Well, this is often very attractive to the client, as it helps them climb the showbiz food chain.  In fact, many folks in the entertainment industry view credit as more important than compensation, in the short run.  By taking a ‘higher’ credit, they’re establishing precedent, so their next job can be at the same, improved credit and they can earn a more appropriate fee.

But accepting a producing credit is not without its perils.  In preparing to teach my Theater Law course, I was reminded of a case in which a party who bargained for “producer credit” and got much more than he bargained for… a lawsuit.

In Redgrave v Stuart Thomson Productions (NY, 1999, unpublished) ,  Actor Corin Redgrave was  injured when exiting the stage in the dark.  He sued the producers and the  ‘General Manager’ of the  of the show for damages.

(The General Manager is the producer’s front-line operative in the production of the show.  Responsible for the day-to-day administration  of the production, the GM will, in consultation with the Producer(s),  of course,  supervise  the preparation of a budget for the show, along with the activities of the accountants, press agent, Company Manager, box-office,  advertising, marketing, promotions, contract negotiations, staffing and personnel matters, and any other business matters that may arise.)

You see, Thomson had, in addition to his fees for General Management services, received a co-producer credit for the play as well.     So, in ruling on Thomson’s Motion for Summary Judgment, the Court refused to dismiss the case because there was  an issue of fact as to whether  Thomson’s credit made him a partner in the production, and therefore liable for Redrgrave’s injuries.

So, in evaluating an offer that includes a producer credit in lieu of some or all of the compensation a party would otherwise seek, it’s important to consider not just the career benefit, but also the risk involved with being credited as a producer.

This summer, ANMT has undertaken  an ambitious  schedule of programming.  If you’re a theatre lover, or a creator of theatrical material, this means that great opportunities abound.

• 38 Days of New Musicals at the NoHo Arts Center this summer features 38 days of productions, workshops, concerts, and conferences all celebrating new musicals! July 16 through August 22.     The summer starts off with:
  • “40 is the New 15″ – our full scale production of the hit show we presented as a workshop last Summer., Opening July 16th, at 8:00 pm., and
  • “Aging Out” – a brand new musical workshop production Opens Wed. July 21
• Musical Theatre Summer Bootcamp Crash courses for writers, actors, and producers.  Runs July 11 through Aug. 22.
• Biz of the Musical Theatre Biz Conference features producers, directors, artistic directors, writers, agents, union reps, marketers, all talking about getting musicals produced.  Runs July 23-25
• Biz of the Musical Theatre Biz Conference for Actors August 6-8

I hope you’ll attend some (or get a Golden Ticket to  all) of these programs, and, please let me know what you think!

In this Episode:

• Follow up on Hot News
• Viacom loses suit against YouTube.
• Hurt Locker Suit(s)
• Idea Theft
• Tribute Band Names
• Celebrity Rights of publicity

GET CLE CREDIT for this episode.

Go to  Entertainment Law Update podcast page

ANMT BOOTCAMP

First, this August, I’ll be teaching a 2-night workshop  entitled “HOW DOES A MUSICAL GET FINANCED?” as part of theAcademy for New Musical Theatre’s Musical Theatre Boot Camp. The course is offered over two evenings, August 10th and 17th, from 7-10pm at the  Academy’s facilities in North Hollywood.  I’ll share some nitty-gritty about the ways theatre producers raise the money they need to mount successful productions, and the legal paperwork required to make these financing structures a reality.

On August 13th, I’m also appearing on an “ask the entertainment attorneys” panel  at ANMT.  My colleagues and I will try to answer all of your questions about copyrights, collaborations, production agreements and anything else you throw at us.  I hope you can join us for an informative evening session.

ANMT is a wonderful organization that is dedicated to the development and promotion of new musical theatre projects.  I’m so committed to this nonprofit organization that I volunteer as a member (and current president) of its Board of Directors.  If you’d like more information about ANMT, I hope you’ll drop me a line.

If you’re looking for some good Theatre this summer, you owe it to yourself  to check out ANMT’s “38 Days of Musicals” .  Featuring something for everyone.  Last Summer’s workshop production of “40 is the new 15″ is being produced as a full-scale production, and we’re workshopping a new project called “Aging Out”, that asks “What happens to foster-care kids when they turn 18 and age out of the System?”

Theater Law class for attorneys seeking an LLM degree.

