A service of the

LAW FIRM OF KENNETH M. PERRY

 

Current Multimedia Content Rights

Legal Issues - A Top Ten List

  1. IS THERE A CLEARINGHOUSE WHERE I CAN OBTAIN THE RIGHT TO USE CONTENT FOR MY MULTIMEDIA PRODUCT?
  2. DO I OWN THE WORK I PAID FOR?
  3. AM I LIABLE FOR SOMEONE ELSE'S INFRINGING USE OF MY SERVICE?
  4. WHAT IS THE RIGHT OF PUBLICITY?
  5. WHAT RIGHTS DO I NEED IN ORDER TO USE MUSIC IN MY PRODUCT?
  6. AM I LIABLE IF I USE A DIGITAL COPY OF A FEW NOTES OF MUSIC IN MY PRODUCT?
  7. WILL I HAVE TO DEAL WITH THE ENTERTAINMENT UNIONS?
  8. CAN I PROTECT MY CHARACTERS FROM BEING COPIED?
  9. SHOULD I WORRY ABOUT MORAL RIGHTS?
  10. HAVE I INFRINGED THE COPYRIGHT IF THE UNDERLYING WORK IS NOT RECOGNIZABLE IN MY PRODUCT?

1. IS THERE A CLEARINGHOUSE WHERE I CAN OBTAIN THE RIGHT TO USE CONTENT FOR MY MULTIMEDIA PRODUCT?

No general clearinghouse to identify owner, licensing fees, terms, etc. in the U.S. or Japan.
In Japan, there are early stage proposals for at least a rights information clearing house by the Institute for Intellectual Property and Agency for Cultural Affairs.
In the U.S., private clearance companies are generally used. (See proposal in materials.)
Many of the properties used in multimedia products are traditional but the method of use is not standard.
The complexity is causing some content developers to create new works rather than use pre-existing works.

NOTES
In U.S. (None really apply to multimedia usage):
Copyright Clearance Center
photocopies
electronic redistribution and archiving within an organization "Electronic uses rights"
voluntary participation
ASCAP (American Society of Composers, Authors, Publishers)
BMI (Broadcast Music Inc.)
only grant public performance licenses for music compositions, not for consumer CD products
Harry Fox Agency for music.
In Japan:
Institute of Intellectual Property
2/94
Multimedia Committee
Proposed Digital Information Center
Clearinghouse for copyrighted works
Voluntary not compulsory participation- Licensor established licensing terms and royalty rates
Administration of royalty payments
Ministry of Education's Agency for Cultural Affairs
11/93
Subcommittee on Multimedia of the Copyright Council
Proposed Copyright Rights - Information Centralization Organization
Clearinghouse but more informational at outset than administrative regarding royalties Both proposals are still in the study stage

Tips on Obtaining Rights
There is no required copyright registration system in the U.S. or Japan.
There is no requirement to put a copyright notice on a published work as a condition of protection.
Any right not expressly granted by a licensor is reserved.
General rule is to find the owner and obtain a license or don't use the content.

NOTES:
Many disputes over scope of rights provisions, today's cases are disputes over old agreements.
Consider other media and new media and delivery approach in negotiations: "publication and distribution by any variety of methods on all media whether now known or invented hereafter".
Cost, negotiating time factors both increase as desired scope of rights increases.
Right of first refusal if no initial rights, as a backup.

2. DO I OWN THE WORK I PAID FOR?

Requirements to be a Work Made for Hire
Copyright interest.
A work prepared by an employee within the scope of employment.
A work specially ordered or commissioned, if designated in writing as a work made for hire, for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work or as a compilation [and six other categories].

NOTES
Should use a written assignment in all cases except employment.
Why does it matter?
Company is designated as the sole author and thus the sole owner if it is a WMFH
Duration of protection will be a fixed term of 75 years.
No concerns about termination rights after 35 years.
No concerns about possible moral rights.

NOTES
35 year termination right does not apply to WMFH
Duration of protection otherwise is life of author plus 50 years.
Tips on Works Made for Hire
Paying for the work does not mean you own the work.
Software developed by an independent contractor as part of a multimedia work should be designated in writing as a "work made for hire".
A written assignment of rights should be obtained from an independent contractor developing software to be used alone.
Keep patent protection in mind for enabling software.

NOTES
Consider other IP in the work product.
Enabling examples include:
Comptons now rejected patent.
The Unisys Welch patent on a compression algorithm used in GIF graphical format.

