PREMIUM LEGAL RESOURCES
ASK A LAWYER
by J. Dianne Brinson and Mark Radcliffe, 1994
This primer is based on the Multimedia Law Handbook which is designed to
provide accurate information on the legal issues in multimedia and is
provided with the understanding that the authors are not engaged in
rendering legal services. If you have a legal problem, you should seek
the advice of experienced counsel.
An understanding of legal issues is essential to success in the
multimedia industry. Mistakes can cost the multimedia developer tens or
even hundred of thousands of dollars in legal fees and damages. Delrina
lost hundreds of thousands of dollars and had to recall all of the
copies of its screen saver last fall when it lost a copyright suit.
Delrina distributed a screen saver in which one of the 30 modules showed
the comic book character Opus shooting down Berkeley Systems' "flying
toasters" (made famous in Berkeley's "After Dark" screen saver program).
Berkeley Systems sued Delrina for copyright and trademark infringement.
The court ruled for Berkeley Systems, prohibiting further distribution of
Delrina's product and requiring Delrina to recall all of the product not
Two leading multimedia developers, Michael Saenz and Joe Sparks have been
in court since the fall of 1993 in a dispute about the ownership of the
copyright in their successful game, Spaceship Warlock. The dispute
focuses on whether Joe was an employee or independent contractor of
Reactor, Inc. (Mike Saenz's company) when they developed the game. If
Joe is right in claiming that he was an independent contractor, he is co-
owner of the copyright and has a right to half of the profits from the
game. These profits could be worth hundreds of thousands of dollars.
This primer will help you understand the legal issues in developing and
distributing multimedia works. It is based on the Multimedia Law
Handbook from Ladera Press, which has been endorsed by the Interactive
Multimedia Association. This summary of the law should not be viewed as
"answering" most questions (the Multimedia Law Handbook discusses these
issues in more detail in 340 pages and includes eighteen sample
agreements to show how these issues are dealt within actual transactions;
you can order the book by calling 800-523-3721). Legal matters in
multimedia are frequently complex and you should not rely on the
information in this primer alone. You should consult with experienced
counsel before making any final decisions. Multimedia products require a
knowledge of the four major forms of intellectual property as well as the
laws governing rights of publicity, defamation and libel.
There are four major intellectual property laws in the United States that
are important for multimedia developers:
* Copyright law, which protects original "works of authorship."
* Patent law, which protects new, useful, and "nonobvious" inventions
* Trademark law, which protects words, names, and symbols used by
manufacturers and businesses to identify their goods and services.
* Trade secret law, which protects valuable information not generally
known that has been kept secret by its owner.
This primer will focus on U.S. copyright law because copyright law is
the most important of these laws for most multimedia developers and
There are two reasons why it is important for you as a multimedia
developer or publisher to be familiar with the basic principles of
* Multimedia works are created by combining "content" - music, text,
graphics, illustrations, photographs, software - that is protected under
copyright law. Developers and publishers must avoid infringing
copyrights owned by others.
* Original multimedia works are protected by copyright. The Copyright
Act's exclusive rights provision gives developers and publishers the
right to control unauthorized exploitation of their works.
Copyright law is a "federal" law and the law does not vary from state to
state (although the interpretation of the law may be different in
This section summarizes the basic principles of copyright law, including
the types of works that are protected by copyright, how copyright
protection is obtained, and the scope of the protection.
Copyright protection is available for "works of authorship." The
Copyright Act states that works of authorship include the following types
of works which are of interest to the multimedia developer:
* Literary works. Novels, nonfiction prose, poetry, newspaper articles
and newspapers, magazine articles and magazines, computer software,
software manuals, training manuals, manuals, catalogs, brochures, ads
(text), and compilations such as business directories.
Musical works. Songs, advertising jingles, and instrumentals.
* Dramatic works. Plays, operas, and skits.
* Pantomimes and choreographic works. Ballets, modern dance, jazz
dance, and mime works.