Then, starting this Fall, I’ll be teaching a course on Theater Law at Southwestern Law School’s Biederman Institute on Entertainment Law, in its new online LLM degree program.  The course covers all of the various aspects of practicing in the world of theater, which differs dramatically (pun intended) from working in film, television or other media.    If you’re an attorney interested in practicing entertainment law, you owe it to yourself to investigate this new online LLM.

Now, at first blush, this might seem a simple  issue, but it’s actually rather complex.  The parameters established by  copyright law itself, are inconsistent with the custom and practice in the theater industry,  which is also inconsistent with some of the typical contracts found in theater production projects.

Here’s what I mean.

Directors routinely include in their contracts a clause providing that the Director will own the “direction” of the show, and shall have the right to copyright it in his/her own name. This is true, certainly, in Directors who are members of the SDC, the union representing stage directors and choreographers, which means, that producers have agreed to this provision in the course of collective bargaining.

The trouble is, under copyright law, a copyrightable work created by an employee in the course and scope of his employment (as with a director hired to stage a production), belongs to the employer, rather than the employee.  This is one part  of the often-misunderstood “work made for hire” definition contained in the U.S. Copyright Act. (the other doesn’t apply to theatrical productions, so I’ll save that discussion for another post).

What complicates things even more, is that in theater, and under Copyright law, the playwright, composer and lyricist own the show, and in almost all cases, the contract for the production of a play or musical provides that any changes or additions to the show must be approved by those authors, and if so approved, become a part of the show, and therefore the authors’ property.  Since the production contract is  often signed before a director has been hired, isn’t the producer, simply by hiring a director under the terms of contract allowing the director to own the “direction” of the show, a breach of the production agreement between producer and authors?

Since the direction of a play is, necessarily based on the play itself, it is a “derivative work”, and therefore requires permission from the copyright holders  (i.e., the authors).   Moreover, the only way the direction of a show can even be eligible for copyright protection is if it is “fixed” in some tangible medium, and that fixation, too would require the authors’ permission.

Now, this whole issue hasn’t been litigated very much, and the few cases dealing with this issue have arisen out of “copycat” directors of subsequent productions.  In those cases, the rights to stage the show had been obtained from the authors, but under a license that didn’t make reference to the staging and direction of the performances.   In at least two cases (both involving the musical  Urinetown (which I wrote about here and here ), the producers of  the original production sued later productions that were too similar to the originals.

So,   I’m taking an informal poll.  Who  really should own the direction of the play or musical?  Should the director be entitled to a royalty if his/her staging is re-created by later licensees of the show?  Should the show’s authors benefit from the efforts of other creative team members in this way?  Should play publishers begin licensing the direction along with the book, music and lyrics?

Please let me know your views on this by commenting.  I’ll publish a summary of the results in a few weeks.

In this Episode:

• Ethics and the non-practicing attorney… a long tail
• Zorro draws its sword against M&M candies
• “Free Scooter!” cries Justin Bieber.
• Dramatic vs. Non-Dramatic rights in musical works
• Ride-along producer : Ride-along defendant?
• Bryant v. Media Right, Orchard
• Arista v. Lime Group
• Hot News Misappropriation

GET CLE CREDIT for this episode.

Quick Takes:

Ethics/Professional Responsibility, a long tail? Caveats for non-practicing lawyers.

Randy Quaid, Lloyd Braun and the lingering duties to former clients
Conflicts of Interest in the Entertainment Law Context

Just for Kicks: Legal Specialty areas you’d never have thought of….

Tattoo Law: When Your Tattoo Turns Out Not-so-’Beatiful’

The Law of Tattoos

Tattooed Brands Global Survey 2009

Law and Magic Blog

Zorro vs. M&M masked character

Zorro sues over masked M&Ms character

M&M Trademark Infringement with Zorro

Zorro Productions, Inc. v. Mars, Inc. (ND Ca., filed March 22, 2010).

Crime Time: Should Justin Bieber’s manager really be prosecuted for a mall riot?–The Hollywood Reporter | Esq. | Entertainment and Media Law

Jersey Boys, LP v. Gehling, Cause No:1:2010cv03060 (SDNY), filed April 9, 2010.

Corbello v. DeVito, 1:2007cv00985, (ED Tex. [Beaumont] filed Dec. 28, 2007 venue moved to
Corbello v. DeVito, 2:08-cv-00867-RCJ-PA, (Nev.).

Lexology – Federal court: media defendants may be liable in Chicago ride-along case

Media Ride-Alongs Lead to Civil Rights Suits

Did an appeals court just give the music industry a big break?

