Entertainment & Media Law Signal : Canadian Entertainment Lawyers for Licensing, Intellectual Property & New Media Matters

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.

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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').

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UPDATED BELOW

With the coming into force of many of the provisions of the Copyright Modernization Act (Bill C-11) on November 7, 2012, Canadian copyright law boasts a new regime with respect to photographs.  In short, subject to the caveats described below, photographs are now to be treated on the same basis as all other "works" (e.g., novels, poems, musical compositions, paintings, etc.) for the purposes of identifying the author and owner of the photograph and for purposes of calculating the duration of copyright protection for the photograph.

The change is relatively dramatic (well, within the context of Canadian copyright law).  Prior to the CMA, photographs were subject to unique treatment under the Copyright Act.  First, with respect to ownership, old Section 13(2) of the Copyright Act provided that where a photograph had been commissioned, and the commissioner had actually paid for the photograph, then the commissioner of the photograph was the first owner of the photograph.  In other words, it wasn't necessarily the subject of the photograph who owned it, nor was it necessarily the photographer who owned the photograph - instead attention had to be paid to who had commissioned (or "ordered") the photograph.  That result could be varied by a contractual arrangement.

Second, with respect to authorship, old Section 10 of the Copyright Act provided that the "author" of a photograph was deemed to be the person who owned the "initial negative or other plate" or, where there was no "negative or other plate", the author was the person who was the first owner of the photograph (which might be the commissioner of the photograph).

That unique authorship provision had a knock-on effect which meant that photographs, unlike all other types of works in the Copyright Act, could be "authored" by a corporate entity.  That caused a problem: because the duration of copyright for works was calculated as equivalent to the life of the author plus fifty years, how would you calculate the duration where the "author" was an artificial entity like a corporation, and so didn't have a "life span"?  The pre-CMA Copyright Act addressed that conundrum by providing that corporate-authored photographs were protected by copyright for a flat term of fifty years from the year of creation.

The Copyright Modernization Act has done away with those provisions.  As a result:

• it is no longer possible for a corporation to be the "author" of a photograph - as with all other works, only one or more individual human beings can be the author of a photograph
• it no longer matters whether someone "commissioned" a photograph - when trying to identify the first owner of a photograph, the same steps are taken as with all other works (i.e., the author of the photograph is the first owner, unless the photograph was created as a work made in the course of employment)
• photographs are now protected by the same term of copyright as all other works (i.e., life of the author plus fifty years)

The Copyright Modernization Act also creates a new exception to infringement/user's right, which is applicable only to photographs: new Section 32.2(1)(f) of the Copyright Act provides that it is not an infringement of copyright for an individual to use for private or non-commercial purposes a photograph that they had commissioned for personal purposes (unless the commissioner and the photographer had entered into an agreement which restricted the commissioner's rights to use the photograph).  This new provision raises a number of interesting issues (e.g., what constitutes a "personal" purpose? how is it different from "private" and/or "non-commercial" purposes? why does it only apply to photographs made "for valuable consideration", and why does it not apply to photographs which were provided as a gift or for no consideration?), but they will need to be explored in detail later.

For entertainment lawyers, and particularly for lawyers conducting E&O review for film and TV projects (or any other project which requires the reproduction of photographs, such as books), the transitional provisions of the CMA deserve close scrutiny because they significantly affect some photographs and will continue to for a number of years.  The transitional provisions of the CMA found in Sections 59 and 60 of the CMA have the following effect:

• the CMA does not "revive" copyright in a photograph in respect of which copyright had expired prior to November 7, 2012
• however, the CMA does extend copyright in some photographs which were still protected by copyright on November 7, 2012: for corporate-authored photographs which were still protected by copyright on November 7, 2012, the term of protection is extended to life of the author plus fifty years (as a technical matter, copyright endures for the remainder of the year in which the author died, plus fifty years - so that the copyright expires on December 31 in the year of expiration, regardless of the actual date on which the author died)

This means that a corporate-authored photograph which was in, say, its 49th or 50th year of protection in 2012 (and so would have passed into the public domain effective, respectively, January 1, 2014 or January 1, 2013) will now be protected by copyright for a potentially much longer period of time.

This means that, when conducting clearance on a photograph created before November 7, 2012 (i.e., when determining whether a license is required for the reproduction or other use of the photograph), it will still be necessary to assess whether the photograph had a human or corporate author, and whether it was still protected by copyright on November 7, 2012.

I've put together this table to try and formalize how the analysis should be conducted for clearance of photographs:

UPDATE (December 10, 2012): As helpfully pointed out by Friend of the Signal Christian Pitchen, the original version of the table above does not take into account the various complications raised by the 1997 amendments to the Copyright Act.  In order to address that lacuna, a new line has been added under the "Was the author human?" section, to address photographs created prior to January 1, 1949.

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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.

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The facts in the recent Federal Court decision of Leuthold v CBC (2012 FC 748) are relatively straight-forward, if somewhat peculiar.  The CBC commissioned a documentary entitled As the Towers Fell, about the September 11, 2001 terrorist attacks on New York City's World Trade Center.  Four different versions of the documentary were aired multiple times on the CBC main network and on the CBC Newsworld channel (since re-branded as CBC News Network).  In most of the versions which were aired, still photographs which had been taken by and which were owned by the plaintiff appeared on-screen for a total of 18 seconds.

Efforts had been made by CBC employees to "clear" (i.e., obtain permission to use) the photographs in the documentary - which is where the dispute arose.  The plaintiff originally faxed a short letter indicating authorization to use the photos - but the parties disagreed on the scope of the authorization and whether any conditions attached to it.  Eventually, following further discussions between the plaintiff and various CBC representatives, a license agreement was signed by the plaintiff.  Critically, the documentary had been broadcast on a number of occasions throughout the discussion/negotiation process (including at least one broadcast which occurred before the first faxed authorization had been received from the plaintiff).  Of relevance to the plaintiff's position, the broadcasts took place on both the CBC main network and the Newsworld channel and was broadcast in all Canadian time zones, at the applicable local time, directly by the CBC or through affiliated stations.