* Pictorial, graphic, and sculptural works. Photographs, posters, maps,
paintings, drawings, graphic art, display ads, cartoon strips and cartoon
characters, stuffed animals, statues, paintings, and works of fine art.
* Motion pictures and other audiovisual works. Movies, documentaries,
travelogues, training films and videos, television shows, television ads,
and interactive multimedia works.
* Sound recordings. Recordings of music, sounds, or words.
Obtaining Copyright Protection
Copyright protection arises automatically when an "original" work of
authorship is "fixed" in a tangible medium of expression. Registration
with the Copyright Office is optional (but you have to register before
you file an infringement suit, and registering early will make you
eligible to receive attorney's fees and statutory damages in a future
Here's what "original" and "fixed" mean in copyright law:
Originality: A work is original in the copyright sense if it owes its
origin to the author and was not copied from some preexisting work.
Fixation: A work is "fixed" when it is made "sufficiently permanent or
stable to permit it to be perceived, reproduced, or otherwise
communicated for a period of more than transitory duration." Even
copying a computer program into RAM has been found to be of sufficient
duration for it to be "fixed" (although some scholars and lawyers
disagree with this conclusion).
Neither the "originality" requirement nor the "fixation" requirement is
stringent. An author can "fix" words, for example, by writing them down,
typing them on an old-fashioned typewriter, dictating them into a tape
recorder, or entering them into a computer. A work can be original
without being novel or unique.
Example: Betsy's book How to Lose Weight is original in the copyright
sense so long as Betsy did not create her book by copying existing
material - even if it's the millionth book to be written on the subject
of weight loss.
Only minimal creativity is required to meet the originality requirement.
No artistic merit or beauty is required.
A work can incorporate preexisting material and still be original. When
preexisting material is incorporated into a new work, the copyright on
the new work covers only the original material contributed by the author.
Example: Developer's multimedia work incorporates a number of
photographs that weremade by Photographer (who gave Developer permission
to use the photographs in the multimedia work). The multimedia work as a
whole owes its origin to Developer, but the photographs do not. The
copyright on the multimedia work does not cover the photographs, just the
material created by Developer.
Scope of Protection
Copyright protects against "copying" the "expression" in a work as
opposed to the idea of the work. The difference between "idea" and
"expression" is one of the most difficult concepts in copyright law. The
most important point to understand is that the protection of the
"expression" is not limited to exact copying either of the literal words
of a novel or the shape of stuffed bear. Copyright infringement extends
to new works which are "substantially similar".
A copyright owner has five exclusive rights in the copyrighted work:
* Reproduction Right. The reproduction right is the right to copy,
duplicate, transcribe, or imitate the work in fixed form.
* Modification Right. The modification right (also known as the
derivative works right) is the right to modify the work to create a new
work. A new work that is based on a preexisting work is known as a
* Distribution Right. The distribution right is the right to distribute
copies of the work to the public by sale, rental, lease, or lending.
* Public Performance Right. The public performance right is the right
to recite, play, dance, act, or show the work at public place or to
transmit it to the public. In the case of a motion picture or other
audiovisual work, showing the work's images in sequence is considered
"performance." Some types of works, such as sound recordings, do not
have a public performance right.
* Public Display Right. The public display right is the right to show a
copy of the work directly or by means of a film, slide, or television
image at a public place or to transmit it to the public. In the case of
a motion picture or other audiovisual work, showing the work's images out
of sequence is considered "display."
In addition, certain types of works of "visual art" also have "moral
rights" which limit the modification of the work and the use of the
author's name without permission from the original author. Anyone who
violates any of the exclusive rights of a copyright owner is an
Example: Developer scanned Photographer's copyrighted photograph,
altered the image by using digital editing software, and included the
altered version of the photograph in a multimedia work that Developer
sold to consumers. If Developer used Photographer's photograph without
permission, Developer infringed Photographer's copyright by violating the
reproduction right (scanning the photograph), the modification right
(altering the photograph), and the distribution right (selling the
altered photograph in his work).
