Using Creative and Architectural Works in Film and Media ProductionsOctober 2016 – Art & Advocacy
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 film Star Trek: Into Darkness (2013).
Qualified copyright protection for buildings and architectural works came into play in the depiction of the fictional Second Bank of Gotham in Batman Forever. The 801 Tower in downtown Los Angeles and four towers that form its streetwall on the south side of the building became a backdrop in that film. Andrew Leicester, an artist known for large-scale public art, claimed copyright protection for the towers, along with other artistic works he created in a courtyard space called the Zanja Madre. He registered the whole of Zanja Madre with the Copyright Office as a “sculptural work” and sued Warner Brothers for infringement. At trial, the district court found that the streetwall towers, even though they had artistic elements, were part of the “architectural work” as a whole. As such, the court concluded, pictures taken of the streetwall towers, along with the 801 Tower, were not infringing under the exemption in the Act for pictorial representations of buildings.
On appeal, Leicester argued that the court erred by refusing to consider the Zanja Madre as a unitary sculptural work, and by construing the Act’s exemption so as to eliminate separate protection for sculptural works attached to buildings. But the appeals court affirmed, holding that the definition of “architectural work” in the Act includes “overall form as well as the arrangement and composition of spaces and elements in the design” of a building.7 In particular, the office building “streetwall” towers created by Leicester were deemed part of the overall building plan to extend the property line to the street, as was required by Los Angeles County, where the Towers served to define the street frontage and enhance the pedestrian level of the complex. This case highlights the challenges of using public art in film where a work is so closely integrated with a building’s structure and overall footprint as to be deemed part of the overall architectural work.
Compare the Zanja Madre public art on the left with this scene of the Second Bank of Gotham from Batman Forever.
Architecturally distinctive building designs that are commercialized and have acquired a high level of consumer recognition may also be subject to separate trademark or trade dress protection that may impact their depiction in media works, especially when such images are used to commercially promote a film or for film merchandising purposes. As prominent examples, these images of the Empire State Building and Chrysler Building are U.S. registered trademarks for real estate, leasing and entertainment-related services:
Indeed, the Empire State Building has an active licensing program for using its “trademarked image in films and photo shoots….”8 Similarly, this famous façade design of the Metropolitan Opera House is registered as a service mark by Lincoln Center For The Performing Arts, as is the interior design of the Guggenheim Museum:
Impact of the First Amendment
Because movies and video works receive qualified First Amendment free-speech protection, law was developed to provide important exceptions for use of otherwise protected artistic content in such works. In a seminal case brought by Ginger Rogers involving use of her iconic first name in the title of Federico Fellini’s film Ginger & Fred, the Second Circuit Court of Appeals in New York held that a false designation of origin claim under the Lanham Act is inapplicable to “artistic works” where a defendant’s use of a mark is (1) “artistically relevant” to the work, and (2) not “explicitly misleading” as to the source or content of the work.9 The Court further held: “Where a title with at least some artistic relevance to the work is not explicitly misleading as to the content of the work, it is not false advertising under the Lanham Act.” This has become known as the Rogers test (from the case name).
In 2008, the Ninth Circuit Court of Appeals in California found that the use of a Los Angeles strip club’s trademark and trade dress in the video game “Grand Theft Auto: San Andreas,” which was set amidst a fictional dystopian big city, was protected by the First Amendment and not infringing, where the name of the club was changed from PLAY PEN to PIG PEN, but the logo and trade dress (including a sign saying “Totally Nude”) were modified or unchanged.10 The game designer’s intent was to effect parody in a dark, dense metropolitan city.
The film Hangover Part II spawned a claim for trademark false designation of origin and unfair competition by Louis Vuitton concerning the film’s “airport scene,” with actor Zach Galifianakis’ character carrying a knock-off LV bag made by Diophy that appeared in several clips totaling under 30 seconds (and the character saying: “Careful that is ... a Lewis Vuitton”).11
The court dismissed the false designation claim under the rationale of the Rogers case, finding that the use had artistic relevance and was not commercially motivated: “Louis Vuitton does not allege that Warner Bros. used the Diophy bag in order to mislead consumers into believing that Louis Vuitton produced or endorsed the Film….Where an expressive work is alleged to infringe a trademark, ‘the likelihood of confusion must be particularly compelling.’” The court also emphasized that few people would recognize the featured bag as a knock-off.