The plaintiff's position can be (imperfectly) summarized as follows: (1) some broadcasts were never authorized, (2) the authorizations she did extend were limited to "one broadcast" on the CBC main network and did not extend to (a) multiple separate broadcasts on different dates, (b) Newsworld, other CBC affiliates or other broadcasting undertakings, or (c) multiple broadcasts on the same day in different time zones, and therefore (3) she was entitled to approximately $21.5 million dollars in compensatory damages, $25,000 in exemplary damages, an accounting of profits and an injunction prohibiting further airings of the program.  In other words, the plaintiff's position was roughly that each single "communication" of the documentary by a television station was a separate act of infringement - when "the CBC" broadcast the film on September 10, 2002 at 8pm, there was not a single act of infringement, but dozens of separate acts of infringement as the CBC main network, its regional stations and local affiliates each "re-broadcast" the film, and they were each jointly and severally liable for the infringing acts of others in the chain of distribution.  Needless to say, the defendants took a slightly different view of how many unauthorized communications of the photographs had occurred (the plaintiff said hundreds, the defendants said six) and how damages should be calculated.

The decision goes into great detail about the various negotiations and conflicting understandings of the parties - potentially interesting in their own right but of limited application beyond the bounds of these particular disputants.  Of more interest is how the court determines that damages should be calculated.  As the court notes at para. 128:

"On six separate occasions her Photographs were viewed by Canadians for a duration of 18 seconds without her authorization.  The Court ... cannot accept the principle that compensation must be awarded on the basis of each technical act of infringement because applying such a method runs counter to our reading of the Broadcasting Act with the Copyright Act. ... The technical means used to relay the infringing work has no bearing on the amount of compensation owed [to the plaintiff].  What is important in this Court's opinion is to adequately compensate a copyright owner for the damage suffered.  The number of potential viewers bears some significance in terms of the value to be assigned to a license."

In pivoting away from a highly-technical approach to calculating damages (the court approvingly cites Dimock's statement that damages can be calculated using "common sense" [see paras. 131 and 138] and indicates that even if statutory damages had been elected by the plaintiff, the court would have declined to award at the high end of the scale), the court looks to the license fee which had actually been agreed to by the parties ($2,500 for limited usage) was the appropriate basis from which to start calculating damages.  The court concluded that $3,200 for each of the six unauthorized broadcasts was a suitable measure of damages.  The court also declined to grant an accounting of profits, stating that "there exists no causal link between the fee paid by Newsworld subscribers and the six unauthorized communications to the public that infringed on Miss Leuthold’s rights". [para. 147] (I should note that the judgment is somewhat confusing on the point of an accounting for profits: though the court initially indicates that no accounting of profits is called for, the final "judgment" (i.e., after para. 177) includes an order to pay $168.74 on account of "revenue received").  The court also declined to award exemplary damages because the infringements arose from "an honest mistake", and declined an injunction because the production was no longer being aired (and seems, in any event, to have been edited to remove the plaintiff's photos).  The final amount the CBC was ordered to pay: US$19,200.

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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.

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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.

This installment draws on recent lawsuits emanating from the type of folks you generally do not want to mess with: biker gangs.

Eriq Gardner at Hollywood, Esq. reported that the Hells Angels Motorcycle Club has sued MTV "for infringing and diluting their skull-with-wings insignia" (Hells Angels Sue MTV for Allegedly Stealing Membership Insignia).  The lawsuit was evidently prompted by t-shirts worn by individuals who were filmed and appeared in episodes of the TV series Rob Dyrdek's Fantasy Factor - the t-shirts bore a design which the Hells Angels evidently feel infringed their registered trade-marks.  (If you were wondering, yes, the Hells Angels Motorcycle Corporation also has registered trade-marks in Canada, one of which can be seen here.)

In a separate lawsuit, reported by Deadline Hollywood, a former gang member sued A&E and the production company for showing his picture during an episode of the series Gangland, allegedly prompting death threats and resultant anguish (Former Gang Member Takes History Channel’s ‘Gangland’ To Court).  The use of an unauthorized photo in the episode prompted the suit, which seeks at least $50,000 in damages.

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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, and which aims to demonstrate that what might seem to a producer to be paranoia on the part of their lawyer is, in fact, well-founded.  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.

Eriq Gardner at Hollywood, Esq. is reporting that visual artist Maya Hayuk is suing RCA Records and Sony Music over the inclusion of one of her works of art in a music video.  The lawsuit has been filed in Massachusetts federal court.  The work in question, entitled "Sunshine", is a mural which appears to be painted on a wall in Brooklyn (this page has what purports to be a picture of the work, the picture apparently being a still from a different music video in which the work appeared).  The video in which the infringing copy appears, for a song called "Only Wanna Give It to You", can be found here - the purportedly infringing depiction of "Sunshine" can be seen at around the 2:00 and 3:00 marks.

A few items to note about the lawsuit:

• the mural only appears for an aggregate of about ten seconds in the clip, and does not appear to ever show up in its entirety in the video - the shots are all fairly tightly focused on the performers, with only portions of the mural viewable on the wall in the background
• the mural is on the side of a building, viewable from the public sidewalk - it would be virtually impossible to film the building (at least from this particular angle) without depicting the mural

What might potential defences, under Canadian copyright law, be to such a claim?  One could try to argue that the "incidental inclusion" provision found in Section 30.7 of the Copyright Act (Canada) applies.  As I explained in detail in this post at IPilogue, that would be a difficult argument to succeed with: the section requires that the inclusion of the copyrighted work be both "incidental" (arguably met in this case) and "not deliberate" - which is almost certainly not the case here, since the director of the video clearly intended to shot the scene at the particular location with the mural in the background.  None of the "fair dealing" exceptions found in the Act would apply.  What about the fact the mural is in a "public place"?  Still not going to help us: Section 32.2 of the Act which allows the reproduction in a "cinematographic work" (which would include a music video) of a work that is "permanently situated in a public place or building" only applies to sculpture and works of "artistic craftsmanship" - and a mural is decidedly not a sculpture or a work of artistic craftsmanship.