A copyright owner can recover actual or, in some cases, statutory damages
(which can be as high as $100,000 in some cases) from an infringer. In
addition, courts have the power to issue injunctions (orders) to prevent
or restrain copyright infringement and to order the impoundment and
destruction of infringing copies.
The term of copyright protection depends on three factors: who created
the work, when the work was created, and when it was first distributed
commercially. For copyrightable works created on and after January 1,
1978, the copyright term for those created by individuals is the life of
the author plus 50 years. The copyright term for "works made for hire"
(see below) is 75 years from the date of first "publication"
(distribution of copies to the general public) or 100 years from the date
of creation, whichever expires first.
Generally, the copyright is owned by the person (or persons) who create
the work. However, if the work is created by employee within the scope of
his or her employment, the employer owns the copyright because it is a
"work for hire." The copyright law also includes another form of "work
for hire": it applies only to certain types of works which are specially
commissioned works. These works include audiovisual works, which will
include most multimedia projects. In order to qualify the work as a
"specially commissioned" work for hire, the creator must sign a written
agreement stating that it is a "work for hire" prior to commencing
development of the product (please note that this primer deals only with
United States law; most foreign jurisdictions do not recognize the
"specially commissioned" work for hire, and you need an assignment to
transfer rights in those countries).
Avoiding Copyright Infringement
Current technology makes it fairly easy to combine material created by
others - film and television clips, music, graphics, photographs, and
text - into a multimedia product. The technical ease of copying these
works does not give you the legal right to do so. If you use copyrighted
material owned by others without getting permission you can incur
liability for hundreds of thousands or even millions of dollars in
Most of the third-party material you will want to use in your multimedia
product is protected by copyright. Using copyrighted material without
getting permission - either by obtaining an "assignment" or a "license"-
can have disastrous consequences. The owner of the copyright can
prevent the distribution of your product and obtain damages from you for
infringement, even if you did not intentionally include his or her
material. An assignment is generally understood to transfer all of the
intellectual property rights in a particular work, although an assignment
can be more limited in scope. A license provides the right to use a work
and is generally quite limited. A discussion of the terms of licenses
and assignments is beyond the scope of this primer; it requires several
entire chapters in the Multimedia Law Handbook.
Consider the following example:
Productions, Inc. created an interactive multimedia training work called
You Can Do It.
The script was written by a freelance writer. You Can Do It includes an
excerpt from a recording of Julie Andrews singing Climb Every Mountain.
It ends with a photograph of Lauren Bacall shown above the words, "Good
In this example, if the Productions staff did not obtain permission to
use the recording of Climb Every Mountain or the photo of Lauren Bacall,
You Can Do It infringes three copyrights: the copyright on the song, the
copyright on the Julie Andrews recording of the song, and the copyright
on the photograph. Productions is also infringing Lauren Bacall's right
of publicity (which is separate from copyright) by the commercial use of
her image. Furthermore, if Productions did not acquire ownership of the
script from the freelance writer, Productions does not have clear title
to Do It, and distribution of Do It may infringe the writer's copyright
in the script. Any of the copyright owners whose copyrights are
infringed may be able to get a court order preventing further
distribution of this multimedia product.
There are a number of myths out there concerning the necessity of getting
a license. Here are five. Don't make the mistake of believing them:
* Myth #1: "The work I want to use doesn't have a copyright notice on
it, so it's not copyrighted. I'm free to use it."
Most published works contain a copyright notice. However, for works
published on or after March 1, 1989, the use of copyright notice is
optional. The fact that a work doesn't have a copyright notice doesn't
mean that the work is not protected by copyright.
* Myth #2: "I don't need a license because I'm using only a small
amount of the copyrighted work." It is true that de minimis copying
(copying a small amount) is not copyright infringement.
