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RIGHTS CLEARANCE OUTLINE

  1. INTRODUCTION

    1. RELATIONSHIP BETWEEN PRODUCER AND ARTIST

      1. Employer/Employee (employer owns)
      2. Work for hire
        1. In writing before commencement of work, certain categories
        2. Vs. assignment (right of termination after 35 or 40 years)
      3. Independent contractor (license)
      4. Previously created works

    2. DEFENSES TO LICENSE REQUIREMENT

      1. When do you need a license? Better question is "when don't you?" The categories I'll be getting to will give you an overview of the kinds of licenses and releases you'll need. Let's take a quick look at uses not requiring a license.
      2. Fair use
        1. Criticism, comment, news reporting, teaching, scholarship, research
      3. Reverse engineering to understand process (not for competitive use (Sega v. Accolade)
      4. Home taping for time-shift (non-commercial use)
      5. Public Domain
        1. Expiration of copyright
        2. Created before 1/1/78, if renewed, 28+ = 95 years
        3. Created before 1/1/64, not renewed, no -- in public domain
        4. Created between 1/1/64 and 12/31/77, renewal requirement waived, 95 years
        5. No use of copyright notice, works published before 3/1/89 - forfeiture -- automatic for works prior to 1/1/78, discretionary after
        6. U.S. Government documents, images, e.g. -- Red Shift
      6. What isn't -- watch for protected parts of unprotected works (e.g.- underlying story, music, etc.)

    3. CAVEAT -- There are issues other than copyright, so, even with fair use or public domain works, other releases may be required.  Also, duration issues have gotten more complicated since Sonny Bono Copyright Extension Act was passed, so check with an attorney!


  2. FINDING THE COPYRIGHT OWNER

    1. Start with notice
    2. If that doesn't work, go to Copyright office -- Catalog of Copyright Entries
    3. Registration search through Copyright Office's Reference and Bibliography section
    4. If not registered, no notice, procedure is a bit looser. Use ingenuity and persistence.

      DON'T assume that it's public domain just because you can't find it.


  3. SCOPE OF RIGHTS REQUIRED

    1. Unauthorized use (beyond the scope of the license) gives licensor right to terminate license in entirety
    2. What are the bundle of rights owned by copyright holder
      1. Reproduction
      2. Modification
      3. Distribution
      4. Public Performance
      5. Public Display
      6. Public Performance of sound recordings by means of a digital audio transmission
    3. TRANSFER MUST BE IN WRITING
    4. DO IT BEFORE YOU USE THE WORK
    5. Necessary terms for license
      1. Definition of product and media in which it will be used (platforms, prequels, sequels, etc.)
      2. Exclusivity
      3. Which of the bundle of rights above
      4. Any other rights, such as trademark?
      5. Fee (flat rate, royalties, advance against royalties)
      6. Term
      7. Territory
      8. Warranties of ownership, non-infringement, with indemnity


  4. CAVEAT -- VISUAL ARTISTS RIGHTS ACT

    1. What type of works affected
      1. Paintings
      2. Drawings
      3. Prints
      4. Sculptures
      5. Photographs produced for exhibition purposes
    2. When created
      1. 6/1/91 or after
      2. Also prior to 6/1/91 if copyright not transferred by original artist before 6/1/91
    3. Applies even after transfer
    4. Prohibits
      1. Intentional distortion, mutilation, other modification of work that would be prejudicial to artist's honor or reputation Destruction of work of recognized stature
      2. Use of author's name on work not created by author
      3. Use of author's name on work created by author, but modified in such a way that would be prejudicial to artist's honor or reputation
    5. Can and should obtain a waiver of VARA rights if you are planning to use work in a manner which falls under VARA

  5. FINE ART

    1. Two copyrights
      1. Copyright in the copy of the work
      2. Copyright in the underlying work
    2. Need licenses for both


