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Enforceability of Depiction Releases Redux – MHR Board Game Design v CBC

Whatever else one might want to say about the CBC television series Dragons’ Den, this much is indisputable: no other television show in Canadian history has been as important for advancing the state of Canadian jurisprudence regarding the enforceability of depiction releases. In the most recent case, a lawyer who appeared on the show had his claim against the CBC dismissed on a motion for summary judgment. Depiction releases typically contain language which not only allows a producer to make use of footage and photographs of a TV show participant, but which also specifically precludes the participant from suing the producers or broadcasters of the show for any reason – one previously unsettled issue was the extent to which such language (which is generally provided to participants on a “take it or leave it” basis) would be enforced by the courts. The answer appears unambiguous: a properly drafted release will be fully enforced by the courts and there appears to be little or no ambit for an unhappy show participant to sue in the shadow of one – however, there may be some remaining glimmers of hope for unhappy TV show participants, discussed at the end of this post.

Over the last few years, Dragons’ Den has been the subject of multiple lawsuits filed by individuals who appeared on the show and who felt aggrieved at the manner in which they had been portrayed on-air. The first of these cases, which we previously discussed here and  here, was Turmel v CBC (Dragons’ Den) (see 2010 ONSC 5318 2011 ONSC 2400 and 2011 ONCA 519), wherein the Ontario Court of Appeal confirmed that a “depiction release” (sometimes referred to as a “participation release” or even just a “release”) signed by a participant in a “reality” TV show was enforceable against the participant to bar any claim from being advanced by the participant based on his unhappiness over his depiction (in Turmel, the plaintiff based his claim in both defamation and breach of contract).

At the end of June 2013, the Ontario courts had occasion to pronounce again on the enforceability of depiction releases, again in the context of Dragons’ Den. In the case of MHR Board Game Design Inc. v. Canadian Broadcasting Corporation, 2013 ONSC 4457, the court again held that a depiction release signed by a participant in the show was enforceable to prevent the plaintiff from advancing a claim against the broadcaster. (See news coverage here.) In MHR Board Game Design, however, the plaintiff was a lawyer and so the arguments advanced were a touch more subtle than those advanced in Turmel, and therefore worthy of additional attention.

In MHR Board Game Design, the nub of the plaintiff’s argument was that the recording of his presentation to the panel of investors who comprise the titular “Dragons” was edited in such a way as to be a complete misrepresentation of what had actually occurred – to speak colloquially, the plaintiff argued that what had been a relatively uneventful, if unsuccessful, pitch was deliberately and misleadingly edited to make it look like a fiasco had occurred. From the judgment:

[3] The essence of the plaintiffs’ claims are that the short segment of the original recording that was broadcast is not only a “complete misrepresentation” of the original recording, but that the defendant’s conduct amounted to “gross and reckless negligence, intentional misconduct, malice and bad faith”.  The plaintiffs have sued the defendant for breach of contract, defamation, breach of duty of care, and injurious falsehood.

[4] Mr. Ribeiro alleges that the specific conduct involved in this case is not within the exoneration clauses of the Consent and Release or alternatively, that it would be unconscionable or contrary to public policy to enforce its terms.  He recognizes that the Consent and Release affords a very broad editing discretion to the defendant but submits that, because the Release is so broad in its terms, the exercise of such editing discretion engages a corresponding implied duty to do so reasonably and in good faith.

The plaintiff advanced a number of arguments relating to the release. First, he argued that the release did not specifically name “defamation” as one of the precluded causes of action – the court dispatched that argument summarily, stating that the “broad language of the Consent and Release is clearly intended to cover all causes of action and it would be robbed of its effect if it did not cover negligence”.

The next argument put forth by the plaintiff was that the wording in the depiction release which stated that his “appearance, depiction and/or portrayal” in the program “may be disparaging, defamatory, embarrassing or of an otherwise unfavourable nature which may expose [him] to public ridicule, humiliation or condemnation” was only intended to extend to the reactions of the Dragons, and should not be interpreted so broadly that it permitted the producers to edit the footage in a manner which would give rise to such results. The court similarly rejected that argument: because the depiction release contained language giving the CBC “the sole discretion to edit, cut, alter, rearrange or revise the sales pitch for broadcasting” and because the plaintiff therefore  “acknowledged that the program as aired would be edited in the “sole discretion” of the Producer[, he] must have understood the release extended beyond the comments of the Dragons.”

