Digital Estate Planning for Filmmakers

As a filmmaker you are most likely not investing in a 401k or blue chip stocks & bonds. You are however investing your life into digital assets. Your digital assets can be be worth millions of dollars and if not protected can be lost forever in your passing. Some filmmakers have become savvy to their digital assets and created Trusts and/or Wills that take into consideration their digital assets for future generations after they’ve passed.  This link provides real life examples to help explain the Digital Estate Plan for Filmmakers.

What is Video Asset Licensing?

What is Video Asset Licensing? Video Asset Licensing is a term that describes the idea that any video scene has the potential to be licensed for use in other projects, eg, licensing video footage is not limited to b-roll stock footage clips.

A good example of Video Asset Licensing is DC Shoes’ branded video of Danny Way jumping the Great Wall of China. Several years after the video was shot, HBO licensed the jump for a documentary film, view Danny Way jumping the Great Wall here.  To learn more about Video Asset Licensing click here.  

Retain Rights to Footage You Create

If you, or your company, capture motion pictures, shoot video or create motion graphics, consider retaining rights to the creative assets you produce if you want to reuse them for future projects or earn passive income through Video Asset Licensing (VAL).

How you go about retaining creative rights to the video footage you produce will depend on whether you are an ad-agency, studio/production company, or freelancer. The following link is a quick guide on how you can start retaining certain rights to the video footage you produce: -> Retain Rights to Footage You Create

Documentary Video Footage vs Commercial Video Footage: Requirements for Legal Releases

The legal releases you need for a documentary film can differ substantially from the requirements associated with ‘commercial’ video projects.  A documentary film has an ‘editorial’, informative, or educational purpose and is different than commercial projects.  Selling or making money from your documentary film does not convert it to a commercial project.  The United States First Amendment offers documentary filmmakers protection via freedom of expression.

The following link has various filming scenarios and answers depending on whether you are filming a documentary film or shooting video for a commercial project: -> Documentary Video Footage vs Commercial Video Footage: Requirements for Legal Releases

Incidental Use of People in Videos

Incidental use of people in videos is an important legal issue to remember when producing video for commercial and non-commercial projects. The following article uses a real life example to help explain the legal doctrine of “incidental use” and how it relates to commercial video production vs non-commercial projects such as documentary films.  -> Incidental Use of People in Videos

Property Release for Video Production

To limit scope, this discussion will focus on when you need a property release for buildings captured in your videos in the United States.  Sculptures, paintings, and other protected property will be covered in part II.

WHAT’S THE ISSUE?

Many people wrongly assume that the need for a property release for a building is a copyright issue.*  It’s not, its a trademark issue. In general, if your video of a building is taken from a public place (not from the inside) the owner of the building/property cannot prevent the use of the video for commercial purposes unless the use of the video violates the building owner’s Trademark.  There are very few buildings that have obtained trademarks from the U.S. Patent & Trademark Office.

IS A PROPERTY RELEASE NEEDED?

When is a property release needed? It depends entirely on how the video will be used.  Property Releases are needed if the use of the video implies an “association” between the subject and the commercial use.  So, the rumor that “you can’t take videos” of buildings is entirely wrong.  You can always take videos and you can always license videos because licensing in itself does not imply an association. The act of selling is merely a transactional act, which doesn’t imply “association” at all.

SO WHY DO YOU NEED A PROPERTY RELEASE?

Sometimes it is beneficial to have a property release because some commercial buyers will need a property release depending on how they use the video clip in selling their product.  Having a property release will thus increase your number of potential eligible buyers.  Note, not all commercial buyers need a property release — only those who might use the video in a way that implies an association between them and the subject. If you are interested, one well known case is Rock and Roll Hall of Fame v. Gentile 134 F.3d 749 (6th Cir. 1998).  It involved an artist doing business under the name Gentile Productions. The artist sold a poster of the museum in the foreground of a sunset.