Unfortunately, it is rarely possible to tell where de minimis copying
ends and copyright infringement begins. There are no "bright line"
Copying a small amount of a copyrighted work is infringement if what is
copied is a qualitatively substantial portion of the copied work. In one
case, a magazine article that used 300 words from a 200,000-word
autobiography written by President Gerald Ford was found to infringe the
copyright on the autobiography. Even though the copied material was only
a small part of the autobiography, the copied portions were among the
most powerful passages in the autobiography. Copying any part of a
copyrighted work is risky. If what you copy is truly a tiny and
nonmemorable part of the work, you may get away with it (the work's owner
may not be able to tell that your work incorporates an excerpt from the
owner's work). However, you run the risk of having to defend your use in
expensive litigation. If you are copying, it is better to get a
permission or a license (unless fair use applies). You cannot escape
liability for infringement by showing how much of the protected work you
did not take.
* Myth #3: "Since I'm planning to give credit to all authors whose
works I copy, I don't need to get licenses." If you give credit to a
work's author, you are not a plagiarist (you are not pretending that you
authored the copied work). However, attribution is not a defense to
* Myth #4: "My multimedia work will be a wonderful showcase for the
copyright owner's work, so I'm sure the owner will not object to my use
of the work."
Don't assume that a copyright owner will be happy to have you use his or
her work. Even if the owner is willing to let you use the work, the
owner will probably want to charge you a license fee. Content owners view
multimedia as a new market for licensing their material.
In 1993, ten freelance writers sued the New York Times and other
publishers over the unauthorized publication of their work through online
computer services. And the Harry Fox Agency and other music publishers
have sued CompuServe, an online computer service, over the distribution
of their music on the service.
* Myth #5: "I don't need a license because I'm going to alter the work
Generally, you cannot escape liability for copyright infringement by
altering or modifying the work you copy. If you copy and modify
protected elements of a copyrighted work, you will be infringing the
copyright owner's modification right as well as the copying right.
When You Don't Need a License
You don't need a license to use a copyrighted work in three
circumstances: (1) if your use is fair use; (2) if the work you use is in
the public domain; or (3) if the material you use is factual or an idea.
You don't need a license to use a copyrighted work if your use is "fair
use." Unfortunately, it is difficult to tell whether a particular use of
a work is fair or unfair. Determinations are made on a case-by-case
basis by considering four factors:
* Factor #1: Purpose and character of use. The courts are most likely
to find fair use where the use is for noncommercial purposes, such as a
* Factor #2: Nature of the copyrighted work. The courts are most
likely to find fair use where the copied work is a factual work rather
than a creative one.
* Factor #3: Amount and substantiality of the portion used. The courts
are most likely to find fair use where what is used is a tiny amount of
the protected work. If what is used is small in amount but substantial
in terms of importance - the heart of the copied work - a finding of fair
use is unlikely.
* Factor #4: Effect on the potential market for or value of the
protected work. The courts are most likely to find fair use where the
new work is not a substitute for the copyrighted work.
If your multimedia work serves traditional "fair use" purposes -
criticism, comment, news reporting, teaching, scholarship, and research -
you have a better chance of falling within the bounds of fair use than
you do if your work is a sold to the public for entertainment purposes
and for commercial gain.
You don't need a license to use a public domain work. Public domain
works - works not protected by copyright - can be used by anyone.
Because these works are not protected by copyright, no one can claim the
exclusive rights of copyright for such works. For example, the plays of
Shakespeare are in the public domain. Works enter the public domain in
several ways: the term of the copyright may have expired, the copyright
owner may have failed to "renew" his copyright under the old Copyright
Act of 1909, or the copyright owner may have failed to properly use
copyright notice (of importance only for works created before March 1,
1989, at which time copyright notice became optional). The rules
regarding what works are in the public domain are too complex for this
primer, and they vary from country to country.
Ideas or Facts
You don't need a license to copy facts from a protected work or to copy
ideas from a protected work. The copyright on a work does not extend to
the work's facts. This is because copyright protection is limited to
original works of authorship, and no one can claim originality or
authorship for facts. You are free to copy facts from a copyrighted
Creating Your Own Works
Naturally, you don't need a copyright license for material which you
However, you should be aware that the rules regarding ownership of
copyright are complex. You should not assume that you own the copyright
if you pay an independent contractor to create the work (or part of it).
