You’re Getting Sued for What? An E&O Odyssey (Pt 7)

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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Bob Tarantino

About Bob Tarantino

Bob Tarantino is Counsel at Dentons Canada LLP and focuses his practice on the interface between the entertainment industries and intellectual property law, with an emphasis on film and television production, financing, licensing, distribution, and IP acquisition and protection. His clients range from artists and independent producers to Canadian distributors and foreign studios and financiers at every stage of the creative process, from development to delivery and exploitation.

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