III. Licensing Content:
A. Text

1. Copyright

Copyright law protects works of authorship such as literary works, musical works, paintings, photographs, and computer programs.6 These creations are "things" created by people. They are referred to as intellectual property since they are products of the mind. Copyright should not be confused with personality rights (i.e., right of publicity and right of privacy), that people may possess to protect the use of their name, voices, and personae.

Federal copyright law applies in all the states. Today, state copyright law is largely preempted by the federal law, although state law may provide a remedy in those areas that the federal law does not preempt. For instance, state law could protect works that are ineligible for federal protection because the works are not in a fixed tangible medium of expression.

Copyright laws are territorial in their application. This means that United States copyright law only applies within the United States. The United States has joined several international copyright conventions that protect American works from infringement abroad. These treaties likewise protect the work of foreign authors in the United States.

To be eligible for copyright protection, a work must meet four criteria: 1) It must be original; 2) it must be an "expression of an author;" 3) it must be of a non-utilitarian nature; and 4) it must be in a fixed, tangible medium of expression.

The producer who desires to incorporate a literary work in a multimedia program should consider the following factors. First, the producer should determine whether the work is copyrighted or in the public domain. This can be difficult since a search of copyright records is rarely conclusive. Many works protected by copyright law may be unpublished and/or unregistered.

If work fails to meet one of the above mentioned four criteria, it is not copyrightable and thus in the public domain. However, it is not always readily apparent whether a work has met the criteria. For example, a basic tenet of copyright law is that ideas7 are not protectable, only the expression of ideas. In other words, the embellishment upon an idea can be protected but not the underlying bare idea itself. The craftsmanship of the author, the particular manner in which an author expresses herself, not the underlying facts and ideas, is what copyright law protects.

It may be difficult to determine when an idea is sufficiently embellished upon in order for the work to be entitled to protection. While a single word is not an expression, and an entire book is an expression, what about a synopsis? Is this an "idea," or more? In Takeall v. Pepsico, Inc.,8 the court declined to find that the short phrase, "You Got the Right One, Uh-Huh," used in a Pepsi commercial, was copyrightable.9

Note that an author is unable to protect an expression of an idea if the idea can only be expressed in one or in a limited number of ways.10 Note also that while a work may be protected under copyright law, elements of the work may be borrowed. For instance, historical facts and stock scenes ("scenes a faire")11 are unprotected, and can be taken from copyrighted work without violating the author's copyright.

Copyright law protects both the literal text of a work and its structure and organization.12 Thus, a borrower of material who closely paraphrases the original may be liable for copyright infringement although the precise text of the two works differ. The key test is whether the works are "substantially similar."

In determining whether two works are substantially similar, some courts use a two-part test. First, the works are compared objectively, using external criteria and analysis and sometimes expert testimony. The second part of the test subjectively determines how the ordinary observer would view the works.13

In evaluating whether a work is in the public domain, multimedia producers should keep in mind that a work of an American author could be in the public domain in the United States while protected under the copyright laws of other nations. Since the market for CD-ROMs and computer programming is worldwide, American producers want to be able to market their products in all nations. Determining whether a work is in the public domain worldwide can be exceedingly complex.

Consider, for example, Charlie Chaplin's copyright claim to the 1925, silent film "The Gold Rush."14 The film was first published in the United States. Chaplin, a British citizen, brought suit in Switzerland where he was a resident. Swiss copyright law did not directly apply since it only protected works by Swiss nationals and works first published in Switzerland.

Switzerland does protect other works, however, by virtue of its international treaties. The United States and Switzerland have a 1924 bilateral agreement, but it only applies to works of United States and Swiss nationals. Both countries are signatories to the Berne Treaty but the United States did not join until 1989, long after the film was published. Great Britain was also a member of Berne, and Chaplin was a citizen of Great Britain, but the 1908 version of Berne applied only to works first published in a Berne country which the United States was not. Thus, it would appear that Chaplin did not have a valid copyright claim.