In fact, generally the copyright in a work is owned by the individual who
creates the work, except for full-time employees working within the scope
of their employment and copyrights which are assigned in writing.
While copyright law is the most important intellectual property law for
protecting rights in multimedia works, a multimedia developer needs to
know enough about patent, trademark, and trade secret law to avoid
infringing intellectual property rights owned by others and to be able to
take advantage of the protection these laws provide.
Patent law protects inventions and processes ("utility" patents) and
ornamental designs ("design" patents). Inventions and processes
protected by utility patents can be electrical, mechanical, or chemical
in nature. Examples of works protected by utility patents are a
microwave oven, genetically engineered bacteria for cleaning up oil
spills, a computerized method of running cash management accounts, and a
method for curing rubber. Examples of works protected by design patents
are a design for the sole of running shoes, a design for sterling silver
tableware, and a design for a water fountain.
Obtaining Patent Protection
There are strict requirements for the grant of utility patents and design
patents. To qualify for a utility patent, an invention must be new,
useful, and "nonobvious." To meet the novelty requirement, the invention
must not have been known or used by others in this country before the
applicant invented it, and it also must not have been patented or
described in a printed publication in the U.S. or a foreign country
before the applicant invented it. The policy behind the novelty
requirement is that a patent is issued in exchange for the inventor's
disclosure to the public of the details of his invention. If the
inventor's work is not novel, the inventor is not adding to the public
knowledge, so the inventor should not be granted a patent.
To meet the nonobvious requirement, the invention must be sufficiently
different from existing technology and knowledge so that, at the time the
invention was made, the invention as a whole would not have been obvious
to a person having ordinary skill in that field. The policy behind this
requirement is that patents should only be granted for real advances, not
for mere technical tinkering or modifications of existing inventions.
It is difficult to obtain a utility patent. Even if the invention or
process meets the requirements of novelty, utility, and nonobviousness, a
patent will not be granted if the invention was patented or described in
a printed publication in the U.S. or a foreign country more than one year
before the application date, or if the invention was in public use or on
sale in the U.S. for more than one year before the application date.
Scope of Protection
A patent owner has the right to exclude others from making, using, or
selling the patented invention or design in the United States during the
term of the patent. Anyone who makes, uses, or sells a patented
invention or design within the United States during the term of the
patent without permission from the patent owner is an infringer - even if
he or she did not copy the patented invention or design or even know
Example: Developer's staff members, working on their own, developed a
software program for manipulating images in Developer's multimedia works.
Although Developer's staff didn't know it, Inventor has a patent on that
method of image manipulation. Developer's use of the software program
infringes Inventor's patent.
Utility patents are granted for a period of 17 years. Design patents are
granted for a period of 14 years. Once the patent on an invention or
design has expired, anyone is free to make, use, or sell the invention or
Trademarks and service marks are words, names, symbols, or devices used
by manufacturers of goods and providers of services to identify their
goods and services, and to distinguish their goods and services from
goods manufactured and sold by others.
Example: The trademark Wordperfect is used by the Wordperfect
Corporation to identify that company's word processing software and
distinguish that software from other vendors' word processing software.
For trademarks used in commerce, federal trademark protection is
available under the federal trademark statute, the Lanham Act. Many
states have trademark registration statutes that resemble the Lanham Act,
and all states protect unregistered trademarks under the common law
(nonstatutory law) of trademarks.
Availability of Protection
Trademark protection is available for words, names, symbols, or devices
that are capable of distinguishing the owner's goods or services from the
goods or services of others. A trademark that merely describes a class
of goods rather than distinguishing the trademark owner's goods from
goods provided by others is not protectible.
Example: The word "corn flakes" is not protectible as a trademark for
cereal because that term describes a type of cereal that is sold by a
number of cereal manufacturers rather than distinguishing one cereal
A trademark that so resembles a trademark already in use in the U.S. as
to be likely to cause confusion or mistake is not protectible. In
addition, trademarks that are "descriptive" of the functions, quality or
character of the goods or services have special requirements before they
will be protected.