Most buildings are either not trademarked, or even if they are registered, do not have a clear trademark (one exception could be the Seattle Space Needle as it is symmetrical 360 degrees around) or minimal “good will” value. Of those that do have value, the use of the video has to suggest an association with the mark. The general rule is that the cases where a property release is required are so minimal, you can consider it more the exception than the rule.

If you are not sure whether videos of a building need a property release, call or email Harrison Media Law Firm.

Below is a non-exhaustive list of a few buildings claiming trademark status in the U.S.

NY Stock Exchange,The Pacific Exchange, The Mercantile Exchange, Commodities Exchange and Chicago Board of Trade, Disney’s Epcot Center, Mystic Marine Museum, Rock & Roll Hall of Fame, Rockefeller Center, Hollywood Chinese Theater, Seattle Space Needle, Biltmore (Virginia house) and San Simeon Estate, Busch Gardens, Sea World, Florida & California Universal Studios, Eiffel Tower, The Flatiron Building, NYC The Chrysler Building, NYC The New Orleans, Superdome.

*The copyright in an architectural work does not include the right to prevent others from making and distributing videos of the constructed building, if the building is located in a public place or is visible from a public place.  Note that other countries have different laws regarding copyright & trademark issues, e.g., in France, a property release is required from the copyright owner if the building is the primary subject of the video and the video is used for commercial purposes.

The Do's and Don'ts of Trademarks in Your Videos

Today it is almost impossible to shoot video without capturing a trademark.  The legal landscape surrounding trademarks in videos is fraught with exceptions and legalese that make it difficult for video producers to determine when there is a legal issue to be considered.   This article is a first in a series devoted to the legal issues of trademarks in videos.   Like any legal topic there are a ton of exceptions, below is a good road map for media producers.

WHY IS TRADEMARKS IN VIDEOS A CONCERN?

For some companies, a trademark is their most valuable asset.  For instance, Coca-Cola’s trademark is valued at $78 billion.[1]  Hence, many companies protect their trademark with a vengeance.

WHAT ARE CURRENT VIDEO PRODUCERS DOING?

Some video producers spend money to clear rights to every product that appear in their production.  They do this because they believe it is cheaper to clear the rights to the product than it is to fight a future trademark infringement lawsuit.  Other video producers simply remove trademarks appearing in their production because they can’t afford to clear the rights to the products.  And others let the trademarks remain in the video.  So what’s the correct thing to do?

WHAT SHOULD YOU DO?  -> STEP ONE:  DEFINE YOUR PROJECT

You just shot some amazing video footage but you captured a host of trademarks in the video.  What do you do?  The first step is to ask how your video footage will be used?

Is the video footage for a film, documentary, or television show?  Or is the video footage going to be used in a commercial to advertise a product or company?  There is a different analysis depending on how your video footage is used.  Let’s start the analysis first with (i) films, documentaries, and television views; then move onto (ii) commercial advertisements.

1.  FILMS, DOCUMENTARIES, AND TELEVISION SHOWS

If your video footage will be used for a film, documentary, or television show, you have more leeway when it comes to trademarks.  Films, documentaries and television shows are works of art.  They are protected by the first amendment’s ideals of free speech.[2]   The goal of free speech is to create open social, artistic, political and commercial expression.  This line of reasoning has created a first amendment argument for film producers.  Most courts have adopted the Roger’s Test for analysis under the first amendment fair use argument.  Of course, in many instances, a film producer can also claim a nominative fair use defense. Given these two defenses, case law usually favors a finding of non-infringement for films containing trademarked goods.  See James Gibson, Risk Aversion and Rights Accretion in Intellectual Property Law, 116 Yale L.J. 882, 917 (2007); Rogers v. Grimaldi, 875 F.2d 994, 999, 16 Media L. Rep. 1648, 10 U.S.P.Q.2d 1825 (2d Cir. 1989); Caterpillar Inc. v. Walt Disney Co., 287 F. Supp. 2d 913, 916-18 (C.D. Ill. 2003);  Wham-O, Inc. v. Paramount Pictures Corp., 2003 WL 2300526 (N.D. Cal. 9/29/03);  Twin Peaks Productions, Inc. v. Publications Intern., Ltd., 996 F.2d 1366, 21 Media L. Rep. 1545, 27 U.S.P.Q.2d 1001, 1010 (2d Cir. 1993).  For more detailed information on the Roger’s Test and Nominative Fair Use, please read the attached legal memorandum.

