Using Creative And Architectural Works In Film And Media Productions

Author:Mr Barry Werbin
Profession:Herrick, Feinstein LLP
 
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When watching a feature film, TV series or other media production, we often take for granted the appearance of artwork, designs and scene backgrounds without giving them a second thought. But lurking behind the screens is a complex bundle of rights that can present business, economic and legal challenges. This article presents an overview of the legal and practical issues concerning the use and depiction of works of art, sculpture, photography, textiles (such as quilts), product brand names and designs, building designs and architectural works in visual media works.

Copyright Law Refresher

As a brief primer, copyright protection extends to original works of authorship, including literary, dramatic, musical, artistic and certain specialty works like software and architectural plans. Copyright protection exists from the moment of creation (not registration), although registration provides significant benefits. To be protected, a work must also be "fixed" in some tangible medium of expression. General ideas, concepts, functional features, titles and short phrases, common geometric shapes and government works are not protected.

The operative 1976 Copyright Act (the "Act") grants a bundle of exclusive rights to a copyright owner, including the right to reproduce, publish, perform, display, distribute and prepare derivative works from a protected work.1 The term of a copyright depends on whether a work was created before or after January 1, 1978, as well as the country where the work was created. For works created after that date, the term is the life of the artist or author plus 70 years. For works created by a single author prior to that date, there was a single 28-year term with a second 28-year renewal term available. It is more complicated for a work whose copyright was still in its first term or was renewed prior to 1978, but for many, the overall term extends for a total of 95 years from when the work first became subject to copyright protection.

The term of copyright in a foreign work is governed by the law of the country where the work was created and may have different timing for when such work falls into the public domain. In addition, many foreign works that lost protection in the U.S. because of a failure to follow pre-1978 formalities have had their copyrights restored under the Uruguay Round Agreements Act.2 For example, the copyright in Picasso's famous painting Guernica (1937) was restored along with many others. Thus, media producers cannot just assume that a work is in the public domain merely because of age or lack of a pre-1978 renewal registration if it is a foreign-created work.

The copyright "fair use" doctrine, which is codified in the Act, provides a qualified defense against an infringement claim if certain statutory elements exist with respect to the otherwise unauthorized use of a copyright-protected work. While it is a complex and evolving area of law, generally, fair use may be found where use of a work, in whole or in part, is "transformative" and has no detrimental effect on the market for the protected work. Easy examples, with limitations, would be use of a protected work in a parody of the work itself, for teaching and news reporting, or in an article commenting on or criticizing the work. Related to copyright fair use is the defense of de minimus use, a doctrine unsettled in the courts but which exonerates from infringement liability trivial uses, such as a fleeting view of a copyright protected work in a blurred background of a film clip.

Trademark Law Refresher

Trademark law protects words, names, symbols, logos or designs used in trade with goods or services to indicate their source and to distinguish them from the goods and services of others. The essence of a protected trademark or service mark is its reflection of the underlying good will of the subject business. "Trade dress" is a subset of trademark law that refers to the distinctive packaging or design of a product, such as the design of a Porsche®, the classic Coke® bottle, or the distinctive décor of a restaurant chain that has been deemed akin to a "product."3

Rights in a mark do not arise until the mark is used "in commerce," and federal registration, while imparting some significant benefits, is not necessary for protection. Both registered and unregistered marks are entitled to protection under the federal trademark statute (the Lanham Act) and state trademark and unfair competition laws. The essence of a trademark infringement claim is whether the unauthorized use of a protected mark is likely to cause confusion as to its source, origin or sponsorship. Trademark rights extend for as long as a mark remains in use.

Unique Protection for Architectural Works

Constructed "architectural works" first obtained copyright protection when they were added to the Act in 1990. Original building designs either created after December 1, 1990, or created but unpublished prior to that date if they were constructed by December 31, 2002, in any tangible medium of expression, are subject to protection.4 This includes certain types of constructed buildings, and architectural plans, models and drawings.

The Act's definition of an "architectural work" includes the "overall form as well as the arrangement and composition of spaces and elements in the design" of a building. But the Act's definition of a "building" is narrow, and only includes structures that are habitable by humans and intended to be both permanent and stationary. In addition to homes and residential apartments, this includes houses of worship, museums, gazebos and garden pavilions, but excludes structures like bridges and dams and non-stationary habitable structures like mobile homes and boats.5 It also excludes standard features or design elements that are functionally required as opposed to purely aesthetic design elements because copyright protection does not extend to functional elements.

Another key exception critical to media works is that pictorial representations of an otherwise covered "building" are permitted. This is because "the copyright in an architectural work that has been constructed does not include the right to prevent the making, distributing, or public display of pictures, paintings, photographs, or other pictorial representations of the work, if the building in which the work is embodied is located in or ordinarily visible from a public place."6 A high-profile example was the use of the Getty Center in Los Angeles that became Star Fleet headquarters after several upper floors were added with computer graphics for the...

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