owner endorsed or sponsored the film when they haven’t.
Fair Use. Although fair use can be a valid defense to copyright infringement, it is never wise to rely on fair-use principles for protection. Remember, it is up to a court to decide whether your unpermitted use is “fair use.” In short, fair use should be your last defense.
The more the following factors are present, the more likely it will be for a court to find “fair use”:
The unlicensed work that you’re using is only shown briefly on camera.
The unlicensed work is not the focus of a scene.
Only a portion of the unlicensed work is shown.
The unlicensed work is being commented upon or criticized.
Your film is educational or informational.
Your use of the unlicensed work will not hurt the market for that unlicensed work.
The unlicensed work is a faithful reproduction of another work in the public domain.
E&O AND OTHER CONTRACTUAL OBLIGATIONS
If you have errors and omissions (E&O) insurance, make sure that you comply with their policy regarding artwork and other clearances. Remember: you need this insurance, and the surest way to get a claim denied by an insurance company is to fail to comply with the policy requirements.
If your policy states that you must get a release for all identifiable trademarks, you need to do so, regardless of the fact that your use may be informational, and thus, not infringing.
Similarly, if you are under a production services agreement to deliver a film or television program to a broadcaster, studio, or other commissioning party, you will be bound by those contractual obligations as well. It is standard practice for studios and broadcasters to require filmmakers to clear ALL copyright and trademark protected materials.
From the point of view of maintaining an effective E&O policy or production services agreement, whether you would ultimately win an infringement suit may be beside the point. If the policy or contract says you need a clearance, you need a clearance.
Printed with permission from Focal Press, a division of Elsevier. Copyright 2007. "The Pocket Lawyer for Filmmakers: A Legal Toolkit for Independent Producers" by Thomas A. Crowell. For more information about this book and other similar titles, please visit http://www.focalpress.com.