The court determines that the 1908 version of Berne extended copyright protection to works simultaneously published in a Berne signatory country. The film was published in Canada, a Berne country, in 1925. The Swiss court held that this was a simultaneous publication. Since Berne applied, the law of Switzerland applied. Under Swiss law, copyright lasts for the life of the author plus fifty years, and Chaplin's copyright remains in force. The United States, on the other hand, only protected this work for twenty-eight years. Therefore, the film was protected in Switzerland although it was in the public domain in the United States.15

A work may be protected abroad yet be in the public domain in the United States. The copyright in the classic Italian film movie "The Bicycle Thief" was determined to have expired under United States law since it was not properly renewed in the United States although the film was first published in Italy in 1948.16 The film, however, remains protected in Italy where copyright lasts for fifty years from the first public showing.

Content borrowers need to be concerned as well with other foreign laws. Some countries, such as France, expressly recognize the moral rights authors have in their work. These moral rights prevent others from changing the author's work, or taking the author's name off of it, even if the author has sold the physical work and the copyright to another. In Huston v. Turner Entertainment,17 American director John Huston was determined by a French court to be the author of the American film "The Asphalt Jungle," although under American law his employer was deemed the author.

The producer next should determine if a work is in the public domain. If the work is in the public domain, one can use it without permission from the author. Works in the public domain include those created by the United States government, works created by authors who have abandoned their copyright, and those works in which the copyright has expired.

To determine whether a copyright has expired, one must refer to the law in effect when the material was published or created. Under the copyright law in effect before 1978, copyright lasted for twenty-eight years and could be renewed for an additional twenty-eight year period.18 Some copyright owners renewed their copyrights while others did not. Under prior law, failure to put a copyright notice on a work could place the work in the public domain.

Once a work goes into the public domain its copyright cannot be revived.19Players, Inc., 736 F.2d 485 (9th Cir. 1984)). As explained previously, some works may be in the public domain in the United States but protected by copyright law in other countries. Determining copyright protection in foreign countries can be difficult, since most countries do not require registration or deposit of copyrighted works.

Third, if a work is copyrighted, one needs permission to use it unless the use is considered a fair use, or the use is protected under the First Amendment, or what is taken is not copyrightable matter (i.e., ideas).

A greater amount of material may be borrowed from non-fiction works than fictional works. Clearly, a writer can borrow historical facts from a previous work without infringing the first author's copyright. Moreover, since factual works, unlike works of fiction, may be capable of being expressed in relatively few ways, only verbatim reproduction or close paraphrasing will be an infringement.20

On the other hand, the multimedia producer should use caution in borrowing from fictional works. In one recent case, the book "Welcome to Twin Peaks: A Complete Guide to Who's Who and What's What," was deemed an infringement of the television series "Twin Peaks." The book contained detailed plot summaries and extensive direct quotations of at least eighty-nine lines of dialogue.21

Finally, if one needs to license rights, the producer should make sure the licensor has the necessary rights to grant. This can be difficult to determine, since a copyright may be jointly held, interests may have been transferred to third parties, and ownership may be unclear when the work was created by one person for another (i.e., a work-for-hire). A book author, for example, may have granted movie rights to a studio. A screenwriter working as an employee probably does not own the copyrighted script he wrote; the studio will own it.

A copyright search is advisable. A copyright report may reveal a transfer of the copyright, or the licensing of some rights. If the copyright report shows that the purported owner of the literary property is not the copyright holder, or if the copyright has been sold to another, the multimedia producer will not want to buy a license.

Private research companies can check additional sources of information for potential copyright, title, and trademark conflicts. These companies may review catalogs and reference works that list publications, movies, sound recordings, and products. Keep in mind that the reports supplied by the Copyright Office and from private research companies do not offer a conclusion as to ownership of a copyright. These reports merely supply the information needed to determine the status of a copyright. The opinion of an experienced attorney is often desirable.

Obtaining rights to literary works can become even more complex if the literary works have incorporated other copyrightable elements. For instance, a book may include photos duplicated with permission of the photographer. The book author probably does not own the copyright or any electronic rights to those photos and therefore cannot grant such rights to a multimedia producer. One would have to track down the photographer and request permission.

