Legal Issues

[Matthew Kaplan]

Hello--

I'm going to be shooting a short film, adn I believe one of the locations will be my bedroom which is full of U2 posters, sports poster, and apple computer.

Is that fair use to use them in the background as long as I don't use them in the story.

for instance, if I used the computer in the scene, dont' I have to cover over the apple logo so you can't tell it's apple.

I never quite figured out the rules, because you can't get rights for everything in sight in your room, that would be too much.

Right now this is for fun, but if I want to show it to people, I want to be able to have made a short film that could be bought.

Any tips?

[Paul Tauger]

I'd like to give you answer but, unfortunately, I'm in the middle of a trial and just can't spare enough time, other than a quick break to peruse the website. Can you ask your question again in a few days?

[Jon Yurek]

If worse comes to worse and you can't use them, there's always After Effects for sticking "new" posters over the existing ones... although it probably won't look nearly as good.

... this is, of course, assuming that you HAVE to shoot in that room (or already did and you can't reshoot). Really, the easiest thing it do would be shoot in some other room.

[Steve Withers]

It's always baffles me why companies try to sue if you give them free advertising...

[Mike Rehmus]

Well they don't always but they do have the right to control the context in which their products are seen.

Wouldn't do for Gerber to see jars of their baby food in a child porno film.

Or a crushed Apple computer in an ad for Dell.

[Matthew Kaplan]

So does anyone actually have advice.

I mean can I use a computer in the shot. I love apple... It actualy has nothing to do with the screen, but it's there. my character woudl have a computer in his room.

He loves basketball and there is a michael jordan poster.

I mean I see movies alll the time with these things... how do they cover themselves?

Such as when they go into a video store or music sotre, there are 1000 of coporited things in there...

I assume I"m not getting sued for any of this...

It is just so confusing, and part of the business I never thought about.

[Paul Tauger]

Okay, I'm done with my trial (I won -- though it was an odd verdict, I'm still undefeated. ;) ), so I have a little time to answer the question.

There are two concerns with using identifiable trademarks in a film. The first is that audiences will believe that the owner of the mark sponsored, endorsed, or is in some way affiliated with, the film maker. This results in a violation of Section 42(a) of the Lanham Act (false designation of origin), and can result in liability for trademark infringement. Clearly, someone who shoots in Times Square in New York and includes a glimpse of the Sony Jumbotron in the background of a shot is not likely to be liable for causing consumer confusion (the touchstone for trademark infringement). Someone who features the Sony Jumbotron as the centerpiece of a shot is taking a bigger risk. At the other end of the spectrum is a film like E.T. -- Reeses Pieces where such a central part of the story, that using them without permission would almost certainly result in liability for trademark infringement.

The second concern is another section of the Lanham Act (Section 42(d)), which addresses trademark dilution. Even if there is no likelihood of consumer confusion, using a "famous mark" in such a way as either tarnish the mark, or dilute it's source-identifying characteristics, will result in liability (if the use was intentional) and could get the "diluter" enjoined. The classic example of tarnishment is the use of the distinctive "Coke" script in a 1970s poster that duplicated the mark, but spelled out "Cocaine." I can't, at the moment and off the top of my head, think of a good example of a dilution case.

Getting back to the original poster's question, the U2 poster is problematic, both because of trademark infringement, the possibility of liability of misappropriation of likeness, and copyright infringement of the poster, itself (do a search on "incidental reproduction" in this newsgroup -- the discussion about using background music played by a DJ or band applies to this instance as well). Merely having an Apple computer in a shot may or may not result in liability, depending on how it appears, and how identifiable it is as an Apple product (Apple has protectable rights in the appearance of their computers, called product configuration trademark or trade dress, as well as the Apple logo and trade name).

Whether there could be an additional problem with dilution depends on what the film is like. As a rule, porno, or something perceived by a conservative judge as porno, will almost certainly constitute tarnishment dilution (there's a famous case brought by the Dallas Cowboy Cheerleaders against the producers of the movie, "Debbie Does Dallas.") As Mike pointed out, using Gerber jars in a child porno film would clearly present a problem. A serious work with undisputed artistic quality, on the other hand, probably would be not run the risk of tarnishment (though may otherwise constitute non-tarnishment dilution).