The launching of the lawsuit offers a timely reminder for those conducting E&O clearance on a film clip: the inclusion of virtually any copyrighted work (or an identifiable portion thereof) should prompt an assessment of whether the depiction of the work has been properly licensed or whether a fair dealing or other exception to infringement might apply.

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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, and which aims to demonstrate that what might seem to a producer to be paranoia on the part of their lawyer is, in fact, well-founded.  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 Eriq Gardner at Hollywood, Esq., a lawsuit was launched in California against Jay Leno and NBC as a result of the use in a the Tonight Show joke of a picture of a temple.  As described by Fordham's IPLJ blog:

A California Sikh, Dr. Randeep Dhillon, has filed a lawsuit against Jay Leno, alleging that the Sikh community was the unfair butt of The Chin’s joke on the January 19^th episode of The Tonight Show.  The joke at issue portrayed Mitt Romney, the uber-wealthy Republican presidential candidate, as the summer resident of the Golden Temple of Amritsar—the holiest shrine of the Sikh religion.  Seizing on the buzz created by the release of Romney’s tax records for 2010-2011—when he earned $42.5 million in income—Leno mocked the candidate’s wealth by showing Newt Gingrich’s and Ron Paul’s homes, saving “Romney’s” gilded temple for the final zinger. ... In the complaint, Dr. Dhillon seeks general and punitive damages for libel.  He claims that the joke “clearly exposes plaintiff, other Sikhs and their religion to hatred, contempt, ridicule and obloquy because it falsely portrays the holiest place in the Sikh religion as a vacation resort owned by a non-Sikh.”

Without getting into the merits of the claim, the situation offers a timely reminder that Canadian entertainment lawyers who are conducting E&O reviews of film and TV projects should ensure that their review is a fulsome one, extending beyond the usual concerns relating to copyright, trade-mark, defamation and personality rights.  Other matters for consideration (and of possible particular relevance for documentaries) include:

• possible Criminal Code violations, such as obscenity (Section 163), child pornography (Section 163.1) and hate propaganda (Sections 318 and 319)
• violations of court orders or other legal prohibitions on identifying participants in court proceedings and crimes (such as a court order prohibiting broadcasting the identity of the victim of an alleged sexual assault, or the provisions of the Youth Criminal Justice Act which prohibit identifying youths accused of crimes)
• contraventions of the broadcasting standards such as those contained in the Broadcasting Act , the CRTC Policy on Violence in TV Programming and the Canadian Association of Broadcasters' codes of ethics, portrayal of violence and equitable portrayal

(A hat tip to Tony Duarte, whose invaluable resource Canadian Film & Television Business & Legal Practice, provided inspiration for this post.)

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The question of whether Ontario law recognizes a tort cause of action for invasion/breach of privacy has long been a contentious one - but it has finally been definitively settled in the affirmative.  The Ontario Court of Appeal has confirmed in the case of Jones v Tsige, 2012 ONCA 32 that Ontario law admits a separate cause of action for what the court terms "intrusion upon seclusion".  (As discussed in this post, the trial decision in Jones v Tsige had flatly declared that "there is no tort of invasion of privacy in Ontario".)

A number of other commentators have already opined on the decision (see Ha-Redeye, Sookman, Hayes, Gannon), so I would like to just summarize the highlights and then comment on the importance of the decision for entertainment lawyers.  (I'd also like to give a shout-out to colleague John Craig, whose article "Invasion of Privacy and Charter Values: The Common Law Tort Awakens" 42 McGill Law Journal 355 was cited by the court in it reasons).

Elements of the Tort

The court is somewhat less clear than it could be on the precise elements of the new(-ish) tort.  From the decision:

[70]         I would essentially adopt as the elements of the action for intrusion upon seclusion the Restatement (Second) of Torts (2010) formulation which, for the sake of convenience, I repeat here:

One who intentionally intrudes, physically or otherwise, upon the seclusion of another or his private affairs or concerns, is subject to liability to the other for invasion of his privacy, if the invasion would be highly offensive to a reasonable person.

[71]         The key features of this cause of action are, first, that the defendant’s conduct must be intentional, within which I would include reckless; second that the defendant must have invaded, without lawful justification, the plaintiff’s private affairs or concerns; and third, that a reasonable person would regard the invasion as highly offensive causing distress, humiliation or anguish. However, proof of harm to a recognized economic interest is not an element of the cause of action. I return below to the question of damages, but state here that I believe it important to emphasize that given the intangible nature of the interest protected, damages for intrusion upon seclusion will ordinarily be measured by a modest conventional sum.

I have italicized the language which gives rise to the confusion: it's somewhat fuzzy as to whether there are three elements to the tort (intentional/reckless conduct; intrusion on seclusion; highly offensive) or four elements (intentional/reckless conduct; intrusion on seclusion; highly offensive; causing distress/humiliation/anguish).  While nothing in this case turned on the point, it's not difficult to conceive of situations which are offensive but do not cause distress, humiliation or anguish.

The case is also worth keeping a copy of because it provides a rather succinct overview of various legislative and common law attempts to protect privacy interests, and contains an appendix listing damages awards in various "invasion of privacy" circumstances.

Limitations on Tort and Damages

The court identifies the following limitations on the availability of the tort (in paras. 72 and 73):

• limited to only "intrusions into matters such as one’s financial or health records, sexual practices and orientation, employment, diary or private correspondence that, viewed objectively on the reasonable person standard, can be described as highly offensive"
• subject to "competing claims" for things such as the protection of freedom of expression and freedom of the press

It appears that a plaintiff could recover any demonstrated pecuniary losses, along with "symbolic" or "moral" damages which are capped at $20,000.

Implications for Entertainment Lawyers

When advising clients in the entertainment industry, particularly those who produce investigative reporting, news reports, memoirs, documentaries, docu-dramas, even "reality" TV - really anything which involves the depiction of actual living persons - Ontario lawyers will need to be cognizant of the demonstrated availability of the "intrusion upon seclusion" tort - something which previously was largely a marginal concern in the province.