When text is taken from a script created by a Writer's Guild of America (WGA) member for a studio, other issues may arise. While WGA members usually do not own the copyright to works for hire, they may have certain reserved rights in the material such as dramatic, publication, sequel, and merchandising rights. These rights are defined in the Writer's Guild Minimum Basic Agreement (MBA). This division of rights is called "Separation of Rights."

2. Titles

Titles are not copyrightable but can be protected under state and federal unfair competition laws. The gist of an unfair competition action is mislabeling or mis-designating a product (or service) in such a way as to cause confusion to consumers as to the origin of its manufacture.22 Once the title of a work comes to be associated in the public mind with the work of a particular producer, it acquires what is known as a "secondary meaning." Others who attempt to trade on this secondary meaning by adopting the same or similar title, may be liable for unfair competition and trademark infringement.23

One should conduct a title search to determine if there are any conflicts with an intended title. One can order a title report which may disclose other products or services that have used the same or similar title. If someone has used the desired title on a similar product or service in the same geographical area, that title may not be used unless it has been abandoned or a release has been obtained.

In creating a title, a highly fanciful or original one is preferable because it is not likely to infringe on other titles. Such a title will also help the creator protect the title from subsequent infringement.

3. Trademarks

One kind of unfair competition is trademark infringement. Merely mentioning a trade or service mark in a multimedia work is not an infringement; however, if the mark is used to mislead the public as to the origin of manufacture of some product or service there is an infringement.24 Thus, a producer could use the word "Xerox" or "IBM" in a story without infringing those marks. However, if those marks were used in such a way to imply that a multimedia work was published by Xerox or IBM, the use would be actionable.

4. Characters

Characters, especially those represented in a visual form such as cartoon characters, can be protected under copyright law.25 Individual personality traits of a character, however, are not copyrightable.26

The use of a character in a fictional work can be problematical if the character: 1) Infringes on someone else's copyrighted character, or 2) resembles actual persons and their portrayal is defamatory, invades their privacy or, may be an instance of unfair competition.27 These pitfalls can be avoided by licensing the use of fictional characters, or obtaining a depiction release from living individuals. Another solution is to change the name and description of the character so they are not identified with the other character or person.

Characters can also be protected under trademark and unfair competition laws. A character's name, image, and dress can be a trademark.28 One can conduct a character search to determine if any living or fictional characters with the same or similar names exist.

5. Tort Liability

If the material borrowed invades rights of other people because it is defamatory or invades their rights of privacy or publicity, the borrower, as well as the original author, will be liable. When licensing rights, one should have the owner of the original material warrant that the work does not infringe any of these rights. The licensee should also request an indemnification clause so that if the warranty is breached the licensee can obtain reimbursement for damages and attorney fees. Additional protection can be obtained by purchasing Errors and Omissions (E & O) Insurance.

6. Defamation

A defamatory statement is one that harms the reputation of another so as to lower him in the opinion of the community or to deter third persons from associating or dealing with him. For example, those communications that expose another to hatred, ridicule or contempt, or reflect unfavorably upon their personal morality or integrity are defamatory.29

The law of defamation can be confusing as the common law30 tort rules are subject to constitutional limitations. To determine the state of the law, one must read a state's defamation laws in light of various constitutional principles such as those expressed in New York Times Co. v. Sullivan,31 Gertz v. Robert Welch, Inc.,32 and Philadephia Newspapers, Inc. v. Hepps.33

There are several important defenses and privileges to defamation, including truth. If a program hurts someone's reputation, but what was said is true, the communication is absolutely privileged. An absolute privilege cannot be lost through bad faith or abuse.34 So even if one maliciously defames another, the communicator will be privileged.

While truth is an absolute defense,35 the burden of proving truth sometimes falls on the defendant.36 Multimedia producers should be prepared to prove the truth of any defamatory statements in their work.