The most effective trademark protection is obtained by filing a trademark
registration application in the Patent and Trademark Office. Federal law
also protects unregistered trademarks, but such protection is limited to
the geographic area in which the mark is actually being used. State
trademark protection under common law is obtained simply by adopting a
trademark and using it in connection with goods or services. This
protection is limited to the geographic area in which the trademark is
actually being used. State statutory protection is obtained by filing an
application with the state trademark office.
Scope of Protection
Trademark law in general, whether federal or state, protects a trademark
owner's commercial identity (goodwill, reputation, and investment in
advertising) by giving the trademark owner the exclusive right to use the
trademark on the type of goods or services for which the owner is using
the trademark. Any person who uses a trademark in connection with goods
or services in a way that is likely to cause confusion is an infringer.
Trademark owners can obtain injunctions against the confusing use of
their trademarks by others, and they can collect damages for
Example: Small Multimedia Co. is selling a line of interactive training
works under the trademark Personal Tutor. If Giant Multimedia Co. starts
selling interactive training works under the trademark Personal Tutor,
purchasers may think that Giant's works come from the same source as
Small Multimedia's works. Giant is infringing Small's trademark.
Trade Secret Law
A trade secret is information of any sort that is valuable to its owner,
not generally known, and that has been kept secret by the owner. Trade
secrets are protected only under state law. The Uniform Trade Secrets
Act, in effect in a number of states, defines trade secrets as
"information, including a formula, pattern, compilation, program, device,
method, technique, or process that derives independent economic value
from not being generally known and not being readily ascertainable and is
subject to reasonable efforts to maintain secrecy."
The following types of technical and business information are examples of
material that can be protected by trade secret law: customer lists;
instructional methods; manufacturing processes; and methods of developing
software. Inventions and processes that are not patentable can be
protected under trade secret law. Patent applicants generally rely on
trade secret law to protect their inventions while the patent
applications are pending.
Six factors are generally used to determine whether information is a
* The extent to which the information is known outside the claimant's
* The extent to which the information is known by the claimant's
* The extent of measures taken by the claimant to guard the secrecy of
* The value of the information to the claimant and the claimant's
* The amount of effort or money expended by the claimant in developing
* The ease with which the information could be acquired by others.
Information has value if it gives rise to actual or potential commercial
advantage for the owner of the information. Although a trade secret need
not be unique in the patent law sense, information that is generally
known is not protected under trade secrets law.
Trade secret protection attaches automatically when information of value
to the owner is kept secret by the owner.
Scope of Protection
A trade secret owner has the right to keep others from misappropriating
and using the trade secret. Sometimes the misappropriation is a result
of industrial espionage. Many trade secret cases involve people who have
taken their former employers' trade secrets for use in new businesses or
for new employers. Trade secret owners have recourse only against
misappropriation. Discovery of protected information through independent
research or reverse engineering (taking a product apart to see how it
works) is not misappropriation.
Trade secret protection endures so long as the requirements for
protection - generally, value to the owner and secrecy - continue to be
met. The protection is lost if the owner fails to take reasonable steps
to keep the information secret.
Example: After Sam discovered a new method for manipulating images in
multimedia works, he demonstrated his new method to a number of other
developers at a multimedia conference. Sam lost his trade secret
protection for the image manipulation method because he failed to keep
his method secret.
RIGHTS OF PUBLICITY , LIBEL AND OTHER LAWS
In addition to the intellectual property laws discussed above, you must
also be familiar with the several other areas of law that deal with the
right of the individual to control his image and reputation. The right
of publicity gives the individual the right to control his name, face,
image or voice for commercial purposes. For example, Ford's advertising
agency tried to persuade Bette Midler to sing during a Ford television
commercial. She refused. They hired her backup singer.
The performance of the backup singer was so similar to Bette Midler that
viewers thought Bette Midler was singing. On the basis of that
confusion, she sued and won $400,000 in damages.