  6. GUILDS

    1. SAG
    2. AFTRA
    3. DGA RE-USE FEES ISSUES FOR ALL OF THESE
    4. WGA
    5. AFM

  7. VII. STILL PHOTOS (IMAGES)

    1. Who owns the image
      1. Traditional copyright analysis applies, but photographers and clients don't always have the same recollection of the determinative facts. Do your homework.
      2. Often, no copyright notice on work you see
    2. Reluctance of copyright owners to license because once digitized, it's nearly impossible to control the proliferation of the image
    3. Minors releases
    4. Publicity/privacy releases
    5. CLIP ART/STOCK PHOTO
      1. Watch out for licenses on clip art packages


  8. GRAPHICS/ILLUSTRATIONS

    1. Same issues re: ownership
    2. Graphic Artists Guild Agreement prohibits "electronic alteration of original art"


  9. TEXT

    1. Books
      1. Trade books (non-fiction, fiction, poetry)
        1. Start with publisher to see who owns rights
        2. Look at contract with publisher "all rights," (older contracts) "electronic rights," future technology clauses (let's not get into the fact that these clauses are interpreted differently in different jurisdictions or countries), split rights (e.g. - between book publisher and film studio)
      2. Non-trade (reference, educational)
        1. Often written by publisher's employees and is therefore a work made for hire
        2. Follow the trail from there

    2. Newspapers
      1. Mostly work for hire
      2. Not necessarily for the paper you read it in
      3. Big debate about electronic rights – online publication of print media freelance articles

    3. Magazines
      1. Mix of work for hire and freelance (independent contractor)

    4. Journals
      1. Largely freelancers, however many as commissioned works for hire


  10. MUSIC – 2 copyrights, Sound recording, underlying composition, BMI/ASCAP, streaming v. Download, Guilds, new sound recording royalty issues -- Digital Performance Right in Sound Recordings Act of 1995; Copyright Royalty Tribunal rulings re: internet radio


  11. VIDEO CLIPS – everything we’ve talked about


  12. LOGO/CHARACTER

    1. Title logos and "distinctively delineated" characters from motion pictures, television series, text (fiction) series, or cartoon strips are protected under both copyright and trademark laws and will require a merchandise license for the manufacture, sale, distribution of the logo or character on specifically enumerated products. Usually, the owner of the logo or character will demand prior approval.


  13. COMPUTER SOFTWARE

    1. Source code – who owns previous creations, who owns if created on company time, etc. Work For Hire? licenses to resolve up front on freelancers
    2. Databases


  14. LOCATION RELEASES

    1. When on location, you may need permission to use and film certain facilities. May be a good idea to nail them down, if there is a schedule to adhere to. Make sure the release grants you the right to film there, to bring on employees, to make minor changes to the property.


  15. PUBLICITY/PRIVACY/DEFAMATION/TRADE SECRETS

    1. Most states recognize a right of privacy
      1. Public disclosure of private facts
      2. Intrusion on privacy
    2. Around half of the states, including California, recognize a right of publicity
      1. California Civil Code '3344 covers these rights broadly
    3. Deceased persons have rights of publicity in California and a number of other states, for anywhere from 20 years to infinity. (Tennessee, as long as continuously exploited by the Presley estate -- err I mean the heirs)
    4. Get releases!!!!! BEFORE!!!!!
    5. Libel -- §45 of the Civil Code
      1. "Libel is a false and unprivileged publication by writing, printing, picture, effigy, or other fixed representation to the eye, which exposes any person to hatred, contempt, ridicule, or obloquy, or which causes him to be shunned or avoided, or which has a tendency to injure him in his occupation."
    6. Trade Secrets – Broad range of information – business plans, customer lists, technologies, etc. Usually an employer/employee issue. But, developer must know that ideas brought to him/her are free and clear of non-disclosure agreements.


  16. PATENTS -- Process, machine, manufacture or composition of matter, any improvements thereof. Increasingly important in software agreements. 20 year right to monopoly; used to be 17. No simultaneous creation/independent discovery defense.


  17. TRADEMARKS – Largely covered here by categories above, but remember to watch out for a “word, name, symbol, or device, or any combination thereof used by a person or company to identify and distinguish its goods from those sold by others.”  Make sure that these are identified and rights secured.


Copyright 1999

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