Application of Copyright Fair Use and “De Minimis” Use Defenses
Application of the copyright fair use and de minimis defenses in media works has been highlighted in several key cases. In an oft-cited 1997 decision, the Second Circuit held that nine depictions of an original story quilt design in the background of a 30-minute TV episode for a total of 27 seconds was not de minimus copying, especially where longer segments reinforced shorter ones. The Court remanded the case for a further assessment of a copyright fair use defense because there was no “transformative use” of the artwork, which was a creative work intended for decorative purposes and was used in the film for the same purpose.12
On the other hand, the use of 10 copyrighted photographs in the 1995 film Se7en was held to be fair use. The photos were not displayed with sufficient detail for the average lay person to identify even their subject matter, let alone the style used to create them, and use for 35 seconds was deemed de minimis.13
Paramount’s fleeting depiction of a “Silver Slugger” pinball machine in three segments, less than three seconds each, in a 3½-minute scene from the film What Women Want, was held to be de minimis and not actionable copyright infringement. The machine was always in the background, wasn’t mentioned in the film and had no role in the plot. In addition, there were no facts showing likelihood of confusion, which doomed a trademark claim for false endorsement.14
Two decisions some years apart resulted in opposite fair use findings with respect to video footage of the infamous Reginald Denny truck driver beating in Los Angeles. In the first case in 1997, unlicensed use by a TV network of 30 seconds of the beating video clip shot via helicopter was held not to be subject to a fair use defense because it was not transformative, the defendant TV network was in the same business as the plaintiff, and both competed for advertising dollars.15
In the second 2002 case, however, the unlicensed use by Court TV of a few seconds of an edited version of the same video in an introductory montage and “teaser” spots promoting the show’s coverage of the police officer’s trial was found to be a fair use. Footage was obtained from the courtroom video monitor during the trial. The court found that while the use was not clearly “transformative” because the montage was not news per se, the use related to the trial itself, which was a newsworthy event; Court TV was not in direct competition with LA News; the nature of copyrighted work was factual news; the portion used was very small; and there was no “unrestrained piracy” of the work in the market.16
A fair use parody defense was upheld on a motion to dismiss in a highly publicized case, where the depiction in a “South Park” TV episode featuring a viral video parody of “What What (In The Butt)” was alleged to have infringed the copyright in an original video of the same name by a rapper that went viral online, depicting an adult male and backup group singing and dancing in tight pants to irreverent lyrics. The court held this use clearly was a parody of the original “'WWITB” video, “providing commentary on the ridiculousness of the original video and the viral nature of certain YouTube videos.”17
Faulkner Literary Rights, the owner of William Faulkner’s copyrights, unsuccessfully sued Sony Pictures for copyright infringement over Woody Allen’s film Midnight in Paris, for an eight-second scene in a 90-minute film, in which actor Owen Wilson’s character misquotes a line from Faulkner’s book Requiem for a Nun. The court easily dismissed the claim finding fair use, noting that the “substantiality of the similarity is measured by considering the qualitative and quantitative significance of the copied portion in relation to the plaintiff’s work as a whole.” The court also found the film’s use to be “transformative” due to the comedic context of the film and because use of the “minuscule” nine words in issue “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.”18
Artists’ Copyright Infringement Claims
Artists were fairly blasé about enforcing their rights prior to the mid-1990s, sometimes being content with the attendant exposure they would receive from one of their works being depicted in a production. That has since changed dramatically.
A “NeoMechanical Tower (Upper) Chamber” drawing by conceptual architect Lebbeus Woods that was depicted in the 1995 film Twelve Monkeys was used for less than five minutes in a 130-minute film, but was found to have been clearly copied and a de minimus use defense was rejected. The court emphasized: “Whether an infringement is de minimis is determined by the amount taken without authorization from the infringed work, and not by the characteristics of the infringing work… 12 Monkeys copies substantial portions of Woods’ drawing.”19 The case settled, purportedly for six figures.
Lebbeus’ design Actor Bruce Willis in a hanging chair in the film
Sculptor Frederick Hart sued for copyright infringement over a strikingly similar reproduction of his “Ex Nihilo” sculpture that was used in the 1997 film Devil’s Advocate. A settlement was reached after a likelihood of success on the merits in favor of the artist was found at an early injunction stage.20 As part of the settlement, Warner Bros. deleted several scenes from the video version of the film and digitally altered others in order to proceed with a video release date, which the judge had made clear would otherwise be enjoined.
Hart’s original sculpture, which adorns the Washington National Cathedral, and the original film scene.
