Will I get caught?
 

(Disclaimer - I am married to an Intellectual Property Attorney)

Gang,

Every so often, the question of trademark and copyright infringement comes up on the boad. Usually someone wants to know if something is 'legal', or 'what are the chances I'll get caught?'

Lots of pseudo legal advice gets tossed around, untill our resident legal visitor, Paul Tauger weighs in a settles some point with pithy legal commentary.

I thought I'd take a moment to post a few links, that outline some of the issues often discussed. So here they are.

http://www.patentfla.com/articles/trademark_parody.htm
http://www.chillingeffects.org/trade...?NoticeID=1670
http://www.therightscompany.com/infcases.htm

But more importantly, I'd like to address the notion that "I've never heard of anyone getting sued for this" which comes up as a defense, or an inducement to go ahead with the planned infringement.

The reason for a lack of ready history for indy films getting sued for trademark and/or copyright violations can be explained two ways.

1) Untill recently, making a 'small film' took boatloads of time, money and resources. If you were going to go through all of that effort, you damn well made certain that you didn't risk getting sued, or having your film quashed. So the problem, to a large extent, was self-regulated. Exceptions might be the porn industry, where people either thought 'no one would admit to seeing it' or they believed it was protected by 'parody'. See the case of "Debbie Does Dallas". But, when the film is widely succesfull, as the DDD porn flick was, then the money and defamation became a prime target for the suit. So it's easy to find cases where the film was successfull, and the artist/company sued for damages. ("The Devils Advocate")

2) In the last few years, with the advent of DV and the internet, the ability to create short films of a high 'technical' quality has expanded exponentially. The internet offers the chance for a short, two or three minute film, to be seen by litterally millions of people around the world for very little money. This means that the chance of copyright infringement has increased recently. So where are the law suits?

Most people think of 'getting sued' as being taken into court. And indeed, that is what happens. But before the suit is 'filed', there is almost always a cease and desist letter written. This letter will often go out to the ISP as well as the Filmmaker. Usually the letter will make a case for why the film is infringing, and demand that the film be removed immediately. Failure to do so will result in filing the case, etc. Sometimes, the letter will also outline damages the plaintiff feels it has ALREADY incurred, and demand restitution in addition to the cessation of the action. Failure to pay damages will result in the filing of the suit, etc.

Usually, the film is removed. Case closed. And YOU NEVER HEAR ABOUT IT. Doesn't mean it doesn't happen. Doesn't mean the filmmaker didn't wind up spending money to answer the letter, or remove the film, or pay the damages. YOU JUST DIDN'T HEAR ABOUT IT.

Why not? Why wouldn't a company want people to know it spanked somebody's butt? Quite simply put, it's often not cost effective. Sometimes it's better not to give people ideas. Sometimes it's just low priority legal maintenance... there are numerous reasons. But sometimes they do make a big deal, either for the benefit or the detriment of the company. (See the cases about kids getting sued for downloading music, or the day care center being sued by Disney for putting it's characters on the wall). There's always a cost-benefit analysis over what sort of blowback will come of the suit.

Also. The notion that you didn't hear about it, so it must not be happening is as ridiculous as the notion that because you read about it, it MUST be true. There is a website that posts all the LEGAL URBAN LEGENDS that abound. Some are completely false - Like the one about the guy who put his Winnebago on cruise controll, went back to make a cup of coffee and sued the company when he crashed. Pundits and Television stations have sometimes cited this as a 'ridiculouls lawsuit'. Trouble is, it never happened.

I know for a FACT that companies surf the net, writing cease and desist letters to websites who infringe. It's part of my wifes daily chores. Could be missapropriating a logo. Could be making a proprietary claim... lots of reasons. The letters DO get sent. The ISP DOES comply. IT happens. Trust me. Additionally, anyone who has entered a fair sized film festival will usually find a line in the form where they have to state that they OWN all the rights, or hold the Festival harmless. DVD replication houses will ask you for PROOF of your ownership in the material, before they replicate a disk. So this is a real legal aspect, that can hold up your distribution or screenings.