Record Album Only Supports One Statutory Damages Award — Offer of Judgment in Copyright Cases

RIAA wins big in LimeWire lawsuit | Media Maverick – CNET News

http://thresq.hollywoodreporter.com/2010/05/limewire-decision.html

Appeals Court Puts Hold On Hot News Ruling Until Full Appeal Is Done

Internet Financial News Aggregator Enjoined under New York Hot News Misappropriation Law : New Media and Technology Law Blog

Breaking News: Dow Jones Files “Hot News” Case Against Briefing.com | Citizen Media Law Project

Lexology – Social networking sites that collect “hot news” are in the hot seat

The Trademark Blog: Get Your Hot News Compaint Here

Lexology – Hot-news misappropriation

Tyler Ochoa on the Legacy of the Statute of Anne

Q: I work in educational theater. Every year we revisit the same topic: Filming performances. I keep telling the director and others that it is simply not legal to record a performance. The response I always hear is that they never sell the film. They are only making an “archival copy” which is given to the cast. I know it’s illegal. I know it’s specifically banned in the contract that the director signs. I’ve heard rumors of schools getting busted with huge fines, because clips showed up on You Tube. But I have no proof. What are the potential penalties? Are people schools really getting sued? Help me convince these people that they should stop.

A: It’s irrelevant whether they sell the film.  They’re making and distributing copies of a derivative work of the play.  That’s copyright infringement.  It doesn’t matter if money changes hands.  It’s NOT “archival” (which isn’t permitted anyway, under most licenses from play publishers).

The penalties for violations of these rules can exceed $150,000 per infringment, and each copy of the offending product can be considered an infringement.  So, with a cast of 10, each receiving a copy, you’re talking about as much as $1.5 Million dollars. (that’s enough to put most school districts in a serious bind).

Schools and nonprofit organizations are sued ALL THE TIME over this kind of thing.  They usually settle, so there’s little media coverage… but it is happening. It’s not just because videos wind up on the web….The major play publishers have ‘spies’ everywhere, and they’re reporting violations all the time.

Bottom line:  It’s illegal,  it’s a breach of the license agreement, and can be very costly.  Also, once a play publisher catches you, they will put you on their blacklist, and never authorize another production again.

This is intended as general information only and does not establish an attorney-client relationship. It is not a substitute for a private, independent consultation with an attorney selected to advise you after a full investigation of the facts and law relevant to your matter. We will not be responsible for readers’ detrimental reliance upon the information appearing in this feature.


Thinking of Producing it yourself? subscribe to my FREE e-course “6 ways to Finance A Feature Film” by visiting http://firemark.com/minicourse

The bill is viewed by some  as a way to sabotage the American creative dream machine by slipping in a little poison” and “the death knell of American leadership in the world.”

Specifically, three provisions are of significant concern to those who rely on so-called “angel” capital.  These provisions would:

1. increase the financial thresholds for qualification as “accredited investors,” who are, generally speaking, wealthy investors whose investments are not subject to significant federal securities regulation;
2. allow the Securities and Exchange Commission (“SEC”) to make certain angel financing transactions subject to state regulation (previously, all so-called “Rule 506 offerings,” which were commonly used for angel financings, were preempted from state regulation); and
3. require that those “Rule 506 offerings” that remain preempted from state regulation nonetheless be subject to a 120 day review process with the federal SEC.

Word on Capitol Hill is that the  bill will undergo significant changes, but now is the time to contact your Senators and Representatives to voice your opposition to the above provisions.

Currently, an investor qualifies as “accredited if he or she has a net worth of $1 Million or more, or has an annual income over $200,000 ($300,000 for married couples).  Under Rule 506, sales of securities to such investors are largely unregulated.  This new bill would change that dramatically, increasing these limits, thus making it harder than ever to find qualified investors for high-risk investments like films, theatre projects or start-up ventures.

Source:  Proposed financial regulatory reform bill will adjust accredited investor thresholds (WTN News).

Hat tip to my colleague Peter Levitan for bringing this to my attention.