Of course, without seeing your film, it is impossible for me to say whether or not you're skating too close to the line. The best advice I can give is, if you're going to be entering this into festivals and the like, pay an attorney a couple of hundred bucks to review it (or even offer the attorney a screen credit in exchange for offering production advice). This is a judgment call that shouldn't be made by a non-lawyer.

[Matthew Kaplan]

Thanks for the long response Paul. Very informative.

Still, I'm a bit unsure.

I feel that I've seen tons of short films, independent films that have so many of the things we are talking about and I can't believe they all got everything.

I'm thinking about CLERKS. Did Kevin Smith make sure all the products sold in the store he called and got permissive for? they ahve a famous battle at the end and they destroy al the food.

I assume Miramax picked it up and then took care of all the legal issues.

My point is, I'm sure most starting fillmmakers, espically the ones in short film contests don't get everything checked by a lawyer.

I feel like I can't shot anything, anywhere, because everything in the view is somethign that is copyrighted.

My short film is about a kid and basketball. Can I show him lacing up his nike shoes.. can I show him shooting a spalding ball throught the hoop?

I've seen films that cover up the coke logo with a sticker... does that do the trick?

Is that what you have to do, cover up all logos?

Or, as long as you use the product, the way it was intended, you should be fine.

I'm making a short mini dv project that is a comedy. I do at one point have a talking nerf ball, but I am going to make my own.

Will some nerf ball company sue me for doing that?

To me it seems like most people dont' get sued, as long, as they aren't using a coke can in a porno.

Am I wrong to believe I should stop worrying about it and just do the best I can?

I mean I love U2... I dont' see someone from the band seeing my short film, seeing the posters and thinking, god damn it, he can't use that without my permission..

So to my fellow filmmakers, should I jsut do my best and stop worrying about it?

This is really getting to me. It's tought to worry about story, which camera and casting when I have to worry if I can shoot my main character with a basketball in his hand.

[Richard Alvarez]

Paul is right, talk to a lawyer, or make a judgement on how much "exposure" you feel comfortable with.

An example of blacking out logos can be seen in the "Spiderman" movie. When Peter Parker is shooting pics at the lab, the "Canon" logo on his camera is carefully painted out. (I believe its a canon.) So even the big boys do it.

Richard

[Matthew Kaplan]

I understand that these are the laws... but at the same time, what is the facts of life.

I think it's illegal to cross the street in NYC unless it says walk, but everyone does it, including cops...

It's still against the law technically, but who is going to enforce it.

My goal in life isnt't to break the law and get away with, I simply want to make films.

I will do my best not to show copyrighted material in my short film, but I believe it's impossible no matter how hard you try.

Again I ask this question not to lawyers, but filmmakers who have been there before.

Practice vs Discussion.

My friend works at a magazine and they used copyrighted things in their pictures all the time and they feel that its not worth it to try and get permissiong because the chance of anyone caring are so little.

I can only see a problem is your film became a big hit (which means a studio bought it anyway) or you drag a brand name in the mud.

There must be others who know what I mean and how I feel and going to a lawyer at this point in my career is over the top.

I'm making a short film at my house, I might show it on the internet... I can't fathom the need to pay 200 bucks an hour to talk to a lawyer to tell me the lawas...

I mean isn't it just one person interptration anyway?

My lawyer can say this looks fine, and I could still get sued by the companies lawyers because they feel different. It seems like a Catch 22.

[Mike Rehmus]

The issue is whether you can withstand the financial impact if you are prosecuted. Just because 'they' don't normally prosecute doesn't mean they won't.

I use common sense about where my video is going to be shown. If it is a wedding I never worry. If it is a corporate piece, I know the folks hiring me care. So I care.

Same with a television commercial.

The larger the audience, the more I am concerned. The Internet would concern me enough to consider what is going to be shown and in what manner.