All of this to say, that whenever you are contemplating skirting a legal boundary, it's best to avoid the situation or ask an attorney. There are legal organizations that help starving artists like "Accountants and Lawyers for the Arts" or local filmmaking organizations that often assist with connecting artists and lawyers. Some firms will allow their attorneys to do pro-bono cases... especially for non-profit organizations. Look around, it doesn't have to cost a lot. (So no, I'm not soliciting work for my wife... she's plenty busy thank you.)

Thus endeth the diatribe.

Some very good points in your post. I'd like to add a couple more:

Lawyers send cease-and-desist letters, not as a courtesy, but because continued infringement after notice is deemed "intentional," resulting in substantially higher liability. Note, too, that cease-and-desist letters will NEVER say, "Stop infringing or we'll sue your a$$." A threat to sue, or even identifying conduct as infringing, is usually enough to grant subject matter jurisdiction for a declaratory relief action, i.e. the recipient of such a letter can go to court _as_a_plaintiff_ and sue the sender, seeking that the judge issue a judgment declaring the plaintiff not to be infringing. Accordingly, cease-and-desist letters will always be phrased along the lines of, "Should you fail to comply with the demands herein, [CLIENT NAME] may avail itself of such rights and remedies provided pursuant to applicable state and federal law, and said rights and remedies are expressly reserved herein." Note the strategic use of the word, "may." Should anyone ever be on the receiving end of such a letter, don't assume that, just because it doesn't say, "Stop or we'll sue your a$$" doesn't mean that you're not about to get sued.

Next, cases in the United States,_if_of_sufficient_legal_interest_, are published in "official reporters." Most federal district court cases (where copyright infringement is tried, exclusively) are _not_ reported. If the case is appealed after trial it _may_ be published, but also may not. Appeals are expensive and, where infringement is clear, often not taken. As a result, no one will hear about the vast majority of copyright infringement actions that are brought. Remember, too, that 90% or better of infringement actions settle before judgment, resulting in dismissal of the case. Dismissed cases aren't reported. I've often said that I'm unaware of any wedding or small-event videographers who have been sued for copyright infringement. However, that doesn't mean it hasn't happened -- I really have no way of knowing, since the case law that I have access to is that which is contained in the official reporters (or otherwise reported on the legal databases).

And, as Richard has noted, many people, when they receive a cease-and-desist letter, simply comply -- they contact the attorney who sent it and say, "what do I do to resolve this?" Frequently, the answer includes paying money -- at minimum, attorneys fees, but sometimes substantially more. It's quite common to require an accounting from an accused infringer, and to use that as the basis for a damages demand.

Settlements, whether pre- or post-litigation, are almost always confidential. It's to both sides' advantage. The rights owner doesn't want to broadcast what it settled for, so it doesn't become it's standard "infringement fee." The infringer doesn't want other potential plaintiffs to know that it will pay big bucks to avoid an infringement action.

With so many variables, the only way you can say, for certain, if someone has been sued for something is if, for some reason, it gets picked up by the press. Unless you're OJ Simpson, it's not very likely that this will happen.

The last thing I'd like to add to this discussion is this:

My clients sue infringers when there is a sound business reason to do so. They do NOT regard infringment law suits as profit centers (I tell them not to do this). This is the calculus that they employ: if the value of the intellectual property right to be protected exceeds the cost of litigation, then it is worth it to sue. Accordingly, they will sue to protect their copyright or trademark, sue to send a message to other potential or actual infringers, or even sue to send a message to their competitors. Do not, for one minute, think that because you are, essentially, judgement proof, i.e. "Hey, what could they get from me?", that you won't get sued. The last big action I took to final judgment was against a relatively small-time infringer, at least in comparison with my client. We spent hundreds of thousands of dollars to obtain a 3.5 million dollar verdict against him (he was pretty blatant, and we got intentional infringement damages, as well as attorneys fees), knowing from day one that he would never be able to pay it. It was, however, in my client's _business_ interests to do so.

I can't make a recommendation one way or the other with respect to whether anyone here might get caught. However, I agree fully with Richard -- don't assume you won't get tagged just because you haven't heard of it happening to anyone else.

