Most producers know that the acquisition of appropriate rights and permissions from performers is a necessary part of the content production process. Many producers are not aware, however, that there are often many other parties that may possess intellectual property rights that may be infringed in the production or exploitation of the content if appropriate licenses and permissions are not acquired from these parties as well. This is unfortunate because a failure to acquire adequate rights to exploit the content can limit the producer’s ability to exploit the content and expose the producer and the producer’s content licensees to the risk of infringement.
In this article we will look at some of the types of rights holders that can be involved in the production of video and photographic content that are often overlooked. Needless to say, prudence dictates that content producers should be aware that such right holders may exist and that rights owned by such parties may have to be licensed or acquired to exploit content in the manner contemplated by the producer.
While the process can be complex and consultation with counsel is often required, consequences for failing to properly acquire all the requisite rights can be costly, or even catastrophic, for a producer.
BEHIND-THE-CAMERA TECHNICIANS AND NON-PERFORMER ARTISTS
The most commonly overlooked rights holders in the production of motion picture or photographic content are the “behind-the-camera” artists and technicians. These include, video camera operators, production stills photographers, directors, editors, set designers, and costume designers. If a producer wants to own all the rights to a production in which a creative contribution has been made by any of the foregoing types of artists or technicians, the producer must acquire their rights via an appropriate rights acquisition document.
Unfortunately, I have seen many situations where content production companies have failed to acquire rights from videographers, directors or other non-performer creative contributors. Sometimes this happens on the mistaken belief that a model release from each of the models or actors appearing in the content will provide the producer with all rights required to own the content and exploit it as the producer pleases.
Unfortunately, model releases alone will almost never provide all the rights typically required for a content producer to commercially exploit photographic or videographic works when one or more “behind-the-camera” artists or technicians are involved. Take for example the situation where the producer has hired a non-employee photographer to shoot photographic content. Under U.S. copyright law the person operating the camera or other recording device is usually an original author of a photographic or videographic work under U.S. copyright law. This is because he or she is often the person providing the principal creative expression (deciding what to shoot, where to point the camera, etc.) and “fixing” that expression in a tangible medium. Sometimes a photographer is the only author of a work and the only original copyright holder. Therefore, in some cases, such as where an independent photographer hired by a producer is the sole original rights holder, the producer may not have adequate rights to commercially exploit the subject photographic works at all if the photographer does not license or assign such rights to the producer. And this would generally be the case regardless of whether the producer has a valid model release.
The creative contributions to a production made by directors, editors, costume designers, set designers, etc., are often also the type of artistic expression protectable under copyright law. Therefore, producers desiring to own all rights in and to content productions should, therefore, endeavor to acquire rights from all these parties as well.
Video content that includes recorded music will almost always involve a number of copyrights owned by one or more persons or entities creating the music, or their successors in interest. These most often include the copyrights owned by music composer(s), the musician(s) that performed on the sound recording of the music, the producer of the sound recording, music publishers and music performance rights organizations such as ASCAP and BMI. Content producers desiring to use music in their motion picture content must take care to be sure that all of the music’s rights holders have properly provided the required rights for the producer’s contemplated use of the music. Otherwise, the producer could face potential liability to one or more music copyright holders for copyright infringement.
Often a production company does not directly obtain music rights from composers and musicians directly. Instead many producers obtain music rights from one or more music licensing companies. Such licensing companies acquire licensing rights from the various music contributors (composers, musicians, etc.) regarding a large number of musical works and sound recordings. When a production company licenses music through a music licensing company, it is particularly important for the producer to obtain appropriate warranties from the music licensing company that it actually has all the required rights to license the music to the producer for the uses contemplated. It is also important that the licensing company agree to defend and indemnify the producer from any claims of infringement brought by any music composer, publisher, or other third party.
Many adult content producers procure music for use in their video productions by licensing socalled “royalty-free music.” The term “royalty-free music” commonly refers to stock or “library music” licensed for a single fee, without the need to pay any subsequent royalties. Unfortunately, many adult content producers are surprised to learn that in some instances the royalty-free music they licensed may not provide them with all the requisite rights they need to exploit their works as they had contemplated. The two most common ways this happens is: (1) the license does not provide the rights to publicly perform the music (e.g., on a website or via television broadcast), and (2) the royalty free license expressly excludes use of the music with explicit sexual content.
Many adult content producers are simply unaware that legal use of music in content performed via a website or a mobile network, especially if by streaming, often will require certain public performance rights that are not generally needed when the content is distributed solely in the form of physical copies, such as DVDs. On more than one occasion I have had to address expressions of utter incredulity by veteran adult content producers after explaining that because the royalty-free music license did not provide all the music rights required to publicly perform the music on the web, the producers could not lawfully publicly perform their own motion pictures (that includes the subject music) on their own websites.
