Attorney Gregory S. DeSantis Breaks Down Copyright Law—and Just What Constitutes 'Fair Use'

Special Features   Attorney Gregory S. DeSantis Breaks Down Copyright Law—and Just What Constitutes 'Fair Use'
 
With theatres closed and performances moving online, now is the time to make sure you're in compliance with the law.
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With theaters of all sizes closed, performing artists find themselves at home with an uptick in weekly screen time. Entrepreneurial-minded performers are attempting to benefit from this trend by producing more digital content than before. As a result, a lot of exciting streaming content has emerged during the COVID-19 pandemic from Star Wars-themed ballet classes to at-home musicals. However, anyone using another copyright- or trademark-protected work risks receiving cease and desist letters, monetary fines and potentially imprisonment when incorporating protected content into their online brand.

At the outset, it is important to understand the different types of intellectual property (“IP”). The main areas of intellectual property are Trademark, Copyright, and Patent. A trademark is a word, phrase, or logo (in rare circumstances a smell, color, or shape) that identifies the source of the goods or services. A copyright is a creative work fixed in a tangible medium of expression that does not serve a utilitarian function. A patent confers a right for a set period to exclude others from making, using, or selling an invention. This article will only discuss federal trademark and copyright law.

To protect the IP rights of their clients, counsel must enforce against all scales of infringement to avoid acquiescence. This means even one person who is using content without permission can disrupt the IP owner’s ability to subsequently enforce their rights against others.

To avoid acting without permission, it seems logical to ask the IP owner to grant permission. However, reaching out to the IP owner directly is generally not advisable. If there is a pre-existing relationship with the IP owner (i.e. employer) then it may be advisable to review what provisions, if any, the employment agreement contains about Works-For-Hire and IP created during employment with that entity or created using equipment or materials provided by that entity. Absent specific provisions in your agreement regarding intellectual property, do not assume that you own the IP simply because you invented or created it and there was no provision in your agreement to the contrary. For example, a choreographer who is hired to create a work for Company A and then on a break uses a Company A performer to create work for Company B in the studio of Company A, absent any contractual provisions, there can be an assumption that the work created in Company A using the Company A dancer is a Work-For-Hire owned by Company A.

To use a protected work, without adding something or a modification to create something new, the content creator must first obtain a license from the owner. For music, a single song can have multiple rights holders from the lyrics to the individual performers who perform those lyrics. For music licensing, there are rights aggregators like ASCAP, BMI, SESAC and GMR who collectively have the authority to provide a license for most musical compositions.

READ: Music Clearance Maven Deborah Mannis-Gardner on Navigating Song Rights in an Increasingly Digital World

For use of pre-existing images, you can filter by usage rights on your search engine. It is generally not advisable to rely on the accuracy of the search engine usage rights, but it is a good starting place to determine ownership and availability of image rights. In certain circumstances the use of copyright-protected dance images can amount to copyright infringement of the underlying choreography.

Pre-Existing Artistic Content in the Public Domain and Fair Use Doctrine
Creative works in the public domain can be used without obtaining permission. The owners of these works either exhausted their exclusive rights or intentionally made these works for distribution amongst the public without compensation. Do not assume that works created before a certain date are in the public domain.

Copyright fair use is likely one of the most misunderstood concepts within IP law. A determination of fair use relies on a factor analysis test that considers the commercial nature, educational use, transformative nature, amount and substantiality of the original work, and the effect of the new work in the relevant market. No single factor is determinative, though some factors hold more weight. There is no default rule that 30 seconds or less of protected audiovisual content is a fair use. However, it could be, when you analyze the specific facts using the factors above. For example, in Jersey Boys on Broadway a 7-second clip from The Ed Sullivan Show was determined to be a fair use.

Stating “this is a fair-use” does not make the use fair. Click here for more examples of what constitutes a fair use.

The statement “I am not the copyright owner” is not legally relevant since holding yourself out as the copyright owner is not a factor in a copyright infringement analysis. By making the statement that you do not own the rights, you may be opening yourself up to claims of willful infringement by acknowledging you understood the content was protected and proceeded to publish it anyway.

The concept of a fair use also exists in trademark law. Incidental incorporation of another’s trademark, that is non-commercial, is likely acceptable. However, if the goal of using the trademark of another is to gain notoriety based off the fame of that mark than the unlicensed use is likely not permissible.

In between a pre-existing work and a completely original work there are derivative works that are offshoots of something that existed previously. The rights in a derivative work are only given to the additional protectable elements and not the underlying copyright-protected work.

Protecting Original Content
Protecting original content depends on the type of content. For artistic works that are “fixed” (for instance video or audio recordings or Laban Notation are examples of ideas that are “fixed”), the content creator should consider a federal copyright registration. Though a copyright is automatic when the creative work is fixed, a federal copyright registration is required before commencing a copyright infringement lawsuit.

Regarding works that dancers create and distribute online (dance classes, choreography, fitness classes, vocal mashups), protecting the work depends on whether the work is entirely original or utilizes pre-existing protectable content to create something "new".

If you have a website that allows user-generated content, or you frequently find your copyright-protected work appearing on third-party websites without your permission, then you should familiarize yourself with the Digital Millennium Copyright Act (“DMCA”) takedown procedure. A DMCA takedown applies to user-generated content and creates a procedure for quick removal of protected content without litigation. The other function of a DMCA takedown is to shield the third-party website host from liability so long as they remove the protected content when they receive notice of the infringing content. Therefore, if infringing content is published on your website by a third party and you remove it when it is brought to your attention, you can usually avoid copyright infringement by removing that content when you receive notice that it is protected by copyright.

Registration Symbols
The Ⓡ symbol can only be used to indicate a Trademark registered by the United States Patent and Trademark Office (“USPTO”). The symbol TM can be used by anyone who is attempting to assert trademark rights. There is no requirement to use the © symbol; however, best practice is to use © to alert potential infringers that the content is protected by copyright law and to claim statutory damages.

Thank you to all the artists keeping us in shape with fitness classes and keeping us entertained with digital content.

Legal disclaimer
The information contained in this article is general in nature and should not be considered to be legal advice. In all cases you should consult with an attorney familiar with your particular factual situation for advice concerning specific matters before making any decisions.

Gregory S. DeSantis, an associate with the firm Ladas & Parry LLP, concentrates his practice on both US and International trademark and copyright matters. Prior to the practice of law, he was a professional ballet dancer. Email: gdesantis@ladas.com. Ladas & Parry LLP partners with organizations like Volunteer Lawyers for the Arts of New York to provide pro bono legal services. For more information regarding pro bono legal services for artists and arts organizations please contact VLA directly at vlany.org.

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