Made sticky, until I figure a way to tattoo it into people's eyelids, or until I add it to the FAQ.

Richard, since you are around the bay, I have a question.

If I produce a DV movie using exteriors in San Francico, I believe I would be able to shoot video of The Golden Gate Bridge, without permission but I would need to have a location release to shoot the TransAmerican-Pyramid Blg.

Do you have any thoughts on that?

My thoughts... and these are MY thoughts, not a legal opinon.

You can't shoot ON the Transamerica pyramid property without a permit, obviously they own the property.

You can't 'erase it 'from the skyline, and I wouldn't worry about it being seen in passing.

But if your main character is an evil assasin who plans to BLOW UP the TransAmerica building, or maybe WORKS in the TransAmerica building, I think you are on shaky grounds. Generally speaking, if you think the owners would object to how you are portraying it... then they probably will.

Thanks Richard,

I will only need San Francisco shots for background so my feature might look like it is a "bigger, more expensive" picture. (than it really is. lol)

BTW-"After Twilight" looks pretty cool.

I am working on a Film Noir, sorta flick, which in a very general way is similar to "Lady in the Lake", "Sin City" , and "D.O.A" . (remember I said in general)

Interesting thing about "After Twilight" - My creative partner , the Director, found it listed on a site in Europe for downloading... obviously unauthorized. Weird... we're trying to track down the owner of the site now.

A a point of interest, if the property in question is never actually shown, could a character discuss blowing it up, or whatever, without needing to get a release?

OR, could someone construct a model of a building, or place, and make a film using that model without getting permission? I guess this comes down to, does the owner of a physical property own the IDEA of the place, as well?

Best wishes,
Peter
______________________
http://www.parkfilms.com

I have some possible issues with products in a short film were just finishing.

We have various shots of the main character driving a Toyota and some other products in the background of a convenience store in one scene.

We have already contacted Toyota and they just wanted a synopsis and some screen-grabs to insure we’re not representing their product in a distasteful way. They seem to be very easy to work with and have suggested that this should not be a problem.

I think our real issue will be the numerous products we see in the store scene. Does anyone have any accounts of similar situations with background products? I know there is an enormous amount of conjecture in regards to these issues, so if people can just respond with direct experience that would be greatly appreciated.

On one production the art director turned the packets around so that we didn't strongly feature the product names in the tighter shots. He also used smaller, less known brands rather than the big brand names in the areas where the actors were performing.

I usually turn the products so the labels aren't readily visible, or 'greek' out the label, by taping over it.

Thanks for the responses, but seeing that I didn't cover my bases do you have any opinions about me asking permission from the clearly visible products? Or should I just roll the dice..?

Are festivals and potential sales going balk without the proper clearance?

As you said, it's a roll of the dice. NO one can say for sure you will or won't have problems. Obviously, the less conspicuous a logo or trademark or such is, the less you have to worry about it. If the stuff isn't prominent or featured, you might consider just going with it.

It will only be a problem when a distributor wants to buy your film and then asks - "OK let me have all of your releases"....
So option 1 would be - get releases that stipulate no monies will be paid now or in the future if said film is sold to a third party.....
Option 2 - reshoot those segments that might have offending products that you cannot get released.

If you wait until a distributor asks for your releases they may opt out or
not cut you a good deal....

Some independent films made for no budgets might later cost hundreds of thousands to get the proper clearances and releases.

Thanks to all for the advice.

We are actively pursuing releases from all the companies in question. The ones that don’t come through I guess we’ll just have to keep our fingers crossed…

I thought that I would follow up with our process of obtaining release forms for some of the products that found their way into one of our scenes.

Our main character has a problem with Mountain Dew and incessantly chugs the stuff, so that was a big one for us to cross off the list.

We have just received word Pepsi co. and have to laugh in regards to the criteria that our character had to meet. –

“As long as the character is not overweight or under 15, then we're should be fine”.

Just need to fax the release and they said they’ll sign it…

I had a chance to pose this question to an intellectual property attorney last week. The answer is that one cannot model a building exactly after a real structure because the architect may have a copyright on the design. This is especially an issue if the building is easily recognizable, like the TransAmerica in San Francisco.