I cannot afford to defend myself from a big lawsuit. Them with the deepest pockets almost always win those.

[Darrell Hinton]

I understand what you are saying Matthew. I am also going to have to deal with this same issue when I begin shooting my short at the end of October. I don't see myself paying a lawyer just for his opinion, because like Mike said, just because they dont usually prosecute doesn't mean that they won't. I am just going to do my best to cover up logos on everything that I possibly can. If a logo can not be covered up I will probably just not use that particular item unless I absolutely must. As for the Nike shoes and Spalding basketball in your situation, I don't really know what to tell you if they are integral pieces of the story. Maybe tear the threaded Nike logo off of the shoes and paint over the Spalding letters with paint that matches the color of the basketball, and just try not to get a close-up shot of it where the Spalding letters are still noticable. Of course, I am no lawyers so I don't know if even that would put you in the clear. Like people have been saying before, you'll just have to judge for yourself depending on what type of audience will be seeing it. If the short will probably only be seen by your friends and family, then you will probably not be running nearly as much of a risk of being sued. Although, if it were me, and I even thought there was a remote possibility that I would be showing it to a wider audience or entering it into a festival, then I would probably just avoid all possibilites of anyone suing by not putting ANY logos in my film. Better safe than sorry.

[Paul Tauger]

I understand that these are the laws... but at the same time, what is the facts of life.

I think it's illegal to cross the street in NYC unless it says walk, but everyone does it, including cops...

It's still against the law technically, but who is going to enforce it.

A good friend of mine got a jaywalking ticket in New York. The ticket cost him $50 or so. Defending an infringement lawsuit will cost 1 to 3 thousand times that.

I will do my best not to show copyrighted material in my short film, but I believe it's impossible no matter how hard you try.

Please read what I wrote. There's a difference between showing something subject to copyright and showing a trademark -- there are a number of circumstances in which you can do the latter, but not the former. There are also circumstances, i.e. fair use, in which you can do both.

I'm making a short film at my house, I might show it on the internet... I can't fathom the need to pay 200 bucks an hour to talk to a lawyer to tell me the lawas...

Are you a student? A member of an art cooperative? Affiliated with any arts organization? If so, I have two words for you: "pro bono." Most lawyers, including myself, will help individuals in such a circumstance for free.

I mean isn't it just one person interptration anyway?

1. No. It's the law.
2. Even if it was, if the person who gives you the opinion is a lawyer, you almost certainly will not be held liable for intentional infringement, which would constitute the greatest liability exposure.

I'm not a filmmaker (except amateur), so I can't tell you the practical ramifications. I will tell you this, though: I'm in the process of finishing my first project that I'm going to try to distribute commerically. It's a video about India, and I want to sell DVDs over the internet. There is no copyright-protected material in it, except my own, and I've gone to considerable lengths to be sure of that. There's one use of a trademark in the video -- it's a shot of a CocavCola sign near the Taj Mahal, but I'm comfortable that this particular shot comes within the trademark equivalent of fair use and, in any event, wouldn't constitute trademark infringement or dilution.

Your question really comes down to the perennial one in these discussions: "Even if I do this, I probably won't get caught, right?" You're right -- a lawyer can't advise you about that, but I'm not sure that your fellow filmmakers can, either. Think about the RIAA -- who would have thought, two years ago, that they'd start suing 10 year old kids?

[Rob Belics]

Paul,

Out of curiosity, is the Coca-Cola sign the shot or the sign in the shot of the Taj Mahal?

[Paul Tauger]

Out of curiosity, is the Coca-Cola sign the shot or the sign in the shot of the Taj Mahal?

The sign is the shot. The Taj Mahal is in a park-like setting, very beautiful and tranquil. Directly outside the gate of the park are dozens of shabby shops, selling to the tourists (which includes tourists from within India, as well as without). There is a cluster of signs over the shops, which include the CocaCola sign (and, if I recall correctly, a Fuji film sign, too). I have a close-up still of the sign cluster, and the CocaCola sign appears in the background in a series of action shots as well.

If I get a chance, when I get back home I'll try to post stills somewhere.