There is, as Mark Hayes notes, "great uncertainty" about how and the extent to which free expression interests will be taken into account in an "intrusion upon seclusion" court action.  How might a documentary or docu-drama make use of letters exchanged between two people, only one of whom is the primary subject to the movie?  Could the other person bring an intrusion upon seclusion claim for revealing "private" thoughts and experiences?  What kind of impact might revelations about an individual's sexual activities or orientation have (e.g., imagine a news report or book revealing that a politician privately practices activities that he or she emphatically denounces in public life)?  What about a book or TV movie about a public figure which reveals that the person once attempted suicide - something which they had worked to keep private?  Could showing that the finances of a public individual do not accord with their cultivated image (e.g., showing that a successful real estate mogul is in fact broke) be cause for a claim?  Is the interest recognized by the intrusion upon seclusion tort a personal one which expires upon death (similar to defamation), or can it be acted upon by heirs (as seems to be the case with the appropriation of personality tort)?

Of course, none of these questions are unique to this new tort - most legal developments are "fuzzy" around the edges and so engender similar considerations.  But because film and TV lawyers, in particular, need to consider not just potential liability for their clients, but also compliance with E&O insurance policy clearance requirements, a heightened sensitivity to the issue is called for.

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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, and which aims to demonstrate that what might seem to a producer to be paranoia on the part of their lawyer is, in fact, well-founded.  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.

This installment in the series isn't from the world of film and TV, but rather videogames: Eriq Gardner at Hollywood, Esq. reports that game publisher Electronic Arts is in court following threats from a manufacturer of helicopters asserting that including depictions of real-life 'copters in videogames constitutes trade-mark infringement (Helicopters In Video Games Under Fire As Electronic Arts Heads to Court).

This sort of dispute raises pertinent issues which often arise when conducting an E&O review of a project - namely, what sorts of rights might the owner of an "object" claim against a producer who uses that object in their movie?  For example: is there a need to get clearance (i.e., obtain permission from the owner) for the use of a car in a motion picture?  (On a related point, and for a good summary of the issues see Dear Rich's recent post Can We Use Cars in CD Cover Art or Movie?).  For the lawyer reviewing the matter on behalf of the producer, this often reduces to a "look and feel" analysis: Is the object (e.g., the car) being used in a prominent manner? Is there a danger that someone could construe the use of the object as constituting an endorsement of some sort? Is there a trade-marked logo which is visible? Is the object being disparaged in some fashion? Is there some kind of artistic design element on the object which might have separate copyright protection (to use an example which might be a bit out date: is the object a van with an airbrushed painting on the side)?

Digging a bit deeper into the analysis, however, there are both practical restrictions (if every object appearing on-screen needed clearance, movies would quickly become impossible to make - if every appliance in a kitchen required clearance, there wouldn't be many scenes taking place in kitchens) and legal ones - it becomes difficult to articulate what "rights" a manufacturer might have in an "object".  Section 64 of the Copyright Act (Canada) removes copyright protection for designs or artistic works which are applied to "useful articles" and then reproduced more than fifty times.  That would have the effect of preventing a car manufacturer from claiming copyright in their vehicle designs (assuming we're talking about mass-produced vehicles, and not simply one-off "concept cars").  But they might have some kind of relevant protection under the Industrial Design Act (Canada) which may warrant consideration.  Simply depicting a trade-marked logo is likely not to constitute "use" within the meaning of the Trade-marks Act (Canada), and so the only potentially plausible trade-mark claim would have to rest on some kind of disparagement or dilution basis.  The more difficult question to answer relates to copyright which might subsist in a visible logo - though, again, practically speaking in most circumstances such logos will be difficult to discern on-screen.  All that being said, many E&O insurance policies will simply require that prominently-depicted objects (such as vehicles) and depicted logos be blurred or that clearance be obtained - irrespective of the precise legal grounding of a potential claim.

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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, and which aims to demonstrate that what might seem to a producer to be paranoia on the part of their lawyer is, in fact, well-founded.  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 Matthew Belloni at Hollywood, Esq., the producers of "The Hangover: Part II" are being sued by Louis Vuitton Malletier, S.A., the luxury fashion manufacturer:

Luxury fashion brand Louis Vuitton filed suit in federal court in New York on Thursday alleging that a handbag featured in the movie is a fakery. In the scene, the character played by Zach Galifianakis carries a bag marked LVM and admonishes another character: “Careful, that is.. that is a Louis Vuitton.”

But the complaint (posted in full here by Paid Content) alleges that the bag is instead made by the Chinese American company Diophy, which Louis Vuitton is currently suing in an attempt to prevent knock-off items from being sold in the U.S.

Louis Vuitton says it has been damaged by the consumer confusion ("Careful, that is a Louis Vuitton." has supposedly become a catchphrase) and claims that Warners has refused to alter the scene before the movie is released on DVD.

A copy of the complaint is available here.  A recording of the scene in question is, at least for the moment, available here on YouTube.

The complaint (the "statement of claim", in Canadian legalese) asserts that the movie "prominently features an infringing travel bag ... and misrepresents that the [infringing bag] is a genuine Louis Vuitton piece of luggage". (Query whether a bag which appears on-screen for less than ten seconds is "prominently featured", but let's leave that aside for now.)  The basis of the action is primarily trade-mark related: the plaintiff asserts that the use of the bag will give rise to consumer confusion and lead viewers to conclude that Louis Vuitton authorized or otherwise condoned the use of the infringing bag.

The suit is particularly notable for at least two reasons: the brevity of the on-screen use which has given rise to the lawsuit, and the fact that it is a verbal reference to the brand which seems to have triggered the lawsuit - I suspect that many entertainment lawyers would have advised that a non-derogatory verbal usage of a brand name would not require clearance or otherwise give rise to potential liability.

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Following up on a story we discussed earlier this year (Turmel v CBC (Dragons' Den) - Enforceability of Depiction Releases), the Supreme Court of Canada has denied leave to appeal to the plaintiff in the case of Turmel v CBC (Dragon's Den) (trial decision here: 2011 ONSC 2400; court of appeal decision here: 2011 ONCA 519).  That caps what is an important decision for Canadian entertainment lawyers, as it confirms the enforceability of signed "depiction releases", particularly the enforceability of clauses which waive any right to sue for depictions which might be "disparaging, defamatory, embarrassing or of an otherwise unfavourable nature which may expose me to public ridicule, humiliation or condemnation".