An amusing high-profile case addressed a copyright claim by a tattoo artist who had created and affixed boxer Mike Tyson’s prominent facial tattoo, which was then replicated on the face of one of the film’s lead characters in The Hangover Part II.21
The court denied the artist a preliminary injunction, but only because of the timing of the film’s release. In its injunction ruling, however, the court held that a strong likelihood of success and irreparable harm favored the artist, finding tattoos protectable under copyright, and rejected a fair use defense because no parody (i.e., no comment on original) or transformative use was shown. A balancing of equities and potential harm to the public favored Warner Bros. The case settled soon after. One interesting side issue that remains the subject of some debate is whether a human body qualifies as a “tangible medium of expression” to support copyrightability (the tattoo artist did not first sketch the design on paper). The judge in the Hangover case referred to this theory as “silly.”
Famous director James Cameron and 20th Century Fox were on the receiving end of a copyright infringement action over the depiction of the fictional planet Pandora in Avatar. Plaintiff is a famous music album cover artist (Yes, Led Zeppelin and others), who alleged that Pandora’s look was substantially similar to 14 of his artistic fantasy landscape paintings depicted in several books. But the claim focused only on concepts and ideas (e.g., “floating or airborne land”) and other natural elements in the public domain. The artist had also distorted certain images to make them look more similar and used irrelevant images from other books about the film. The claim was dismissed.22
Compare image at left from the album cover to Led Zeppelin’s Stairway to Heaven with a still image of the “Hallelujah Mountains” from Avatar, cited in the court papers.
Product Trademark Claims in Film
In George of the Jungle 2, Caterpillar-branded construction vehicles were used in humorous scenes of destruction by a villain. Not finding that funny, Caterpillar sued for infringement, but the court denied injunctive relief because it doubted any likelihood of confusion could be shown (noting that appearance of products in films was commonplace) and that Caterpillar could not show that its good will was diluted merely because its trucks were used by a villain to destroy things.23
Trademark infringement claims were also rejected over the depiction of a “Slip ‘N Slide” water slide toy in Dickie Roberts: Former Child Star. Use of the imagery was limited to a 70-second scene where a lead character played with the slide without properly inflating it and ended up injured. The court found that the product misuse was obvious and comical, and would be so recognized by the public. The mark was used only to identify a product not readily identifiable, and only so much was used as was needed to identify the product, with no use suggesting sponsorship or endorsement.24
Recently, a trademark infringement claim was thrown out in a case concerning another Batman film, The Dark Knight Rises. In the film, a fictional software program called “The Clean Slate” allowed a person to erase any record of their criminal past from all databases on Earth. The court held that use of “Clean Slate” did not infringe the plaintiff’s registered mark CLEAN SLATE, which covered a software tool to return computer hard drives back to their original configuration upon reboot. The court emphasized that a fictional product in a film could not infringe rights in a real tangible product and that the plaintiff “has alleged no facts that would make it plausible that a super-hero movie and desktop management software are goods related in the minds of consumers in the sense that a single producer is likely to put out both goods.”25
These and the other cases discussed in this article demonstrate the difficulty of bringing successful trademark claims against film producers. This results from both First Amendment protections and the inability to prove likelihood of consumer confusion as to the sponsorship or endorsement of works of film by owners of depicted brands.
Use of Art Reproductions
Filmmakers often seek to use actual depictions of works of art that are themselves germane to the central story. But reproduction rights from the copyright owners or the owners of the actual works themselves may not be available due to a refusal to license or exorbitant fee demands. As a result of some of the earlier cases discussed in this article, such as the “Ex Nihilo” sculpture and “Neomechanical Tower” cases, the use of art reproductions in the same style as the originals are now often created by filmmakers where the originals are not available.
One prominent example is Julian Schnabel’s film Basquiat (1996), a biopic of one of Andy Warhol’s protégés, Jean-Michel Basquiat, who died at 27 of a heroin overdose at the height of his artistic productivity. Throughout the film, images of what appear to be Basquiat’s works – actually new works that were created for the film in his same artistic style – are depicted (as in the image below) because the producers could not get reproduction permission from Basquiat’s estate to use the originals. An attorney for the Basquiat estate then verified that each reproduction was acceptable, provided they did not look too similar to the originals but were only in the same “style.” Schnabel also convinced the Picasso estate to grant permission to create a reproduction of Guernica for use in the film, on condition that it be destroyed after completion of the film lest it potentially leak out into the market as a forgery. Several original Warhol paintings depicted in the film came from Schnabel’s own collection, and Schnabel was able to get usage permission for those due to his personal relationship with Warhol’s estate and the Warhol Museum.