Star Wars: the Court of Appeal strikes back – International Law Office

Stormtrooper Replicas: Final Strike By British Court of Appeal

Stormtroopers In The Courtroom — earlier post by Tamera:

http://ipandentertainmentlaw.wordpress.com/2008/04/08/storm-troopers-in-the-courtroom/

• LucasFilms won a $20 million judgement in a U.S. court in 2006 against British prop designer, Andrew Ainsworth, for copyright and trademark infringement of the Star Wars’ “Storm Trooper” design.
• Andrew Ainsworth, sculpted the Stormtrooper helmet for the first “Star Wars” movie in 1977. Ainsworth now sells replicas of the helmets and armor “casted from the original molds.”
• In 2008, the case moved to the UK, where LucasFilms sought to enforce the $20 million dollar judgment. Ainsworth countersued, claiming he owns the copyright and is entitled to a portion of the $24 Billion in “Star Wars” merchandising revenue.
• In January 2010, a UK court of appeal dismissed LucasFilms’ appeal on all points. The UK court found the helmets did not qualify as sculptures under British Copyright law.
• Is attempting to enforce a U.S. judgement in the UK forum shopping?

• Different outcome in US?

“Bob’s Big Boy” Statue gives rise to a suit against former franchisee

Big Boy Restaurants International, LLC v. Schoenbaum; filed Feb 25, 2010

FILM

• What is protectable?
  • themes? (Dances With Wolves, Pocahontas)
  • plot? (Terra Incognita)
    • Fox has given us this statement on the lawsuit: “James Cameron wrote the story for ‘Avatar’ two years before Mr. Malak claims he wrote his work, and therefore ‘Avatar’ cannot be based on ‘Terra Incognita.’ We are confident that the lawsuit will be decided in our favor.”
  • legends?
  • specific images? (Timespirits)
  • bits and pieces of ideas in other films?
• Probably a no go on all of these – idea/expression dichotomy, originality requirement, etc.

Also, issues of common origin, idea v. expression, etc.

Scenes a faire: In copyright law, a principle in whicih certain elements of a creative work are held to be not protected when they are mandated by or customary to the genre. Where there;s a limited range of expression possible, those limited forms will not be protected.

Idea/Expression dichotomy: Ideas and concepts are not protected by copyright law.

At root, isn’t this: “Man assimilates with foreign culture, falls in love, and joins with his new “family” to fight against his native culture in an epic battle of good vs. evil”

What about Hurt Locker Lawsuit?
Sarver v. The Hurt Locker, LLC, complaint filed 3/2/2010 in New Jersey District Court – Complaint

http://www.examiner.com/x-18039-Capital-District-Movies-Examiner~y2010m3d9-Avatar-and-The-Hurt-Locker-both-attract-ripoff-lawsuits

Speaking of common origin, ideas, etc:
Denizen, LLC v. Mindshare Entertainment, LLC.

Kareem Abdul-Jabbar sues producer for botching documentary–The Hollywood Reporter | Esq. | Entertainment and Media Law
Union/OSG LLC v. William P Zagger et al
Removed from the Superior Court of CA, Los Angeles County, to US District Court, Central District of California on March 1, 2010. http://www.courthousenews.com/2010/02/01/24239.htm

• Kareem Abdul-Jabbar is suing the film production company he hired to create a 90-minute film based on his book “On the Shoulders of Giants: My Journey Through the Harlem Renaissance” in time to be considered for Sundance Film Festival for $1 million.
  • When an untimely rough cut was handed over, “the producers also allegedly had failed to obtain legal clearances for use of the materials” such as music clips and photographs.
  • Because the film wasn’t finished, it can’t be distributed or shown at the NBA Hall of Fame or All-Star events.

• John Paul Jones, Led Zeppelin bassist, formed a new band, but had a hard time coming up with a name, eventually settling on Them Crooked Vultures.
  • “Think of a great band name and Google it, and you’ll find a French-Canadian jam band with a MySpace page.”
  • Establishing an identity for a band works differently in the digital age:
    • Almost no time required to create a profile online and upload music
    • Downloads may create jurisdiction
    • More comprehensive name searches can be done online
    • Using common words requires coexistence?

Triumph v. Sony

First Amendment and the Press

• California’s First District Court of Appeals reversed the lower court, holding “that the First Amendment gives publications wide latitude to publish feature spreads next to advertisements that may be distasteful to those being profiled.”
  • 186 indie musicians were spotlighted with a Camel cigarettes ad spread, so they sued for “unauthorized use of artist names for commercial advantage.”
  • The District Court concluded that the indie promotion was “inextricably entwined” with the Camel ad, which would put a lot of content in danger of being categorized as commercial speech warranting less First Amendment protection.
  • Rolling Stone was not “engaged in the production, distribution or sale of cigarettes,” but simply the medium that is used by commercial speakers to distribute commercial messages. The easily discernible beginning and end of the ad and the lack of clear and convincing evidence presented to prove actual malice and an injury were other reasons for a clear reversal.