As stated by the court:

The clauses in the contract relied upon by the defendant are clear and unambiguous.  The express terms provide exceptionally broad protection for the CBC against any liability to a participant on the program.  That protection is not hidden in fine print.  It is crystal clear.

…  It is hard to imagine any stronger language than the words found in paragraphs 9 and 27 of the Consent and Release.  … I find that the Consent and Release by its express and unambiguous terms releases the defendant from every claim identified in the Statement of Claim.

As a result of that conclusion, the depiction release functioned as “a complete bar” to the plaintiff’s claims, unless it would be “unconscionable or contrary to public policy to enforce the contract or if the defendant itself breached the contract”. The court next turned its attention to whether either of those conditions had been satisfied in the court at hand – and found that they had not been satisfied. The court found that, relying on the decision in Turmel, there were no grounds for deeming the depiction release to be unconscionable, and further that no evidence had been advanced that enforcing the contract would be contrary to public policy.

The plaintiff’s final redoubt was to argue that the depiction release had been breached by the defendants and therefore could not be relied upon them as a defence. In crafting such an argument, the plaintiff was forced to acknowledge that, per the editing language noted above, there did not seem to be any express limitation on the latitude afforded to the CBC regarding editing. Instead, the plaintiff argued, the depiction release contained an “implied duty of good faith” when editing the footage – the court rejected this for a lack of evidence:

However, the evidence fails to establish any breach of the contract by the defendant.  First, even assuming an implied duty can be read into the contract, it is not self evident that the broadcast segment actually constituted a misrepresentation of Mr. Ribeiro’s sales pitch. Though the Dragons expressed interest in the game itself and enjoyed playing it, it was at the same time clear that they were unwilling to invest in its commercial viability.  Second, even assuming that the broadcast segment somehow distorted the nature of what transpired during the sales pitch, there is no evidence whatsoever to support Mr. Ribeiro’s allegation that the editing was done maliciously or recklessly.  In the final analysis there is simply no evidence to support the bald allegation of a lack of good faith in the editing exercise.

All of the above being said, while the enforceability of depiction releases seems to be relatively open-and-shut, there remain some ambiguities at the margins. It seems that the court has left open the possibility that if the plaintiff’s evidence had demonstrated that the editing constituted a “misrepresentation” of what had happened and/or that the editing had been done “maliciously or recklessly”, then there might be some scope for finding that there had been a breach of an implied covenant of good faith – however, there remains a major hurdle for a plaintiff wishing to avail themselves of that argument: it would have to be proven that the depiction release actually did contain an implied covenant of good faith. The other remaining tendril of hope is a successful argument that the enforcement of the depiction release would be contrary to public policy – the court held that the enforcement of the Dragons’ Den depiction release would not be contrary to public policy, but that seemed to be largely because the plaintiff had not advanced any arguments on that point (of course, it’s not clear that there are any cogent arguments that enforcing a depiction release could be contrary to public policy, but lawyers are a clever bunch…).

Enforceability of Depiction Releases Redux – MHR Board Game Design v CBC

Checklist: Reviewing Stock Library Content Licenses

When a film or television producer wants to make use of content supplied by a “stock” library (such as photographs, film clips or music), it is necessary for their legal counsel to review the license agreement in order to assess compliance with the clearance procedures of the E&O (errors and omissions) insurance policy obtained for the particular project. The standard-form license agreements provided by many online stock library providers should be carefully reviewed by counsel for potentially problematic clauses which impact the suitability of the license for the project.

This checklist is not intended to be a comprehensive contract checklist, but rather seeks to highlight problematic clauses which have been noticed in multiple licenses provided by stock libraries.