There is a conditional common law privilege of fair comment and criticism.37 This privilege applies to communications about a newsworthy person or event. Conditional privileges may be lost through bad faith or abuse. This privilege has been largely superseded, however, by a constitutional privilege for statements about public officials or public figures.

Public figures, such as celebrities, or public officials, such as a senator, have a much higher burden to bear to prevail in a defamation action.38 There are two types of public figures. One is a person who has achieved such pervasive fame or notoriety that he is a public figure for all purposes. Other public figures have only been drawn into a particular public controversy and will only be considered public figures for a limited range of issues.39

For a public figure or official to win a defamation case, they must prove that the defendant acted with "actual malice."40 Actual malice is a term of art that means that the defendant intentionally defamed another or acted with reckless disregard of the truth. Plaintiffs find it difficult to prove actual malice. That is why so few celebrities bother suing The National Enquirer. To successfully defend itself, the Enquirer need only show that it did not act with malice. The newspaper can come into court and concede that its report was false, defamatory, and the result of sloppy and careless research. But unless the celebrity can prove that the Enquirer acted recklessly, the court is obliged to dismiss the case. Mere negligence is not enough for liability.

The multimedia producer should take the following steps to protect against a defamation suit: (1) Take special care when portraying living individuals who are not public officials or figures, (2) make sure the communicator can prove that any defamatory statements are true by annotating scripts with the sources of information, documentating the truth of any derogatory statements, and showing that the statements were made without actual malice, (3) obtain releases whenever possible (it never hurts to have a release even if it is not legally required), and (4) an attorney should closely review all scripts for potential liability before production. If the multimedia producer can change the names of subjects and the setting without detracting from the dramatic value of the story, the producer should do so. If a person depicted is identifiable from the context, however, liability may result.41 Similarly, a disclaimer in the credits such as "Any resemblance to people, living or dead is purely coincidental . . ." may not protect a producer if viewers nevertheless believe the movie is depicting an identifiable living person.

7. Right of Privacy

The right of privacy has been defined as the right to live one's life in seclusion, without being subjected to unwarranted and undesired publicity. In other words, it is the right to be left alone.42

Like defamation, the right of privacy is subject to constitutional restrictions. The news media is not liable for statements that portray another in a false light if the statements are newsworthy unless they are made with knowing or reckless disregard of the truth (i.e., actual malice).43

Other defamation defenses apply to invasion of privacy as well, but truth is not a defense. Express and implied consent are valid defenses. One who voluntarily reveals private facts to others cannot recover for invasion of privacy. Likewise, revealing matters of public record cannot be the basis for an invasion of privacy action.44

Privacy actions typically fall into four factual patterns:45

Intrusion into One's Private Affairs is the first category. This category includes such activities as wiretapping and unreasonable surveillance. The intrusion must be highly offensive. Whether an intrusion is highly offensive depends on the circumstances. Most people would find it offensive to discover a voyeur peering through their bedroom window. On the other hand, a salesman knocking on one's front door at dinnertime may be obnoxious but will not be offensive enough to state a cause of action.

Public Disclosure of Embarrassing Private Facts is the second category. One who gives publicity to a matter concerning the private life of another is subject to liability for invasion of privacy, if the matter publicized is of a kind that would be highly offensive to a reasonable person, and is not of legitimate concern to the public. In other words, it is not newsworthy.46

An example of this type of invasion of privacy would occur if someone digs up some dirt on another person, publicizes it, and the information is not of legitimate interest to the public. The First Amendment will protect producers, however, if they reveal newsworthy facts about others, even if the subjects are private individuals and they prefer to keep the facts secret.47

Appropriation is the third category. An action for appropriation of another's name or likeness is similar to an action for invasion of one's right of publicity. The former action seeks to compensate the plaintiff for the emotional distress, embarrassment, and hurt feelings that may arise from the use of one's name or likeness on a product.48 The latter action seeks to compensate the plaintiff for the commercial value arising from the exploitation of one's name and likeness.49

As with the right of publicity, a person cannot always control the use of his name and likeness by another. While a subject can prevent another from putting his face on their pancake mix, the subject cannot stop Time Magazine from putting his face on its cover. Thus, the use of someone's name or likeness as part of a newsworthy incident would not be actionable.