3. AM I LIABLE FOR SOMEONE ELSE'S INFRINGING USE OF MY SERVICE?

Infringement: Strict liability; lack of knowledge or innocence is not a defense. Playboy v. Frena; Sega v. MAPHIA; Frank Music v. CompuServe.
Defamation: No liability if did not know and should not have known and if no agency relationship. Cubby v. CompuServe; Stratton Oakmont v. Prodigy.

NOTES
Operation of bulletin board or other enabling service such as a gateway service provider for WWW, FTP or Gopher.
Stratton is defamation case not yet decided.
Prodigy's practice of pre-screening for obscenity, other offensive language and "family service" representation may make it look more like a publisher who is exercising control over content.
Cubby case has agency analysis.
Frank Music case not yet decided.
In Frena - "Intent or knowledge is not an element of infringement: Knowledge defense rejected.

Tips
Place warning labels in agreements, screens, etc. regarding non-infringement, defamation, profanity, pornography, right of publicity, etc.
Take corrective action whenever you learn of a violation of warnings (but be cautious about taking on the duty to police). Once you know of a potential problem, you need to act. Standard of care increases the more you know or do.

NOTES
Warnings will help in a defamation defense but not against infringement claims except possibly for a contributory infringement defense.
Publisher vs distributor characterization for defamation liability.
Control over content is the basis for characterization
Publisher has control; distributor does not have control
"Common Carrier" like telephone company
Other warnings, disclaimers in service agreements
Language in agreements re allocation of responsibility for content and independent contractor status was important in the Cubby case.

4. WHAT IS THE RIGHT OF PUBLICITY?

Right of publicity protects one's name, likeness, caricature, biographical information, voice, signature, photo, endorsement.
State law issue
Scope, duration of protection, descendability all vary from state to state.

NOTES
Rights protect sounds (Beth Midler example) as well as images - any representation that would reasonably identify the person (even a Vanna White robot).
Scope of right expanding particularly in California. In California, both common law and statutory.
Rights vary from state to state. Forum shopping possible.
NY has a right of privacy but not publicity.
Descendability: was the right exploited during the person's lifetime.
Duration: Under Tennessee law, as long as Elvis is exploited.

Tips on Rights of Publicity
Assume non-celebrities as well as celebrities have a right of publicity when considering the use of a image or other likeness.
Assume some relevant state will recognize a right of publicity.
The medium where the image or other likeness appears is the key factor.

NOTES
Medium - First Amendment vs. commercial speech.
News reporting or commentary on public issues.
Medium - newspaper / magazine
encyclopedia
unauthorized biography
game
Cast your work as a newspaper, periodical, documentary, biography or encyclopedia.
Do not cast your work as a game or trading cards.
Licensors/agents usually don't understand the mass market economics of multimedia so securing a license may not be economically feasible.

5. WHAT RIGHTS DO I NEED IN ORDER TO USE MUSIC IN MY PRODUCT?

Possible Licensors
Composition:
Songwriter
Lyricist
Sound Recording:

NOTES
Composers right of performance is an exclusive right.
Owner of sound recording does not have an exclusive right of performance. Would need a mechanical license for copying and distribution but not for playing, for example, on a radio station.
Use of composition in a multimedia work is not a standard performance use. Therefore, a non-standard license will be needed.

Public Performance Licenses
ASCAP and BMI (non-dramatic performances).
Not applicable to home use.
Applicable to uses in public forums, such as lobbies, trade shows, corporate presentations, music on-hold.

Reproduction Licenses
Synchronization License.
Mechanical License.
Videogram License.
New Media License.

NOTES
Following are all reproduction licenses and mutually exclusive of each other:
  1. Synchronization license - A license to make mechanical reproductions of a composition, that are accompanied by a motion picture or other audiovisual work, for use in connection with a motion picture, theatrical performance and television broadcast. Traditional license for "big screen" movies.
  2. Mechanical license (may be compulsory under U.S. Copyright law) - A license to make a mechanical reproduction of a composition, which is not accompanied by a motion picture or other audiovisual work, and which is intended only for distribution to the public for private use. Example is a music CD.
  3. Videogram license (conflicts with synchronization license) - A license to make a mechanical reproduction of a composition, which is accompanied by a motion picture or other audiovisual work, and which is distributed on a tangible form (e.g., videotape, videodisk, CD-ROM) for the home market.
  4. New media license is emerging for multimedia products. Not always available - A license to make a reproduction of a musical composition in connection with the distribution of computer software, karaoke and other new media devices. This is designed for multimedia products to reduce confusion as to which other forms of mechanical licenses may be needed.
1), 2) are traditional with established rights.
3), 4) are labels which are defined by owner of the work. Still evolving and will be defined by the licensor.