Best wishes,
Peter
______________________
http://www.parkfilms.com

First, I am an intellectual property attorney. I don't like to comment on what other attorneys may say. However, the one you spoke to is wrong:

17 U.S.C. § 120
Scope of exclusive rights in architectural works

(a) Pictorial representations permitted. 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.

Fascinating. Thanks.

Best wishes,
Peter
______________________
http://www.parkfilms.com

Paul,

First thank you for all your help, I would like to expand this question to artwork on a building.

What if the building owner has allowed or commissioned an artist to paint a mural on that building and it is in plain view from a public space. Could you film a scene where someone is walking along the sidewalk and include that building and artwork?

We used some of these buildings in a film, I could get releases, as I know the artists but what if I did not or could not get hold of one of them?

Thank you,
Bill

Bill, as you know, I'm really not in a position to give specific legal advice, except in the context of my firm's retained clients. Don't rely on what I say here, as it is just for general discussion.

With that said, I'm not aware of a specific mural case. However, I wouldn't define a mural as an "architectural work" within the context of the statute (nor would I define sculptures that are placed in public courtyards that way, either). I usually approach questions like this by postulating an extreme case. Take, for example, an advertising mural painted on the side of a building. The mural contains trademarks as well as copyright-protected expression. A tight shot of the mural would, I would think, be infringing, notwithstanding the fact that it's painted on a building. There is certainly nothing to distinguish a work of "pure art" from a work of "commercial art," at least in this context.

I would, therefore, be extremely careful about including such works in shots of buildings. It would certainly be prudent to get a release.

Incidently, I can think of at least some contexts in which an architectural could constitute a protectable trademark. Note that there is no analog to the copyright statutory exemption for architectural works in trademark law.

This is a shoot-from-the-hip answer, but I suspect it is the correct one.

Re: Will I get caught?
 

While I am neither a lawyer nor any kind of expert in this field , this thread reminds me of a discussion over on DPR regarding still photography , which shares many legalities with moving images .

An example which cropped up was the Eiffel Tower in Paris . While the tower itself is part of the Paris skyline , and probably the most iconic feature of the city , there is also a light show which is visible after dark .

The tower itself is considered so well known , and an integral part of the city skyline , that there are apparently no restrictions on photographing it , indeed it is probably the most popular backdrop for visitors to have their photo taken in front of .

The architectural lightshow visible at night , however , apparently is copyright and administered by a private company . While they don't mind tourists taking pictures of it for non commercial use , they will and do pursue professional photographers who feature it in commercial works . The crucial word is 'feature' as it is apparently ok for it to be part of the skyline in the background of a shot , but not for it to be prominent - where one draws the line I don't know .

I'd also venture that it is nigh on impossible to shoot anything without commercial products appearing in the background ! In a street shot would you really seek clearance from the maker of every vehicle passing by in the background , or the local bus company because one of their buses passed by in the background ? Personally , I wouldn't bother if it was incidental and part of real life , something seen every day by the populous at large .

Re the supermarket shots , surely the answer is just to use narrow depth of field and throw products on the shelves in the background out of focus ?

Re: Will I get caught?
 

This question comes from the UK.

I was given the opportunity to video a band performance, they wanted first refusal on the footage. In the end they didn't want it. The band are fairly well known, but they don't own the publishing rights to the songs in the video. I wanted to release the video mainly to the fans, to cover the publishing rights I can purchase a Limited Manufacture license from the PRS (UK collecting service for music industry) this would allow me to make a designated amount of copies. I also offered the band a financial return on any DVDs sold.

Firstly I informed the band of my intention their first reply was they wouldn't endorse it but I didn't expect them to but they couldn't stop me, I then recieved an email from a media company saying they represented two members of the band and asking to "please" not proceed with this project.

If I could sell all the copies would realize in the region of £1000

Do you think I will be infringing their copyright.

I was intially there to do some video work for the support act, but the main act became interested but nothing formal was agreed. The support act subsequently folded and I've ended up with nothing from my evenings work and all the editing.

Thinking this may be another hard lesson of life!