Composers, songwriters and music publishers generally assign the right to license the public performance of their music, to performance rights organizations (PRO) such as ASCAP or BMI. Because of this, many royalty free music licensing companies have acquired licenses from many composers and songwriters who have previously licensed their public performance rights to a PRO. This means that the royalty-free music licensing companies often do not have the public performance rights to license to third party producers. This can be very problematic for content producers that believe the royalty-free music they licensed can be publicly performed, on a website for example. Without an appropriate public performance license from the appropriate PRO (ASCAP, BMI, etc.) such public performance of the producer’s content with the music included could result in copyright infringement liability.
Many adult content producers that purchase royalty-free music are also sometimes surprised to learn that the licensed use of the royalty-free music expressly excludes any use associated with sexually explicit material. While this type of exclusion is not as prevalent as it once was, some royalty-free licensors still include the prohibition in their license agreement. In such cases, the use of the music in association with sexually explicit materials could result in copyright infringement liability and an invalidation of the license to use the music in existing content.
The music copyright issues highlighted above barely scratch the surface of a topic that is well beyond the scope of this article. Music rights acquisition and licensing is a complex legal area. Therefore, if you or your company are seeking to acquire rights to use music in video content or in association with a web site, I strongly urge you to consult with legal counsel before entering into any agreement with a music licensor, and certainly before any use of the subject music.
Writers are another type of creative contributor that can possess copyrights in content production. Included in this group are scriptwriters, treatment writers, story concept developers and other creators of literary works. For example, if the writer of the script for a video production is not an employee of the production company, under U.S. law, it is likely that he or she will be the original owner of the copyright in the script. Therefore, unless the production company acquires rights from the writer to use the script, the production and exploitation of a work based on the script would likely infringe the writer’s copyright.
Like music rights, the acquisition and licensing of literary rights is also a complex legal area. Therefore, if you or your company are seeking to acquire rights to use a literary work in relation to the production of content, I strongly urge you to consult with legal counsel before entering into any agreement with a writer, and certainly before any use of a literary work created by third party.
THIRD-PARTY CREATORS OF INDEPENDENT WORKS DEPICTED IN THE CONTENT
Whenever an independent work subject to copyright protection is depicted or performed in a production without express authorization from the copyright owner, the depiction or performance of the work may well constitute a copyright infringement. This is an important concept for content producers to remember since many items that intentionally or unintentionally become part of a scene in a motion picture may be subject to copyright protection under a third party’s copyright. Artwork, such as wall paintings, photographs, and sculpture pieces are commonly overlooked works subject to copyright protection that may require express permission for inclusion in a scene.
Producers should also be aware that if a content work includes another photograph, video, or sound recording, it is likely that the rights to include that work will have to be obtained or cleared. For example, if a scene includes a television on which a third party’s content is playing, the performance of the third party’s content in the scene would likely infringe the owner’s rights if an appropriate license is not obtained. The same issue arises, for example, when a device, such as a radio, is playing music that has been audibly captured in the soundtrack of the scene.
Also, it is important for producers to know that copyrights in the U.S. may protect any pictorial, graphic, or sculptural authorship that can be identified separately from the utilitarian aspects of an object. This means that the use of what might be considered to be an ordinary object in a scene may implicate a party’s copyright if the object has a separately identifiable nonfunctional artistic feature or component. For example, an artistic headboard carving can be protected by copyright as a separate and non-functional component of the headboard.
Producers should be aware that a many useful objects incorporate separate and protectable artistic features. Common examples are clothing, curtains, sheets, blankets, carpets, plates, furniture and antiques. Artistic designs on the exteriors of running shoes and artistic automobile detailing are also examples of aesthetic non-functional features that can be protected by copyright.
Another interesting and evolving area of third-party artist rights in content production arises in regard to copyrights owned by tattoo artists in the works they inked on the bodies of actors and models. Because of their expressive content, most tattoos are likely subject to protection under U.S. copyright law. As such, it is possible that a creation and reproduction of a photographic or videographic work that includes a tattoo on the body of the person depicted in the work might require permission from the owner of the copyright in tattoo. Least you think this is a far-fetched legal notion consider the following. The issue of copyrights in a tattoo was at the heart of a federal lawsuit filed in 2011 by a Missouri tattoo artist against Warner Brothers regarding the reproduction of Mike Tyson’s facial tattoo on actor Ed Helms’ face in the motion picture “The Hangover Part II.” The artist who tattooed Tyson’s face alleged that he retained the copyright in the tattoo. The case was settled out of court on undisclosed terms.