Other Music-Related Licenses
Print License.
Master Use License.

NOTES
Print license is a license to make and distribute printed copies of music, such as sheet music and printed music folios, and reprints of lyrics in books, magazines and print advertising.
Master use license is from the sound recording company to make and distribute copies of the work. Mechanical license is from the composer.

Tips on Music Rights
The complexity of music licensing is causing some content developers to create and perform new music works rather than use preexisting works.
Performing rights societies: BMI, ASCAP, SESAC.
AFTRA represents singers as well.
Work Made For Hire

NOTES
Music is a traditional work with traditional licensed uses. Multimedia uses will not fit into most standard agreements.
Covers music licensing rights in the U.S.
SESAC is the representative of European composers in the U.S.
American Federation of Television and Radio Artists (AFTRA).
Consider right of publicity in the voice of the artist.
WMFH - make sure ownership of sound recording is obtained whether using existing composition or new composition.

6. AM I LIABLE IF I USE A DIGITAL COPY OF A FEW NOTES OF MUSIC IN MY PRODUCT?

In Grand Upright Music v. Warner Bros., the court, invoking the Seventh Commandment, held that it was a copyright infringement to use three words and the accompanying music.
Fundamentally altered the recording industry. Where before the industry turned a blind eye, now the industry polices and seeks relief for digital sampling.

NOTES
Song involved was "alone again naturally."
Jarvis case supports this position
Important because applies to digital sampling generally (of images, for example).
Tips on Digital Sampling
The de minimis defense will rarely work, as the sample will often be considered qualitatively, if not quantitatively, significant.
The fair use defense will rarely work, as the sample will often be used for blatantly commercial purposes.
Two licenses are needed: a Mechanical License from the composer and a Master Use License from the sound recording company.

NOTES
Traditional Mechanical and Master Use Licenses will need to be amended to fit this nontraditional usage.

7. WILL I HAVE TO DEAL WITH THE ENTERTAINMENT UNIONS?

Will likely have to deal with AFTRA or SAG if you produce a work with actors/actresses in it.
American Federation of Television and Radio Artists (AFTRA)
Represents actors and actresses generally with respect to works made on videotape.
Screen Actor's Guild (SAG)
Represents actors and actresses generally with respect to works made on film.

NOTES
Major concern in Silicon Valley since not used to dealing with unions.
Skill of actor/actresses is the issue in whether you must deal with unions.
Union employee is not supposed to work for you if you don't have an agreement with his union. Electronic Arts has negotiated an agreement with AFTRA in which EA reportedly agreed to use only union talent in its productions.
Each union rules generally protect only itself rather than other unions.
Will create moral rights equivalent by contract.
SAG has Interactive Media Agreement available. Apparently not widely accepted because of lack of flexibility.
Reuse and residual rights.
Film is apparently of higher quality than a videotape work for inclusion in a multimedia product.
Other important guilds:
Directors Guild of America (DGA).
Writers Guild of America (WGA).
Producers Guild of America (PGA).

Tips on Guilds and Unions
A member of union may not work for a non-signatory company.
Some limitations on use of non-union members if you have a union agreement.
Contractually creates the equivalent of moral rights.
Reuse and Residuals
Approval of additional uses.
Payments for additional uses.

NOTES
Union member suffers consequences not non-signatory company.
Moral rights equivalent - no use for any other purpose without my consent.
Standard agreements cover only traditional uses. Agreements are unlikely to cover all uses. Rights grant may cover only motion picture usage, for example.

8. CAN I PROTECT MY CHARACTERS FROM BEING COPIED?

Copyrights
Copyright only extends to the specific expressions of the character, not to the type or genre of the character.
Protection for literary characters is often not as strong as for graphical characters.

NOTES
Detective is type of character; Inspector Clouseau (Pink Panther) is a specific expression of a character.
Protection is the key to success for sequel products.
Copyright has a specific duration of protection unlike trademark which lasts as long as the trademark is used.