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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, and which aims to demonstrate that what might seem to a producer to be paranoia on the part of their lawyer is, in fact, well-founded.  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.

Eriq Gardner at THR, Esq. reports that the owners of a private home are suing NBCUniversal and Shed Media because of the appearance of scenes shot in their home on the television series Bethenny Ever After.   Producers and their counsel are probably scratching their heads at this point: didn't they get a location agreement?  They did - but the plaintiffs in the lawsuit are claiming that the individual(s) who signed the location agreement were not the owners of the home, but merely tenants, without the authority to sign such an agreement and grant the required permissions.

Lesson? Conduct a title search to determine who is registered as the owner of the property which you'd like to use, and make sure that person (or someone who demonstrates that they have authority to sign on their behalf) signs your location agreement. (For other Signal thoughts on location agreements, see So You Want Your House to be Famous? Pitfalls of Location Agreements.)

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This post is one in 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, and which aims to demonstrate that what might seem to a producer to be paranoia on the part of their lawyer is, in fact, well-founded.  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.

THR, Esq. reports that the US-based Travel Channel is the defendant in a class action lawsuit filed by a representative plaintiff on behalf of individuals who appeared on the show Extreme Fast Food (Travel Channel Faces Class Action Lawsuit Over Filming Woman at Hot Dog Stand).  The plaintiff alleges that she was filmed without consent while eating at a famed hot dog joint in Chicago.

In a fortuitous coincidence, Mark Litwak has a post (which includes sample wording) on the use of "crowd releases", being the posting of signs warning pedestrians or attendees of a particular location that they are being filmed.  As I noted in PIPEDA and Filming/Photographing Individuals for Film and TV Projects:

It is generally accepted practice among entertainment lawyers that a signed release authorizing the reproduction of a person’s image is required for each individual who appears identifiably on-screen in an audio-visual project. There are some widely-recognized limited exceptions to that general rule, such as the placement of prominently-displayed notices in “public” or general access locations alerting pedestrians or attendees that filming is taking place and that entering into the area or venue will be deemed to be authorization for the filming and reproduction of their image.

To my knowledge, no Canadian court has ever pronounced on the effectiveness of a "crowd release".

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As has been mentioned on this blog numerous times, the "clearance" process for obtaining "errors and omissions" (E&O) insurance for film and TV projects can sometimes be an arduous, frustrating process for both producers and their lawyers.  Producers are often frustrated by the seemingly arbitrary or heavy-handed decisions made by their lawyers to cut, obscure or otherwise modify materials appearing on-screen which the lawyer fears could run afoul of the E&O policy's clearance guidelines which stipulate that no copyrighted or trade-marked materials can appear on-screen without some kind of written permission.  This post is the first in an occasional series which aims to demonstrate that what might seem to a producer to be paranoia on the part of their lawyer is, in fact, well-founded (even paranoids have enemies, goes the saying).  These posts will point to actual lawsuits which have been filed against film/TV producers for copyright or trade-mark infringement - and which inform the nit-picking approach taken by producer's counsel.

As first reported by Eriq Gardner at THR, Esq., the producers of the MTV show "The Real World" have been sued for failing to blur out video images of "shadow dancers" who were visible in the background of scenes filmed in bars/clubs in New Orleans and broadcast in two different episodes of "The Real World" ('The Real World' Sued for Failing to Blur 'Shadow Dancers').  For anyone who is unclear on what a "shadow dancer" is, the official Shadow Dancers website should provide all the clarification which is required.  A copy of the complaint filed in US federal court is available here.

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UPDATED BELOW

The Toronto Star is reporting that oral arguments in the appeal of the Turmel v CBC (Dragons' Den) decision are currently underway ("Brantford entrepreneur claims 'Dragons' defamed him").  The Turmel decisions are valuable for Canadian entertainment lawyers because they are among the few reported decisions which consider the enforceability of depiction releases for television programs.

Some background: Turmel appeared on an episode of the CBC television program Dragons' Den - a "reality TV show" which, per the Wikipedia entry, features "entrepreneurs pitching their business ideas in order to secure investment finance from a panel of venture capitalists".  Turmel was unhappy with the manner in which he was depicted on the show, and sued the CBC for defamation.  He actually sued twice: the first action (2010 ONSC 5318) (which we'll refer to as the Lofchik decision, after the judge hearing the case), which the plaintiff filed after the episode was first broadcast, was dismissed following the defendant's application for summary judgment; the second action (2011 ONSC 2400) (which we'll refer to as the Arrell decision), which was essentially identical to the first, wasbrought after the CBC had re-broadcast the same episode and was, as with the first action, dismissed after the defendant brought an application for summary judgment).

The plaintiff's claims were dismissed on a variety of grounds: he had failed to provide the notice required by the Libel and Slander Act (Ontario); the second action was res judicata; and, most importantly for our purposes, both the Lofchik decision and the Arrell decision held that the "consent" (or depiction release) which was signed by Turmel was binding on him and, in the words of the Arrell decision, was "a complete bar" to the lawsuit.