In the 2000 film Pollack, the filmmakers were able to obtain cooperation from the Pollock-Krasner Foundation, granting them full access to the Pollack catalogue raisonné to enable the re-creation of Pollack-like paintings through actor Ed Harris’ portrayal of the artist.
Another recent example is Woman in Gold (2015), the story of the fight against the Government of Austria to return several Gustav Klimt masterpieces that had been seized by the Nazis from Maria Altmann’s family and were displayed in the Belvedere Palace and Museum. Prominently featured in the film was Klimt’s masterpiece “Portrait of Adele Bloch-Bauer I,” but the original, which had been recovered, was owned by the Neue Galerie in New York. Because a high-quality reproduction of the original was necessary for the film, the time and expense of negotiating with Neue Galerie was a roadblock. Instead, the filmmakers located an Austrian photographer who had taken high-quality photos of the original painting while it was still in the Austrian museum. As the photographer owned the copyright in his photos, he sold the photos to the producers to use in the film for a modest sum.
http://www.imdb.com/title/tt2404425/ Portrait of Adele Bloch-Bauer I
Sometimes a filmmaker gets lucky, as happened with the The Forger (2014), a film about a father and son team who forge a Claude Monet painting and steal the original. The painting’s copyright had expired and the work was in the public domain. Permission to use photographic reproductions of the original work was granted without cost by the National Gallery of Art.26
Today, most film and television productions that use more than a de minimus depiction of creative works, or seek, for example, to parody them under a fair use exemption, either go through the often laborious task of seeking permission from the owners of the original works or commission new works in the “style” of the original. If underlying copyrights are still valid, however, then permissions or licenses from the copyright owners or their agents, who may be different from the title owners, must also be obtained if any reproduction would end up being substantially similar to the original protected works, bearing in mind that a “style” of painting in itself is an “idea” or “concept” that is not protected by copyright.
1 17 U.S.C. §106.
2 The Uruguay Round Agreements Act implemented the General Agreement on Tariffs and Trade (GATT). Pub. L. No. 103-465, 108 Stat. 4809, eff. Dec. 8, 1994.
3 Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (protecting Mexican-themed décor of fast-food restaurant chain).
4 17 U.S.C. §102(8).
5 37 C.F.R § 202.11.
6 17 U.S.C. § 120(a).
7 Leicester v. Warner Bros., 232 F.3d 1212 (9th Cir. 2000).
9 Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).
10 E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008).
11 Louis Vuitton Mallatier S.A. v. Warner Bros. Ent. Inc., 868 F.Supp.2d 172 (S.D.N.Y. 2012).
12 Ringgold v. Black Entertainment Television, Inc., 126 F.3d 70 (2d Cir. 1997).
13 Sandoval v. New Line Cinema Corp., 147 F.3d 215 (2d Cir. 1998).
14 Gottlieb Development v. Paramount Pictures Corp., 2008 WL 5396360 (S.D.N.Y 12/30/2008).
15 Los Angeles News Service v. KCAL-TV, 108 F.3d 1119 (9th Cir. 1997).
16 Los Angeles News Service v. CBS, 305 F.3d 924 (9th Cir. 2002).
17 Brownmark v. Comedy Partners, 682 F.3d 687 (7th Cir. June 7, 2012).
18 Faulkner Literary Rights, LLC v. Sony Pictures Classics Inc., 953 F.Supp.2d 701 (N.D. Miss. 2013).
19 Woods v. Universal City Studios, Inc., 920 F.Supp. 62 (S.D.N.Y. 1996).
20 Frederick E. Hart v. Warner Bros. (E.D. Va. Filed 1989).
21 Whitmill v. Warner Bros. Entertainment Inc., No. 11-cv-00752 (E.D. Mo. filed 2011).
22 Dean v. James Cameron et al., No. 13 cv 4479 (S.D.N.Y. filed June 27, 2013).
23 Caterpillar Inc. v. Walt Disney Co., 287 F.Supp.2d 913 (C.D. Ill. 2003).
24 Wham-O Inc. v. Paramount Pictures Corp., 286 F.Supp.2d 1254 (N.D. Cal. 2003).
25 Fortres Grand Corporation vs. Warner Bros., 763 F.3d 696 (7th Cir. 2014).