Lights, Camera, IP Issues…
By Scott Hervey
Last October I had the good fortune of being invited to attend my friend’s “man shower” in Las Vegas. What made this trip interesting was the fact that this all guy’s version of a baby shower would be the subject of an episode of the VH1 reality TV show “Scott Baio is 46 and Pregnant.” While there are a number of interesting stories that came out of this first and only man style baby shower, the “what happens in Vegas stays in Vegas” rule prohibits me from telling you any. However, the tales fit for this article comes from my observations of the numerous, IP issues that came up during our two days of shooting.
As regular readers of my articles may know, part of my practice includes representing independent motion picture and reality television producers. While I have been production counsel for a number of movies and reality television shows, most of my work occurs before the cameras ever roll. Part of this work involves working with the production staff and preparing them to deal with those issues that may arrive when shooting in an environment you don’t entirely control. However, being on set and having to identify issues on the fly (especially when the person identifying the issues is not a lawyer) is very different from engaging in theoretical and hypothetical discussions.
Shooting on an existing location presents a number of complex and interesting IP issues. Where the location is the floor of the Hard Rock Casino as it was in the VH1 show, this makes it even all the more interesting. The first issue is dealing with the crowd; not from a logistic standpoint, but from a right of publicity standpoint.
Most states provide some type of protection of an individual’s right of publicity. In California, Civil code section 3344 and 3344.1 protect against the use of another’s name, voice, signature, photograph or likeness in connection with a commercial activity without consent. There are a number of ways production companies deal with crowds and securing the right of publicity. First, if the production company is dealing with a controlled location and is able to cast extras to play in the crowd, the extras would sign some type of agreement. In addition to items such as the extra’s fee, this agreement would contain certain language resulting in a grant of the extra’s right of publicity to the production company. This situation is more common for my motion picture production company clients.
My reality television production company clients do not enjoy the benefit of controlling all aspects of their shoot. It’s reality television, which usually means dealing with a live set and a crowd of ordinary people. If the shoot is such that the group of people being photographed is relatively small, the production company will usually get those who appear on camera to sign a standard appearance release. Depending on who drafted the release, it could have a variety of different language. However, most appearance releases grant the producer the right to make use of the subject’s image, likeness appearance, voice or musical performance in the form of one or more photographs, video images, sound recordings, illustrations or other media for any and all programs, advertisements, promotions, product endorsements and any and all other uses relating to promoting, advertising, marketing, selling and/or exploiting the subject television show, and all ancillary products related thereto, including but not limited to “out takes,” and “making of” specials.
Where the production is dealing with a very large crowd, the producer will post a number of large signs stating that filming is in progress and to vacate the area if you do not want to be videotaped, photographed, or recorded. The notice will also usually state that your presence within the filming area constitutes consent to be recorded and portrayed in connection with the television program and that you expressly authorize and permit the use of your name, voice and likeness and all reproductions thereof for any purpose whatsoever throughout the world, in perpetuity, in any and all media, and without limitation and without any compensation whatsoever. I am unaware of any case where a person challenged the validity of such a notice; usually people are thrilled to be on TV.
The “more complex issues” which arise during an on-location shoot usually involve the inclusion of a third party trademark or copyright protected material into the program. When shooting on location, the production company will have the owner sign a location release. In addition to photographing the interior and exterior of the location, location releases usually also include the right to photograph and use the owner’s name, logo, signs, marks or slogans, as depicted in, on, and/or about the location in connection with the production, exhibition, advertising and exploitation of the television program. What’s usually not included in the location release is the right to photograph third party trademarks which may be incorporated into signs or goods on or about the location.
Case in point, the VH1 production crew shooting the Baio show at the Hard Rock casino had to deal with scenes that were shot in a bar on the casino and in a diner. In those shots, they had to deal with Hines® mustard jars, Budwiser® beer bottles and neon signs for all types of beverages. While the production crew had obtained permission to shoot at the Hard Rock, that permission did not, and could not, extend to include third party brands such as these. The serious risk is that the brand owner may object to its mark being used in the television show and threaten to sue for trademark infringement. (15 USC 1125(a) – Any person who, on or in connection with any goods or services… uses in commerce any [mark]…which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.) So, producers hide product labels or peal them off bottles, move or cover signs, and, if that doesn’t work, blur them out in post production.
Works subject to copyright protection also offer interesting challenges. Paintings, photographs, background music or a television playing in the background all present problems. These works fall under Copyright law, and the owner of the copyright enjoys the following exclusive rights:
(1) to reproduce the copyrighted work in copies or phonorecords;
(2) to prepare derivative works based upon the copyrighted work;
(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly; and
(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly. (17 USC 106)
For example, if a producer accidentally includes recognizable background music in a segment and does not secure the necessary rights, this would infringe on the copyright owner’s exclusive rights. This may or may not result in a lawsuit, but it certainly would cost the production company an little more to secure the necessary rights than it otherwise would have cost had the rights been cleared in advance.
There are a multitude of other complex issues that arise in the production of a television show or motion picture, which explains the proliferation of lawyers that practice entertainment law.