  • Is the license transferable and/or sub-licensable?
    • restrictions on assignability/transferability can pose particular problems for “service” productions in Canada, where a Canadian single-purpose corporation creates the production and then transfers all copyright in the production – and the benefit of all contracts entered into in respect of the production – to the “real” copyright owner (often located in the United States)
  • Are there any restrictions on the number of copies which can be made of the licensed work?
    • for example, a license for a photograph may state that only 50,000 copies of the photograph may be made pursuant to the license – once you add up the number of prints, DVDs and digital downloads which a movie can end up spawning, the threshold might be exceeded
  • Are there any circumstances in which the license can be revoked?
    • some stock licenses allow for the licenses to be revoked not only for breach of the license by the licensee, but for any reason whatsoever – all the licensor has to do is provide written notice of the revocation; in those circumstances, the licenses usually provide that the licensor is entitled to demand that the licensee cease use of the previously-licensed work following date of the notice
  • Are there any representations/warranties as to ownership of the licensed material?
    • if the material is provided on an “as is, where is” basis, query why the licensor is not willing to “stand behind” the license
  • Are there any restrictions on the manner in which the photography can be used?
    • some licenses will prohibit alteration or modification of the licensed material, or will specify that the licensed material cannot be used in specific ways (e.g., cannot be used to suggest endorsements or that the licensed material cannot be used in conjunction with certain types of “offensive” material or in relation to “sensitive” topics) or will specify the manner in which the licensed material can be used (and uses outside the specified uses will be deemed breaches)
  • Are there limitations on the rights granted?
    • for example, does the license specify that the licensee is responsible for further “clearing” of any rights embedded in the photography (such as the publicity/personality rights of people depicted in the photograph or any trade-marks or logos depicted in the photograph)
  • What are the credit obligations specified in the license?
    • Failure to abide by the credit obligations could result in the license being unenforceable or revocable.

Because not all stock library licenses are the same, they require scrutiny  – they may have none, some or all of the potentially problematic provisions noted above. As an example, the license terms for stockfreeimages.com contain an express disclaimer of representations and warranties (i.e., the licensed material is provided on an “as is” basis, with no representations as to title or anything else), a limit on the number of copies which can be made of the licensed material, a express obligation on the licensee to further clear any rights embedded in the licensed materials (such as the personality rights of individuals appearing in the photos), images cannot be used in connection with “sensitive topics” (such as “mental or physical health issues, social issues, sexual activity, sexual orientation or related, substance abuse, crime or other subjects that can be considered to be offensive or unflattering to any of the models included in the image”) and it is not clear from the wording of the license that including a photo in a film or TV project would even be permissible (the listed of permitted uses mentions only “web sites, magazines, newspapers, books or booklets, for book covers, flyers, application software programs (apps), to make fine art prints or any other advertising and promotional material, in either printed or electronic media, as long as the item in which the image appears does not contradict any of the restrictions below”). That’s not to say that there’s anything wrong with the products and services being offered by stockfreeimages.com – it’s just to say that they might not be suitable for inclusion in films or TV projects.

Checklist: Reviewing Stock Library Content Licenses

You’re Getting Sued for What? An E&O Odyssey (Pt 10)

This post is part of an occasional series highlighting the type of risks which film and TV producers face and which are supposed to be covered by E&O insurance.  The series aims to demonstrate that what might seem to a producer to be unjustified paranoia on the part of their lawyer is, in fact, well-founded paranoia.  These posts will point to actual lawsuits which have been filed against film/TV producers for various alleged rights infringements (whether copyright, trade-mark, right of publicity, or otherwise) – and which inform the nit-picking approach taken by producer’s counsel.

As reported by Hollywood, Esq., a model who appeared in a Revlon print ad in the early 1960s is suing the distributors of the TV series Mad Men in L.A. Superior Court because her image (taken from that print ad) is seen in the opening title sequence of the series. Gita Hall May is seeking unspecified damages “suffered as a result of the unauthorized use” of her likeness which “appears more prominently and directly than any other image in that sequence” (Successful Former Revlon Model Is Suing ‘Mad Men’).

You’re Getting Sued for What? An E&O Odyssey (Pt 10)

You’re Getting Sued for What? An E&O Odyssey (Pt 9)

This post is part of an occasional series highlighting the type of risks which film and TV producers face and which are supposed to be covered by E&O insurance.  The series aims to demonstrate that what might seem to a producer to be unjustified paranoia on the part of their lawyer is, in fact, well-founded paranoia.  These posts will point to actual lawsuits which have been filed against film/TV producers for various alleged rights infringements (whether copyright, trade-mark, right of publicity, or otherwise) – and which inform the nit-picking approach taken by producer’s counsel.

We generally try to avoid editorial comments on lawsuits in this series of posts, but oy vey: as reported by Alex Ben Block at Hollywood, Esq., Sony Pictures Classics, distributors of the Woody Allen film Midnight in Paris, are being sued in US federal court for copyright infringement, trade-mark related claims and personality appropriate-based claims by the estate of William Faulkner for a verbal reference in the film.  As described by at The 1709 Blog:

In describing his experiences, Gil speaks the following lines: “The past is not dead. Actually, it’s not even past. You know who said that? Faulkner. And he was right. And I met him, too. I ran into him at a dinner party.” Apparently neither Sony nor its co-defendants had sought prior permission to use Faulkner’s original quote (“The past is never dead. It’s not even past.”)