False Light is the fourth and final category. Publicity which places a plaintiff in a false light will be actionable if the portrayal is highly offensive.50 This type of invasion of privacy is similar to a defamation action but harm to reputation is not required. An example of false light invasion of privacy could entail a political dirty trick such as placing the name of a prominent Republican on a list of Democratic contributors. Although this person's reputation may not be harmed, he has been shown in a false light.

8. Right of Publicity

The right of publicity is the right to control the use of one's image, name, and likeness51 in a commercial context. To avoid liability, multimedia producers should secure from every person, who appears in a program, a signed release giving the producer the right to use their name, voice, likeness, and identity in all media worldwide in perpetuity. The producer may also want the right to use the image in advertising and on ancillary spin-off products.

A person's identity may be infringed when their nickname or something closely associated with them is portrayed. Johnny Carson once sued a company marketing a toilet under the name "Here's Johnny!" The court held that the company had misappropriated Carson's identity by use of the phrase.52 Vanna White won a suit on the basis of an ad that used a robot that resembled her.53 An actor may have the right to control the use of his or her screen personae, the characters they portray, even if they do not own the copyright to those characters.54

9. Union/Guild Permissions

If the writer is a member of the WGA, the multimedia producer may have to sign a union contract. The WGA, however, allows a production company to become a Guild signatory for one production only with minimal requirements, as discussed below.