Suit over use of “Route 66″ to name porn project

Roxbury Entertainment, Inc. v. Penthouse Media Group, Inc, et. al December 18, 2009 Judgment

AMEC/ACC Newsstand powered by Lexology – Roxbury Entm’t v. Penthouse Media Group Inc.

• The Central District of California held that if a mark underlies an artistic work, “the First Amendment is a complete defense to Lanham Act claims.” Summary Judgment was granted for Penthouse.

• Facts: Roxbury, owner of the mark ROUTE 66 for the 1960′s TV show, and other entertainment media, sued Penthouse for trademark dilution after they started selling DVDs of pornography as “Route 66.”
  • Penthouse claimed this title was protected by the First Amendment as free speech.

• Court relies heavily on Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).
• Holding: The court used the Rogers balancing test and concluded that Penthouse’s use of “Route 66″ was protected by the First Amendment.
  • The first prong of the Rogers test requires more than zero artistic relevance which Penthouse showed because part of the film’s setting was a roadside motel. This tenuous connection was enough.
  • The second prong of the Rogers test requires the court to evaluate whether consumers would be misled about the source or content of the work. The court found that consumers would not be misled to think that Penthouse’s use of “Route 66″ was affiliated with with the 1960′s TV series.

This decision continues the line of entertainment cases that have developed in the last twenty years making clear that creators of artistic works should be relatively unrestricted in choosing titles for their works. So long as the creator can show some artistic relevance of the mark to his/her work, and so long as nothing about the use is explicitly misleading, the First Amendment will provide a defense to what might otherwise be an infringing trademark use.

Q: What are the mechanics of a copyright infringement law suit? How does it all work? As an example, let us say a non-U.S. based writer believes his work has been infringed by a person or entity in the U.S. Could a non-U.S. lawyer file suit? Where would the case be heard and what would be the approximate time line? What effect could the suit have on a company set to produce the disputed work?

A: OK, this question is actually much more complex than it might seem. It raises issues covered by several different fields of law. Copyright, Constitutional, Civil Procedure, and International Law, to mention a few. So, here’s a very abbreviated summary.

First off, a work protected under another country’s copyright law will (in almost all cases) be protected by U.S. copyright law as well. The U.S. is signatory to the Berne Convention, an international copyright law treaty, and has agreed to extend protection to works created by foreign authors.

Generally, an aggreived party (Plaintiff) can file suit for copyright infringement against a U.S. based infringer (Defendant) in the Federal Court district in which the Defendant resides, or where the Defendant has certain ‘minimum contacts’. (Copyright is federal law, so the federal courts have jurisdiction).

A non-us lawyer MAY be permitted to appear in U.S. Court, but this may depend on the local rules of court. (Federal court cases can be very tricky, though, so it’s probably best to have a U.S. lawyer handle things, with the non-us lawyer sitting in the second chair.)

Filing a lawsuit involves preparation of a document called the “complaint” which details the particulars about the parties, and the facts giving rise to the claim(s). The complaint is then SERVED on the defendant by a process server, whereupon the defendant has a period of time (usually 20-30 days) in which to respond by filing an ‘answer’ admitting or denying the facts alleged in the complaint. Once these ‘pleadings’ are on file, the Court will hear various motions, permit the parties to engage in ‘discovery’ of one-another’s evidence, and ultimately set the matter for a trial. Typically cases take 1-3 years to make their way from initial filing to the trial, and verdict. If any issues are presented to the appeals courts, things may take several more years.

Generally, the mere pendency of a lawsuit will not legally prevent a producer from moving forward with a film, but the financial risks may lead the producer to drop the project or place it ‘on the shelf’ pending resolution in the Courts. If appropriate, a plaintiff CAN ask the court to issue an injunction restraining the producer from proceeding, but such injunctions are rarely granted.

If you feel your work has been infringed, it’s important to act swiftly to protect your rights. Some cases may be subject to a very short window of time in which you must file your claim, so contact a lawyer immediately when you learn of a possible infringement.

This is intended as general information only and does not establish an attorney-client relationship. It is not a substitute for a private, independent consultation with an attorney selected to advise you after a full investigation of the facts and law relevant to your matter. We will not be responsible for readers’ detrimental reliance upon the information appearing in this feature.


Thinking of Producing it yourself? subscribe to my FREE e-course “6 ways to Finance A Feature Film” by visiting http://firemark.com/minicourse