In addition to signing the depiction release, the plaintiff had also been given a "Contestant Guide" which set out various elements of the show.  The Guide, coupled with the consent/depiction release which Turmel signed, included a number of critical clauses which buttressed the defendant's argument:

• the Guide said that "anything that is discussed on camera can be broadcast on the show"
• there was "no guarantee" that a participant would appear on the show or be chosen to receive investment funds from the panel of entrepreneurs
• from the Guide: "a pitch may take on a life of its own - anything goes"
• per the Arrell decision, the depiction release expressly stated that the CBC had "sole and exclusive rights to the taping and to edit and use it in any way or anytime it wished"
• the depiction release included an express acknowledgment that the participant might be portrayed in “…disparaging, defamatory, embarrassing or of an otherwise unfavourable nature which may expose [the participant] to public ridicule, humiliation or condemnation”
• the depiction release also included a complete waiver and release of claims ("The plaintiff also agreed pursuant to paragraph 27 of the consent not to sue for any loss or damage no matter how caused")

Both the Lofchik and Arrell decisions indicated that the plaintiff had been provided with the Guide prior to his participation, had been provided with the depiction release prior to his participation, told to read it carefully, given time to review it (and even to have his own lawyer review it).  Also of significance was the finding in the Arrell decision that "[n]o evidence ha[d] been led that [the depiction release] was in any way unconscionable and like Justice Lofchik I find as a fact it was not" - it will be interesting to see if the issue of unconscionability is raised on appeal, since one of the lingering issues about depiction releases is whether they constitute "contracts of adhesion" (since they are effectively provided on a "take or leave it" basis, with no opportunity to negotiate terms).

The Ontario Court of Appeal decision in Turmel v CBC will be an important one in the Canadian entertainment lawyer's little corner of the legal universe: it will represent the first, to my knowledge, instance of appellate consideration in Canada of the enforceability of depiction releases.  If the Court of Appeal holds the release to be unenforceable against the plaintiff, it will require some serious reassessments of contracting practices in the industry; but if the Court upholds the lower court decisions, it will provide authoritative confirmation of the general practice of relying upon signed depiction releases.

UPDATE (July 13, 2011): I have been reliably informed that the Ontario Court of Appeal has dismissed the appeal from the bench.  The Court's reasons for the dismissal confirm that, because the plaintiff voluntarily appeared on the show and was given an opportunity to read the depiction release and raise any concerns about it (which he declined to do), the depiction release was not unconscionable; because the depiction release contained a waiver of any right to relief, his claims were barred.  As I mentioned in the last paragraph, above, this is a positive decision for producers' counsel.

UPDATE (September 24, 2011): The Ontario Court of Appeal's decision can be found here: 2011 ONCA 519.  To quote:

[1] The appellant voluntarily agreed to go on the show.  In order to do so, he was required to and did sign a consent.  Paragraph 27 of the consent precluded the two actions he commenced.

[2] The only issue on the appeal is whether it would be unconscionable for the court to give effect to the terms of the consent.  We are of the view that it would not be unconscionable.

[3] The Contestant Guide alerted the appellant to read the consent for the detailed rules about the show.  Before the taping, the appellant was given ample time to read the consent and was free to ask for more time to review it.  He did not ask for more time and signed the consent without expressing any concern about its terms.

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Let's imagine someone wants to use a photograph of a very old painting in their movie or television show (or, what the heck, in a book) - under Canadian law, do they need permission from the photographer or other owner of the photograph?

I sometimes wonder whether lawyers in other practice areas get questions that can be answered with a simple "yes" or "no".  I envy those lawyers.  Let's say you come across a great photograph of an Old Master (say, the Mona Lisa) or even something more ancient (say, a Roman fresco).  And you want to use that photograph in your movie, TV show or even in a book you're planning on publishing.  The thinking might go like this: the original work of art itself is in the public domain, so how can a photograph of it be subject to copyright?  The argument becomes especially acute if the photograph is simply an exact reproduction of the original work of art (i.e., the photograph simply reproduces the entire work of art, from border to border).

So, what's the answer? Well... it's complicated.

Certainly many museums around the world take the position that they own copyright in the photographs they have arranged to be taken of various pieces of art in their collection.  (See, for example, this photograph of a 1505 painting, on the website of the UK's National Portrait Gallery (the "NPG"), which bears the annotation "© National Portrait Gallery, London"; or this detail of the Mona Lisa from the Louvre, which bears the annotation "© Musée du Louvre / A. Dequier - M. Bard"; or this photograph of a Rubens painting at the Art Gallery of Ontario, which bears the annotation "The Thomson Collection © Art Gallery of Ontario").  As an example, the AGO's website has a Copyright page which states "Reproductive uses are prohibited without the express written authorization of the Art Gallery of Ontario or the copyright owner. ... Any commercial or publication use is strictly prohibited. Copying, redistribution, or exploitation for personal or corporate gain is not permitted."  A few years back, the UK's NPG threatened legal action against a US-resident individual who had download thousands of images from their website (see also coverage by Howard Knopf).  (Unfortunately, I was not able to find any further information about whether there was any final resolution in the NPG matter.)

There certainly doesn't seem to be any obvious reason why a Canadian court would conclude that a photograph of a piece of public domain artwork is not protected by copyright.  Canadian courts have held that photos of everything from the Queen at a press conference (Dobran v Bier, [1959] Que. KB 154] to a photograph of a bed in a sales brochure (Slumber-Magic Adjustable Bed Co. v Sleep-King Adjustable Bed Co. (1984), 3 CPR (3d) 81 (BCSC) are photographs protected by copyright.  In the 1930s, the Ontario courts (affirmed by the Privy Council) held that copyright subsisted in photographs of fine art, and that the copyright had been infringed when the photographs were reprinted in a newspaper (Mansell v Star Printing & Publishing Co. of Toronto, [1937] 4 DLR 1).  An old English case (Re Graves (1869), LR 4 QB 715) is usually cited as authority for the proposition that a photograph of a pre-existing artwork is itself protected by copyright, irrespective of the copyright status of the artwork being photographed.

It's a little unclear whether those decisions are incorrect in light of the Supreme Court of Canada's 2004 decision in CCH Canadian Limited v. Law Society of Upper Canada, [2004] 1 S.C.R. 339, 2004 SCC 13, wherein the Supreme Court of Canada set out the current meaning of the term "original" in Canadian copyright law (a work needs to be "original" in order to attract copyright protection).  At para. 16, the Court said the following:

For a work to be “original” within the meaning of the Copyright Act, it must be more than a mere copy of another work.  At the same time, it need not be creative, in the sense of being novel or unique.  What is required to attract copyright protection in the expression of an idea is an exercise of skill and judgment.  By skill, I mean the use of one’s knowledge, developed aptitude or practised ability in producing the work.  By judgment, I mean the use of one’s capacity for discernment or ability to form an opinion or evaluation by comparing different possible options in producing the work. This exercise of skill and judgment will necessarily involve intellectual effort. The exercise of skill and judgment required to produce the work must not be so trivial that it could be characterized as a purely mechanical exercise.  For example, any skill and judgment that might be involved in simply changing the font of a work to produce “another” work would be too trivial to merit copyright protection as an “original” work.