Libel and slander protect an individual against the dissemination of
falsehoods about that individual. To be actionable, the falsehood must
injure his or her reputation or subject them to hatred, contempt or
ridicule. The individual can obtain monetary losses as well as damages
for mental anguish.
If you intend to use pre-existing material from television or film, you
may also have to deal with the rights of entertainment unions to "re-
use" fees. These unions include the Writers Guild, the Directors Guild,
the Screen Actors Guild, American Federation of Musicians and the
American Federation of Television and Radio Artists. Under the union
agreements with the film and television studios, members of these unions
and guilds who worked on a film or television program have a right to
payment if the work is re-used. Although you as the multimedia developer
are not signatory to these agreements and may not be directly liable for
these payments, the license from the film and television studio generally
makes you responsible for them. These payments are generally modest.
However, if you are using many clips these payments can become quite
If you use professional actors, directors or writers in developing your
product, you will also need to deal with these unions. Most of the
unions have very complex contracts developed specifically for their
traditional film and television work. They are still trying to understand
how to deal with the multimedia industry, although both SAG and AFTRA
have developed a special contract for multimedia projects. You should be
aware that if you use professional talent, you should be prepared for
the additional complexity arising out of these union agreements.
HYPOTHETICAL MULTIMEDIA WORK.
This section will apply these legal rules to the creation and
distribution of a new multimedia work based on a retrospective of the
Academy Awards. The work is being created by a new company, Hollywood
Productions. Its intended market is individuals and film students. It
will be distributed on a CD ROM and laser disk. The work will consist of
the following elements:
Videoclips from the Academy Award ceremonies.
Magazine articles about the winning movies.
Excepts from various books about the awards and the film industry,
including Final Cut, Reel Power, and History of American Film.
Software to permit access to the material in numerous ways.
Film clips of news programs and excerpts from winning motion pictures.
New video works created by Hollywood Productions to explain basic film
industry concepts. Music, including some of the hit songs from the
winning motion pictures.
A. TEXT WORKS AND COMPUTER SOFTWARE.
The magazine articles, the excerpts from the pre-existing books and the
computer software may be treated differently from a legal point of view.
Hollywood Productions is creating the new text and the computer software.
As the creator, it will probably own the copyright in those elements,
either through the work-for-hire doctrine or assignments.
On the other hand, Hollywood Productions must go to the owners of the
copyrights, or licensees of the copyrights, in the magazine articles (or
perhaps the authors of the articles) and books to obtain the rights to
use these materials in its work.
Copyrights in photographs are initially owned by the photographer,
although they may either be assigned to another party or transferred to
the photographer's employer under the work-for-hire doctrine. The
determination of who owns the appropriate rights in the photograph can be
very difficult and time consuming because of fragmentation in this
industry. For example, the fact that a photograph appeared in the Forbes
does not necessarily mean that the Forbes owns the copyright in the
photograph. Forbes may only have a license to use it once in its
magazine. Common limitations in the licensing of photographs include the
color of reproduction, the medium (i.e. newspapers, magazines, etc.), and
attribution as well as those relating to numbers of copies.
The rights required for an interactive multimedia work would be quite
different from those which are normally granted to use photographs. For
example, the photograph may appear several times throughout the work and
the number of its appearances could be controlled by the viewer.
Such flexibility is quite different from the rights traditionally granted
in the photography industry.
C. FILM CLIPS AND VIDEOS.
Once again, Hollywood Productions must distinguish between video which it
has created (for which, if the legal issues were properly structured, it
will own the copyrights) and those for which it needs to obtain rights.
The "authors" of a videotape may include the actors, directors,
scriptwriters, music composers and the cameramen. To avoid the problems
of joint ownership of copyright, Hollywood Productions should obtain the
appropriate agreements from the individuals who are creating its
videotapes. The use of the videoclips from the ceremony may require
multiple clearances including clearing the music used in the videoclip,
obtaining the license from the copyright owner, paying reuse fees to the
entertainment unions such as SAG and Directors Guild, and clearing the
rights of publicity of the participants. In addition, if Hollywood
Productions uses the "scripted" performances, it will have to pay reuse
fees to the writers if they are members of the Writers Guild.