Footnotes and citations:
6 17 U.S.C. § 102 (1994).
7 Copyright does not extend to any idea, procedure, process, system, method of operation, principle or discovery, regardless of the form in which it is described, explained, illustrated or embodied. 17 U.S.C. § 102(b) (1994).
8 Takeall v. Pepsico, Inc., 29 U.S.P.Q.2d 1913, 1993 (4th Cir. 1993) (unpublished per curiam decision).
9 Id.
10 Morrissey v. Procter & Gamble Co., 379 F.2d 675 (1st Cir. 1967); Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738 (9th Cir. 1971).
11 Beal v. Paramount Pictures Corp., 20 F.3d 454 (11th Cir. 1994); Engineering Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335 (5th Cir. 1994).
12 An infringement is not confined to literal and exact repetition or reproduction. Universal Pictures Co., Inc., v. Harold Lloyd Corp., 162 F.2d 354, 360 (9th Cir. 1947).
13 See Sid & Marty Krofft Television Productions, Inc. v. McDonald's Corp., 562 F.2d 1157, 1162 (9th Cir. 1977).
14 This example is taken from International Copyright Litigation in United States Courts: Lionel S. Sobel, Jurisdiction, Damages and Choice of Law, in Emerging Issues in Intellectual Property Practice, Continuing Education of the Bar 73 (1994).
15 The Gold Rush, 2IIC 315 (Switzerland S. Ct. 1970).
16 International Film Exch. v. Corinth Films, 621 F. Supp. 631 (S.D.N.Y. 1985).
17 Sobel, supra note 13, at 83 (citing Huston v. Turner Entertainment, Cuss. ass. plen. (1991)).
18 When the law was changed in 1976, those copyright owners with works in the second renewal period were given an additional extension of nineteen years added to the second term, for a total copyright of seventy-five years. Current copyright law grants copyright for the lifetime of the author plus fifty years.
19 Apple Computer, Inc. v. Microsoft Corp., 821 F. Supp. 616 (N.D. Cal. 1993) (citing Landsberg v. Scrabble Crossword Game
20 Note that the NAFTA Implementation Act can revive copyright to movies first fixed or published in a NAFTA country. The law revives only those movies that went into the public domain between 1978 and February 1989 because they lacked a copyright notice as required under prior copyright law. Since movies published without a valid copyright notice during that time were subject to a five year cure provision upon publication, the effect of this law is to lengthen the cure provision to the present. Resurrection of the copyright requires filing with the U.S. Copyright Office. N.A.F.T.A. Implementation Act, Pub. L. No. 103-182 § 104A.
21 Twin Peak Prod. v. Publications Int'l, 996 F.2d 1366 (2d Cir. 1993).
22 See The Lanham Act, 15 U.S.C.A. § 1125 (1994).
23 See, e.g., Lutz v. De Laurentiis, 260 Cal. Rptr. 106 (1989); Metro-Goldwyn-Mayer, Inc. v. Lee, 27 Cal. Rptr. 833 (1963).
24 A trademark owner's rights extend only to injurious, unauthorized commercial uses of the mark by another and does not allow the trademark owner to quash an unauthorized use of the mark by another who is communicating ideas or expressing points of view. L.L. Bean v. Drake Publishers, Inc., 811 F.2d 26 (2d Cir. 1989).
25 Walt Disney Prods. v. Air Pirates, 581 F.2d 751 (9th Cir. 1978), cert. denied, 439 U.S. 1132 (1979).
26 Detective Comics, Inc. v. Bruns, 111 F.2d 432, 433-34 (2d Cir. 1940); DC Comics, Inc. v. Filmation Assocs., 486 F. Supp. 1273, 1277 (S.D.N.Y. 1980).
27 The Lanham Act should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).
28 DC Comics, 486 F. Supp. at 1277.
29 Kimmerle v. New York Evening Journal, Inc., 262 N.Y. 99, 102 (1933).
30 The common law is the law of precedent that arises from cases decided by courts. Another type of law is statutory, or law that has been enacted by a legislative body such as Congress.
31 New York Times Co. v. Sullivan, 376 U.S. 254 (1964).
32 Gertz v. Welch, Inc., 418 U.S. 323 (1974).
33 Philadelphia Newspapers, Inc. v. Hepps, 475 U.S. 767 (1986).
34 McCuddin v. Dickinson, 300 N.W. 308, 309 (Iowa Ct. App. 1941).
35 An absolute privilege to defamation cannot be lost through bad faith or abuse. McCuddin v. Dickinson, 300 N.W. 308, 309 (1941).
36 See Philadephia Newspapers, 475 U.S. at 767.
37 Cohen v. Cowles Publishing Co., 273 P.2d 893, 894 (1954).
38 See Sullivan, 376 U.S. at 279.
39 Gertz, 418 U.S. at 344-45.
40 Sullivan, 376 U.S. at 254.
41 Bindrim v. Mitchell, 155 Cal. Rptr. 29 (1979). See Middlebrooks v. Curtis Publishing Co., 413 F.2d 141 (1969).
42 Garner v. Triangle Publications, Inc., 97 F. Supp. 546, 548 (S.D.N.Y. 1951).
43 Sullivan, 376 U.S. at 279. 44 See Cox Broadcasting Corp. v. Cohn, 420 U.S. 469 (1975).
45 Privacy actions need not fall within one of these four categories to be actionable.
46 See, e.g., Diaz v. Oakland Trib., Inc., 188 Cal. Rptr. 762 (1983).
47 Haynes v. Alfred A. Knopf, Inc., 8 F.3d 1222 (7th Cir. 1993).
48 See Restatement Second of Torts § 652C; Martinez by Martinez v. Democrat-Herald Publishing Co., Inc., 669 P.2d 818, 820 (OR. Ct. App. 1983).
49 See, e.g., Estate of Presley v. Russen, 513 F. Supp. 1339, 1353 (D.N.J. 1981).
50 See, e.g., Sharrif v. Martyn, 613 So.2d 768 (1993); Cox, 420 U.S. at 469.
51 Voice and signature are also protected.
52 Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831 (6th Cir. 1983).
53 White v. Samsung Elec. Am., Inc., 971 F.2d 1395 (9th Cir. 1992), rehearing en banc denied, 989 F.2d 1512 (9th Cir. 1993).
54 See McFarland v. Miller, 14 F.3d 912 (3rd Cir. 1994).