That formulation of originality is tough to apply when we're talking about photographs of fine art.  On the one hand, a photograph of fine art is arguably just a "mere copy" of another work - indeed, short of a photocopy produced by a photocopier or a downloaded file, it's difficult to envision something which is more of a "copy" than a photograph of fine art - since the whole point of a photograph of fine art is to be an exact reproduction of the artwork in question.  However (you knew that was coming, right?), the Court goes on to say "[w]hat is required to attract copyright protection in the expression of an idea is an exercise of skill and judgment.  By skill, I mean the use of one’s knowledge, developed aptitude or practised ability in producing the work".  Whatever else someone wants to say about the photography of fine art of the calibre necessary for use on a museum website, it certainly requires the "exercise of skill and judgment" and the use of "knowledge, developed aptitude or practised ability" - these are professional photographers who are hired to create the photographs (by comparison, feel free to request a copy of my various out of focus, off-kilter, lopsided attempts to photograph artwork in various musuems).  The professional photographers hired to create the photographs in question definitely make use of their "capacity for discernment or ability to form an opinion or evaluation by comparing different possible options" when creating the photographs - issues ranging from lighting to distance to filters to lenses come in to play in making the decision of how to photograph artwork.   And Canadian courts certainly have not been shy about finding that a "work" has copyright protection when an "author" has expended time and effort in creating it - on my reading, it appears often that Canadian courts are more than willing to protect "effort", and certainly don't require that there be much "creativity".

Not everyone agrees, however, with the notion that photographs of fine art can be protected by copyright.  In Bridgeman Art Library, Ltd. v Corel Corp., 36 F. Supp. 2d 191 (SDNY 1999), a US district court, applying both English and US copyright law, held that photos of public domain artwork were not capable of being protected by copyright law as they lacked the requisite "originality" - with respect to English law, the court examined a number of English cases and commentators and concluded that the Re Graves decision was no longer good law in light of subsequent evolution of the notion of "originality".  Having read the district court's reasoning, I'm not entirely convinced they got that correct - it seems that a number of the authorities they cited argue at least as strongly for finding copyright in a photograph of fine art as they argue against it.

So... where does that leave us?  It appears that under US law a photo of public domain fine art is not susceptible of being protected by copyright (maybe - the decision in Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir. 1951), which was not mentioned by the Bridgeman decision, seems to go the other way).  Under Canadian and English law, the matter seems, at best, uncertain, with gusts towards "protected by copyright law".  For more detailed consideration of the matter under English law (with particular reference to the National Portrait Gallery matter mentioned above) see Francis Davey, Andreas Guadamuz-Gonzalez and Simon Bradshaw.  The fact that the underlying work is in the public domain probably won't have any impact on the analysis: translations of public domain literary are protected by copyright, as are new arrangements of public domain musical works.

So, if a producer or publisher came to me and asked whether they needed permission to reproduce a photograph of a piece of art in the public domain, assuming that the photograph itself was not so old that it was itself in the public domain, I'd be inclined to say that such permission was required.  It's possible that they'd have a plausible "fair dealing" argument, but that requires an analysis even more contorted and contingent than the one set out in this post for the question of whether copyright exists at all in the photograph.  Ultimately, the producer's/publisher's choice would come down to this: what's going to be cheaper - trying to get permission to reproduce the photograph upfront, or defending a copyright infringement claim if everything goes wrong?

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About a year ago, we posted about Tattoos On Screen, offering a brief overview about the errors and omissions clearance issues posed by reproducing tattoos inked on actors bodies in film and TV projects.  Our early adopter status didn't much help, though: little did we know that, during the recent, er, period of repose that this blog experienced, there would be a major news story talking about, what else, tattoos on screen and that we wouldn't have time to weigh in on the matter.  Rather than do a poor job of attempting to rehash what others have already written about the topic, we offer a selection of some of the best pieces from the legal blogosphere over the last few weeks about The Hangover Part II and the replication of Mike Tyson's facial tattoo:

• Brent Randall wrote an excellent and detailed post at IPilogue - Legal “Hangover” For Warner Bros. Over Mike Tyson Tattoo - which also features further discussion in the comments from David Vaver which is well worth reading
• Gordon P. Firemark offers an interesting take on the need for people with tattoos (tattooees?) to ensure they have obtained copyright in their designs: Getting a tattoo? If you’re in the media you need to get the copyright too!
• Simon Fodden at slaw offers his alliterative thoughts on the topic: The Tyson Tattoo Turmoil
• Rachel Valadez at Law Law Land wrote the seminal blog post on the topic: The Hangover 2 and the Tyson Tattoo: Lessons in Copyright, Contract, and Clearance

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As we've discussed previously here at the Signal (Title Dispute - Similar or Identical Titles for Film and TV Projects) the extent to which the "title" of a motion picture or television project can function as a trade-mark involves a fairly detailed analysis.  Leonard Glickman has published "What's In a Title?" (hat tip: Entertainment Law Reporter), which offers a lengthy consideration of the matter, including a discussion of the possibility of a title which would otherwise be unprotectable as a trade-mark acquiring a "secondary meaning".  As Leonard notes in his conclusion:

In light of the foregoing restrictions with respect to the protection and registration of titles, what options are available to producers of films or other single work titles? In Canada, an applicant could apply on a proposed use basis for a series of works and stretch out the application process by extending the time frame for filing a declaration of use. In the interim, the applicant could produce and release a sequel thereby creating a series and removing obstacles to registration and enforceability. Even if a sequel is not produced and the application is abandoned, the producer can start to build secondary meaning in the title and attempt to enforce its rights in the title against third parties. When filing the application, the applicant must have a bona fide intent that it will produce a series of productions. Otherwise, the application or registration may be open to challenge under Section 30(i) of the Canadian Trade-marks Act.