Trademark Rights
Protects the use of the character to the extent it identifies its owner as the source of the products presenting the character.
Trademark protection often extends only to the names and visual aspects, but not to the abilities and personalities.
Indefinite duration, unlike copyright if the trademark continues to be used.

NOTES
Image must be source identifying.

Tips on Protection of Characters
Register the copyright in the character as an artistic work as well as the works in which the character is developed.
Register the trademark in the character if it is also used as a trademark.
Present, use and develop the character with consistency, and police the quality of any licensee's use of the character.

9. SHOULD I WORRY ABOUT MORAL RIGHTS?

What are Moral Rights?
Copyright interest
Claim of authorship of work (attribution).
Prevent modification of work.
Control publication or distribution of work.

NOTES
More likely to be moral rights issues in the creative area of multimedia content.
One right is to be recognized as the author or anonymous.
Prevent changes to a work or publication or distribution that could harm the author's reputation or honor.

Who Recognizes Moral Rights?
Widely adopted in Europe, Canada, Japan - Berne Convention requirement.
National treatment under convention may provide U.S. authors with greater protection outside of the U.S.
U.S. Laws: Visual Artists Rights Act of 1990. NOTES
Berne Convention states regarding moral rights - "Even after transfer of rights, author shall have the right to claim authorship of the work and to object to any distortion, mutilation or other derogatory action in relation to the work which would be prejudicial to his honor."
Moral rights in Japan are a significant restriction on the use of content material. May not be waived in advance.
Because of national treatment, U.S. authors enjoy broader moral rights in other countries. Example is 1988 case in France in which colorized version of U.S. film ("Asphalt Jungle") was not permitted to be shown on the basis of moral rights.
In the U.S., the Visual Artists Rights Act, 17 U.S.C. 106A, provides protection for moral rights for works of fine art, limited editions only - paintings, drawings, some photographs. Unlikely to have material effect on multimedia products. On-going discussions of expanding moral rights protection.
About 11 states have laws, including New York, California.

Tips on Moral Rights
Multimedia works incorporate artistic works, the scope of moral rights is expanding, and the cost of obtaining a waiver is small.
Obtain written agreements to assign, waive and agree not to assert moral rights (signed by artist, identifying work by name).
Internationally, moral rights are much stronger. Waiver may not be effective.

NOTES
General assignment in invention rights agreements may not be effective.

10. HAVE I INFRINGED THE COPYRIGHT IF THE UNDERLYING WORK IS NOT RECOGNIZABLE IN MY PRODUCT?

Unauthorized intermediate copying.
Unauthorized modification or preparation of derivative work.

NOTES
Copying by digitalization process and then changing is often done.
Derivative work definition is important regarding royalty payments. Definition is often used too loosely which creates greater royalty payment obligations.

Tips on Intermediate Copying
Strictly speaking, unauthorized copying and/or modifying is a copyright infringement.
You must have a license to modify and create a derivative work.
Fair use may be a defense to intermediate copying in limited circumstances as in Sega v. Accolade re disassembly but only if there is no other way to learn the ideas.
No one may ever make a claim if the resulting work is not substantially similar and does not directly compete with the copyright owner's product.

NOTES
A derivative work is one based on one or more preexisting works, such as a translation, abridgment or any other form in which a work may be recast, transformed or adapted.
Derivative works are not a traditional licensed right for traditional properties.
Japan -- Implied right to copy in course of disassembly to learn ideas.
U.S. -- Atari, Sega Cases.
State of U.S. law is that intermediate copying in order to learn unprotected "ideas" needed to create another work is "fair use" in many circumstances.
object code
authorized copy
copying only to extent necessary
Why is this important? For enabling software, creating compatible or competitive software often requires some type of copying of another parties software in the process of disassembly. For digitalizations, may want to start with a particular image, for example, a baseball player batting.
Differentiate process of development from result.

********************************************************************

Sandy Jane Wong, M.P.A.
Write Wavelength
"Conveying the pragmatics of electronic networks"
Ph: 415-851-7233
EMail: sandy@starwave.batnet.com

LAST UPDATED:  02/17/02 01:04 PM       
 
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Copyright 1994 - 2002 by Kenneth M. Perry, Esq. All rights reserved. Reproduction is permitted so long as no charge is made for copies, no copies are placed on any electronic online service or database for which there is a fee other than a flat access charge, there is no alteration and this copyright notice is included.

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