2.  COMMERCIAL ADVERTISEMENTS

If the video footage is going to be used for a commercial advertisement there are two legal issues to watch out for: (a) are you creating confusion as to the source of the product; or (b) are you creating confusion as to the sponsorship of the product.

(a)  If the trademark captured in your video is of a competing product you may have a problem.  Trademarks of competing products should only be used to compare the relative qualities of the two products or some other fair use defense.  If the trademark in the advertisement is not being used to compare the relative qualities of the two products, you could be in trouble.   Please note that it’s OK to have both products and trademarks in the commercial if you are comparing the two, ie. you are showing how awesome your client’s product is compared to how bad the competitor’s product is.

(b)  If the trademark captured in your video is used to show endorsement of the product you may have a problem, but let’s use some examples to see how this pans out.

If you create a commercial spot for your local snowboard shop, can you have the Burton trademark in the commercial?  If the shop actually sells Burton Snowboards and you are trying to convey to the consumer that the local shop sells Burton Snowboards, and not that the shop is a Burton Owned Shop, the answer is probably yes.  For more info see Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (1969); Patmont Motor Werks, Inc. v. Gateway Marine, Inc., 1997 WL 811770 (N.D. Cal. 1997); Playboy Enterprises, Inc. v. Terri Welles, Inc., 78 F. Supp. 2d 1066, 1089 (S.D. Cal. 1999), 61 U.S.P.Q.2d 1508, 197 A.L.R. Fed. 601 (9th Cir. 2002); Patmont Motor Werks, Inc. v. Gateway Marine, Inc., 1997 WL 811770 (N.D. Cal. 1997).

If you create a commercial spot for a car polish company can you use a Porsche 911 with its infamous trademark in the advertisement?  This will depend on how it is used.  If the focus is squarely on the car polish you may be legally ok, but if the Porsche trademark is right next to the car polish’s name, you probably have a problem.  The reason being is that you are incorrectly communicating to consumers that Porsche is sponsoring or endorsing this particular car polish when in fact Porsche is not sponsoring the car polish.   For more info see Liquid Glass Enterprises, Inc. v. Dr. Ing. h.c.F. Porsche AG, 8 F. Supp. 2d 398, 1998; New Kids on the Block v. News America Pub., Inc., 971 F.2d 302, 308, 20 Media L. Rep. 1468, 23 U.S.P.Q.2d 1534, 1539 (9th Cir. 1992).

Trademarks in a commercial advertisement represent a difficult issue.  Remember these two things (a) if you are creating confusion as to the source of the product (eg. using the competitor’s trademark in a non-comparative manner) remove the competitor’s trademark from your video; or (b) if you are creating confusion as to the sponsorship of a product (eg. a car polish with focus on Porsche’s trademark) remove the famous trademark from your video. 

CONCLUSION

Trademark law wants to protect two things:  (i) protect consumers from deception and confusion over trademarks, called likelihood of confusion; and  (ii) protect the owner’s trademark as if it was property, called likelihood of dilution.  If you want to get nerdy and learn more, read the attached legal memo.  

Finally, just because you are legally correct doesn’t mean people will not bring a lawsuit against you.  If you want to prevent someone from bringing a lawsuit against you, ask permission in writing from the trademark owner.

 

[1] Top 100 Most Valuable Brands, http://www.millwardbrown.com/brandz/2013/Top100/Docs/2013_BrandZ_Top100_Chart.pdf

[2] The Supreme Court has observed that: “Entertainment, as well as political and ideological speech, is protected: motion pictures, programs broadcast by radio and television, and live entertainment, such as musical and dramatic works, fall within First Amendment guarantee.” Schad v. Borough of Mount Ephraim, 452 U.S. 61, 65, 101 S. Ct. 2176, 7 Media L. Rep. (BNA) 1426 (1981).