US commentators have suggested there is merit to registering single work titles under the state registration system. Although the registrations have little substantive value, they will be disclosed in title search reports and potentially deter a third party from adopting the title. Another method used to protect titles is to register proposed titles with the Motion Picture Association of America’s Title Registration Bureau, the members of which are the Hollywood studios and hundreds of independent production companies. Once a title is so registered, other members of the Bureau are bound by the Bureau’s rules which impose restrictions on their ability to adopt and use the same title or a confusingly similar title.

On a slightly tangential (but related, really!) point, Samuel M. Duncan's article "Protecting Nominative Fair Use, Parody, and Other Speech-Interests by Reforming the Inconsistent Exemptions from Trademark Liability", while bearing a bit of a mouthful of a title, offers an excellent overview of US trademark law and, of particular value for entertainment lawyers, provides the tools to assess when the use of a trademark in an audio-visual project is shielded from claims of infringement.

Finally, with a hat tip to the Dear Rich blog, an interesting little tidbit about depicting trademarked tobacco products in movies.  As readers of the Duncan article, linked to above, will know, the mere depiction of a trademarked product in a film or TV project may not give rise to a viable infringement claim (though often E&O policy clearance requirements will nevertheless prohibit such a depiction) - notwithstanding that, however, Philip Morris has made this rather polite request to film and TV producers:

Unfortunately, the fact that we do not engage in product placement does not mean that our brands are never shown. Some producers and directors choose to depict our brands in their work without our permission. But we are limited in our ability to stop all displays of our brands because federal and state trademark laws, as well as the U.S. Constitution, protect freedom of expression and the "fair use" of trademarks in works such as movies and television shows. Our position is clear – we do not want our brands or brand imagery depicted in movies and television shows. The unauthorized use of our brands and brand imagery perpetuates the misunderstanding among some that we pay or are otherwise responsible for these depictions, which is simply not the case. We strongly encourage the movie studios to eliminate references to or depictions of our brands.

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Last week's news story about the FBI demanding that Wikipedia remove from its website a high-quality image of the FBI's logo offers a timely reminder of the need to obtain permission for the use of official logos and crests when conducting errors and omissions (E&O) reviews of film and TV productions.

E&O insurance policies will generally stipulate that permission is required for the on-screen depiction of the logo, crest or uniform of a government agency such as a police force.  The agencies themselves may have their own explicit policy stating that their permission is required for any such depiction - thus, for example, the US Department of Justice has a policy on seals, logos and other official insignia, and the LAPD has its own Entertainment and Trademark Unit which producers can contact.

As the KWIKA Entertainment Law Blog points out in the post Police Departments and Public Domain, US caselaw on the issue of whether government agencies have a protectable interest (be it copyright or trade-mark) in their logos is "surprisingly unsettled" - suffice it to say that Canadian caselaw is even more sparse (for purposes of comparison, I was unable to find any mention on either the RCMP website or the Toronto Police Service website of any contact information for reproduction of their respective logos).  And where the law is unsettled, E&O insurance providers are loath to tread: better safe than sorry is the guiding principle when it comes to obtaining (and issuing) E&O coverage.

As the Wikipedia entry for the film The Departed notes:

Martin Scorsese asked the [Massachusetts State Police] if he could use actual logos, badges, and color schemes on the uniforms and the cruisers, but was denied. As a result, the uniforms, police cruisers, and logos in the film are slightly different from the real ones.

General tip: when Martin Scorsese and Warner Bros. (the studio which distributed The Departed) aren't willing to run the risk of a claim based on infringing reproduction of a logo, other producers should probably shy away as well.

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The film version of The Girl With the Dragon Tattoo was released in North America on March 19, 2010 - for entertainment lawyers, it raises the question: what do you do about a girl with a dragon tattoo who appears on-screen?

The errors and omissions "clearance" process requires producers of audio-visual projects to obtain licenses for all copyrighted materials which appear recognizably on-screen.  A tattoo is, at least at some level, simply a drawing or painting rendered on a somewhat unusual canvas (ie the human body).  At first glance, then, the tattoo should be the subject of copyright protection - but who should you approach to request permission to reproduce the image?  The actor who has the tattoo imprinted on their body, or the tattoo artist who originally drew the tattoo (and what about a tattoo which is itself simply a reproduction of a pre-existing artwork or trade-mark)?

Christopher Harkins has written what appears to be the only currently-available long-form consideration of the question: "Tattoos And Copyright Infringement: Celebrities, Marketers, And Businesses Beware Of The Ink" (10 Lewis & Clark Law Review 314) (hat tip: Simon Chester at slaw), which opens with a discussion about a case involving a tattoo artist suing the NBA for copyright infringement when the NBA created advertisements depicting player Rasheed Wallace and a close-up (and animation) of the tattoo on his right forearm (the case was eventually settled with no public disclosure of the settlement terms).  Harkins analyzes the matter from the perspective of US copyright law, and Jordan S. Hatcher also offers some thoughts on the matter (including an interesting sidebar on the intersection of tattoos and moral rights).  The answers are not straightforward, regardless of the jurisdiction: Harkins offers an apposite closing thought when considering tattoos on-screen: "a veritable gauntlet of copyright issues may lurk".

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The good folks at IP Osgoode's IPilogue blog have published a short article I wrote which explores the "incidental inclusion" exception to copyright infringement, an exception which, depending on who you talk to, could be of major significance for film and TV producers facing errors and omissions clearance problems: "Cindy, Incidentally – The “Incidental Inclusion” Exception in Canadian Copyright Law".  The opening paragraph:

A filmmaker films an individual walking down a city street, past a convenience store.  The camera captures, among others, two things: an advertisement consisting of the familiar, stylized Coca-Cola symbol hanging in the window, and the faint, but audible, strains of a popular song drifting from inside the store as an unseen customer opens the door.  Concerned, the filmmaker speaks with an entertainment lawyer and asks whether there’s anything to worry about.  From such a simple fact scenario rises one of the more vexing questions in Canadian intellectual property law.

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