The Hollywood Reporter has made available a copy of the filed statement of claim.

As Howard Knopf notes, with respect to the copyright infringement claim, Sony is being sued for “inaccurately and with attribution” “copying” nine words.  Perhaps optimistically (but certainly normatively correctly), Knopf goes on to opine that,

“It should go without saying that any Canadian or UK court would toss this as “insubstantial copying”, without the need to even look at fair dealing. It’s two short sentences, and nine words. Almost nobody would consider the quotation involved here to be “substantial” or more than “de minimis…”

One would hope.

Alas, when it comes to E&O insurance clearance and the risks that insurers bear, this demonstrates yet again that one can perhaps never view a potential claim as too remote.

You’re Getting Sued for What? An E&O Odyssey (Pt 9)

Depicting Trade-marks in Artistic Works: University of Alabama vs New Life Art

Although a decision from the US 11th Circuit Court of Appeals has limited precedential value in Canadian courts, the decision in University of Alabama vs New Life Art, Inc. (filed June 11, 2012) (hat tip: Hollywood, Esq.) is useful for Canadian entertainment lawyers because it indicates the analytical framework which courts use in assessing whether infringement has occurred when a trade-mark is incorporated into an artistic work.  The case is particularly instructive for lawyers trying to provide guidance to clients who want to make use of trade-marked material (for example, a sports team jersey) in a different work (such as a movie).

The case involved artist Daniel A. Moore, who has built a reputation for creating realistic paintings depicting scenes from sporting events, with particular focus, relevant to this dispute, on scenes involving the University of Alabama football team (a sample of Mr. Moore’s work can be found here).  Moore’s paintings are sold, reproduced as prints (which are also sold) and reproduced on paraphenalia such as mugs and calendars.  Although the University and Moore had, for about a decade, entered into agreements relating to Moore’s work, for a much longer period of time Moore had been preparing his paintings without any involvement with, or permission from, the university.  As these things go, the University demanded that Moore stop executing his paintings without their permission – Moore refused, and the University sued Moore for, among other things, trade-mark infringement.

While the entire decision is interesting in its own right, the nub of the court’s conclusion is this:

“we conclude that the First Amendment interests in artistic expression so clearly outweigh whatever consumer confusion that might exist on these facts that we must necessarily conclude that there has been no violation of the Lanham Act [the US analogue of the Trade-marks Act (Canada)]” (pages 18-19 of the .pdf of the decision)

While US First Amendment jurisprudence does not map precisely onto Canadian freedom of expression analysis, the emphatic nature of the 11th Circuit’s decision is worth noting – and, as the court notes when citing a string of precedents, the danger of restricting free expression will factor heavily into a court’s decision when confronted with expressive materials (even materials which can be used in commerce and have a significant commercial component).  As the court states:

“Therefore, we have no hesitation in joining our sister circuits by holding that we should construe the Lanham Act narrowly when deciding whether an artistically expressive work infringes a trademark. This requires that we carefully “weigh the public interest in free expression against the public interest in avoiding consumer confusion.” An artistically expressive use of a trademark will not violate the Lanham Act “unless the use of the mark has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless it explicitly misleads as to the source or the content of the work.” (citations omitted)(page 24 of the .pdf of the decision)

The primary elements in a successful defence to a claim of trade-mark infringement appear then to be that the use of the mark must have some artistic relevance to the underlying expressive work, unless there is an explicit attempt to mislead consumers as to source or content.

The decision in the University of Alabama case can be comfortably read with the recent Southern District of New York decision in the “Hangover: Part II” case where Louis Vuitton Malletier, S.A. sued Warner Bros. for trade-mark dilution because of a scene in the movie making use of counterfeit Louis Vuitton handbags.  (For earlier Signal coverage of the case, see here; for Hollywood, Esq.’s coverage, see here; and for LawLawLand’s coverage, see here.)  The court granted the defendant’s motion to dismiss the plaintiff’s claim because the use of a knock-off bag was “protected … because it has some artistic relevance to the Film and is not explicitly misleading”.

While it is worth stressing again that the cases noted above are US decisions and so would not be controlling in Canadian courts, it is also worth highlighting that claims for trade-mark infringement should not be viewed by producer’s counsel as open-and-shut cases.  Mere use of a trade-marked item in a new work will not automatically trigger liability – there are countervailing freedom of expression issues which should be taken into account.

Depicting Trade-marks in Artistic Works: University of Alabama vs New Life Art