Trademark Infringement Memo

DMCA and Copyright Violations

If you’ve spotted one of your videos on YouTube, Vimeo, or on someone else’s website without your permission, you may be wondering what you can do about it?  Fortunately the law is on your side.  There are two categories that things usually fall into:  (i) your videos are found on someone’s website; or (ii) your videos are found on YouTube or Vimeo without your permission.

1.  YOUR  VIDEOS  ARE  ON  SOMEONE’S  WEBSITE  WITHOUT  YOUR  PERMISSION:

If your videos are on someone’s website without your permission they are violating U.S. Copyright law.  Notify Harrison Media Law Firm and we’ll send the website owner notice of the copyright infringement.  We’ll attempt to find a reasonable resolution by having him takedown your work.  If they fail to remove your work, we can work with you to file a formal copyright infringement lawsuit against the website owner.

2.  YOUR  VIDEOS  ARE  ON  YOUTUBE  AND  VIMEO  WITHOUT  YOUR  PERMISSION:

Videos on YouTube and Vimeo fall under the Digital Millennium Copyright Act (DMCA)* because they host user-generated content.  The DMCA requires copyright owners (that is you) to make a request to the user-generated site (YouTube) to take down the videos that infringe your copyright. The request that you make is called a take down notice. The DMCA states that if YouTube receives a proper take down notice, they are required to remove the infringing content, or they will be in violation of the law.  Section 512(c)(3) of the DMCA provides 6 pieces of information, listed as (i)-(vi), that must be included in your take down notice.  To help you out, I've drafted a sample letter you can copy and use.  If the violation is on YouTube, they provide a web submittal form that you can submit violations, here.  If the violation is on Vimeo, their web submittal form can be accessed here.

DMCA  TAKE-DOWN  LETTER:

For websites that do not provide a web submittal form, you can send the website owner a DMCA take-down letter.  The owner of the website is then required to remove the infringing content.  Below is a stock DMCA take-down letter that you can use.

Attn: Copyright Agent, [name of infringing website].

Pursuant to 17 USC 512(c)(3)(A), this communication serves as a statement that:

  1. I am the exclusive rights holder of [name of video]
  2. These exclusive rights are being violated by material available upon your site at the following URL(s): [URLs to infringing material];
  3. The use of this material in such a fashion is not authorized by the copyright holder, the copyright holder’s agent, or the law;
  4. Under penalty of perjury in a United States court of law, I state that the information contained in this notification is accurate, and that I am authorized to act on the behalf of the exclusive rights holder for the material in question;
  5. I may be contacted by the following methods (include all): [physical address, telephone number, and email address].

I hereby request that you remove or disable access to this material as it appears on your service in as expedient a fashion as possible. Thank you.

Regards,
[your full legal name]

*WHAT  IS  THE  DMCA?

The Digital Millennium Copyright Act (DMCA) is federal law passed by Congress in 1996 that criminalizes the use of technology or services intended to circumvent measures used to control access to copyrighted works (commonly known as digital rights management or DRM).   For example, if you built technology to remove Nimia’s watermarks, you would be violating the DMCA.  For recent U.S. District Court opinion see Viacom v. YouTube.com

Video Production Contract

I've received many inquiries regarding a standard video production agreement that production companies and/or independent cinematographers can use with their clients.  Below is a link to a standard contract.

Agreeing to the essential terms in a video production project before starting the project is always good  practice. Doing it in written form through a video production contract is even better. A written contract will help you get paid on time and allow you to flex legal muscle if things go awry.

Here is a  Standard Video Production Agreement that you are welcome to use that will help protect your interests.  You can outline payment terms on scheduled delivery items, and specify licensing rights so after the project is over you can monetize video assets at Nimia.com.