In November, a tattoo artist filed a copyright infringement action in an Arizona federal district court against computer game company THQ Inc. alleging infringement of the artist’s copyright in a lion tattoo he had applied to the ribcage of Welterweight Campion Carlos Condit. THQ’s games UFC Undisputed 2010 and UFC Undisputed 3 provide players with the ability to control an avatar of Condit that includes a reproduction of the lion tattoo. The lawsuit is currently pending.
Because of the potentially increasing risks involved in content creation that includes performer tattoos, producers that want to create content depicting talent with tattoos should consult with an attorney to determine a proper course of action. Producers may want to consider with counsel, for example whether to acquire appropriate use rights from the tattoo artist(s), cover the body art with makeup or shoot the performer at an angle where the tattoo(s) are not visible, etc. Additionally, producers might want to consider requiring all performers to warrant that the recording of their performances do not infringe any third party’s rights.
FAIR USE OF COPYRIGHTED MATERIAL
So far, we have been looking at copyrights owned by third parties and how their rights might be infringed in content production or exploitation without their providing appropriate use authorization. In the U.S., however, a copyright owner’s rights are subject to an important limitation that allows others to make use of the owner’s copyrighted works without permission and without any required payment of a fee or royalty. This type of unauthorized, but nevertheless legal, use is allowed under what is known as the fair use doctrine. Often just called fair use, it is a legal concept that acts as an express limitation of the enforceability of the exclusive rights granted to copyright owners under U.S. copyright law. It effectively allows a person or a company to make limited and reasonable use of another’s copyrighted work without permission as long as the use does not otherwise prejudice the copyright owner’s rights or interfere with the owner’s normal exploitation of the work.
Since the fair use doctrine applies to all types of copyrighted matter, it may be applicable to many of the situations discussed above. But the determination of whether a use is a fair use or not is very complex and should not be attempted without the assistance of counsel. Unauthorized use of another’s copyrighted material that is not a fair use will likely be an infringement and could potentially subject the infringer to substantial financial liability. You should not, therefore, ever assume that a use of another’s copyrighted material will be deemed a fair use unless you have been specifically so advised by competent and experienced copyright counsel.
Trademark rights are another type of intellectual property rights that are often implicated in content production. Unfortunately trademark owners’ rights are often overlooked by adult content creators, sometimes with serious financial consequences.
Third-party trademark issues in content usually arise when a trademark or branded product is either intentionally or accidentally visibly included in a scene, a photograph or other content. For example, suppose that a content creator has produced a sex scene that includes the depiction of a bottle of Coca-Cola® on a night stand by the bed. Regardless of whether the product was an intentional prop or was accidentally left there by one of the performers, the depiction of a famous trademarked product in a sex scene could, and probably would, be very problematic for the producer and any licensee that distributes it.
This is because the Coca-Cola Co. might rightly contend that unauthorized use of trademark in association with sexual content can falsely imply endorsement of the content or confuse the viewer as to the source of the content to the trademark owner’s detriment. Also the association of a trademark for a nonpornography product or service with pornography can often give rise to an action by the trademark owner, such as the Coca-Cola Co., alleging that the use tarnishes or dilutes the value of its trademark.
Unlike copyrights, there is no fair use trademark doctrine. But there are some uses of trademarks that may not require prior authorization from the trademark owners. Like the discussion above regarding fair use of copyrights, however, the determination of whether such use would be non-infringing is a matter that requires the assistance of competent counsel. But while there are situations where a non-authorized depiction of a trademark or a branded product in a scene is allowable, they are particularly rare when it comes to scenes that also include explicit sexual depictions for reasons discussed above.
Consequently, if a producer wants to depict or otherwise use a recognizable branded product or trademark in its content, the producer should seek the advice of counsel prior to any such use.
Production of adult entertainment content often involves a variety of intellectual property rights owned or controlled by numerous parties. Prudent producers of content understand this and take steps to identify all the relevant rights holders and ensure that they have obtained all the rights required for exploitation of the content as desired. But while the process can be complex and consultation with counsel is often required, the consequences for failing to properly acquire all the requisite rights can be costly, or even catastrophic, for a producer.
This article is not intended to be, nor should it be considered to be, legal advice.
Gregory A. Piccionelli is an intellectual property attorney specializing in adult entertainment matters. He can be reached at Piccionelli & Sarno at (818) 201-3955 or firstname.lastname@example.org.