D. NEWS PROGRAMS AND OTHER STOCK FILM.
Stock footage is available from "stock houses" in many cities. Materials
available from stock houses range from historical footage of various
locations to commercials. Other institutions, such as television
stations, may also license their newscasts. These institutions generally
base their royalty on the type of use of the film. For example,
different royalties are due for use on national television or regional
television. Since the multimedia work would not fit easily into any of
these categories, Hollywood Productions would probably have to negotiate
a special license with these institutions.
E. FEATURE FILMS.
The use of feature films can be particularly complex and expensive.
Feature films are frequently based on a novel whose use is licensed to
the studio. The film may also use music developed by a third party.
Consequently, the owner of the copyright in the film may not have the
necessary rights to the music or the underlying novel to permit their use
in the multimedia work. This situation is further complicated by
provisions of the various motion picture industry guild agreements (such
as the Screen Actors Guild and the Directors Guild of America) which
require payment of fees upon incorporation of parts or portions of the
film into another work.
Hollywood Productions may also have to obtain rights of publicity
releases from the individual actors depending on their contract with the
To use music in the new work, Hollywood Productions may require obtaining
rights from several different parties. The rights necessary depend on
whether or not Hollywood Production records the music itself or wishes to
use the performance of a third party. Since the music will frequently be
sound tracks from a particular motion picture, Hollywood Productions will
need to clear the rights to particular performances of the music. Rights
in music are quite complicated. The rights which Hollywood Productions
must consider obtaining are described below: .
1. Mechanical rights. Mechanical rights are the basic right to use a
They do not include the right to publicly perform the music (see below).
A mechanical license also does not permit the use of the music with still
or moving images. Such use requires a "synchronization" license (see
below). Although copyright law provides a compulsory license for
mechanical rights, most licensees prefer to obtain these rights
commercially through the Harry Fox Agency or other similar agencies.
This preference is based on the very onerous payment and accounting
requirements imposed on the "compulsory" license in the Copyright Act.
2. Synchronization license. If the music is to be synchronized with
still or moving images on a screen, the licensee must obtain a
"synchronization" license. Although these rights may also be handled by
the Harry Fox Agency, in some cases Hollywood Productions may need to
contact the musical publisher directly.
3. Public performance rights. Hollywood Productions will probably also
need a license for public performance because its multimedia work will be
shown to students and other audiences. Such a showing would be
considered a public performance. A performance is considered public if
it is "open to the public" or at any place where a substantial number of
persons outside of the "normal circle of family and social acquaintances"
gather. Most music publishers permit either ASCAP or BMI to license
their public performance rights. These rights do not apply to a
particular performance by a particular individual or group to use the
particular recording of a performance of the musical composition. Thus,
obtaining a mechanical license to "Yesterday" would not permit Hollywood
Productions to use the Beatle's performance of the song.
4. Right to a particular performance or recording. As described above,
if Hollywood Productions desires the musical composition to be performed
by a particular group or individual, it must also obtain the right of the
copyright holder in that particular performance. The licenses described
above are limited solely to the right to use the musical composition.
Thus, unless Hollywood Productions is prepared to have new artists record
the music, it must negotiate with the holder of the rights to the
particular performance which it desires to use. These rights are
generally held by record companies.
An understanding of legal issues is critical to success in the
multimedia industry. These issues are complex because of the youth of
the industry and the many industries upon which it draws to create its
products. The Multimedia Law Handbook, which has been endorsed by the
Interactive Multimedia Association, provides a guide to these issues.
Copyright 1994 J. Dianne Brinson and Mark Radcliffe
J. Dianne Brinson has a law degree from Yale Law School and is now in
private practice as a consultant in Menlo Park, California. She may be
reached at [email protected]
Mark F. Radcliffe, a Harvard Law School grad, is a partner in the law
firm of Gray Cary Ware & Freidenrich in Palo Alto. He can be reached at
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