Steve Gordon is an entertainment attorney specializing in music, television, film and video, and the author of The Future of the Music Business (Hal Leonard 4th ed. 2015). For brevity we’ve only included Part II of this article, which focuses on the legal issues video creators should be aware of when creating video content. To read Part I which includes a brief history of music videos, see the bottom of this page.
A Legal Guide To Shooting Videos
This is the eighth installment of my 11-part series on basic music industry agreements, focusing on the business of producing music videos. This article contains a form agreement that can be used to hire a video producer, as well as releases for people and locations appearing in videos.
Part II. Legal & Business Issues.
1. Cover Videos
It is legally necessary to get a license from the owner of the song before making a cover video. However, YouTube has developed a system Content ID that deals with this issue. The system recognizes the identity of the cover song and then notifies the publisher. The publisher can then choose to order YouTube to take down the video, or let the video continue to play and “monetize” it. If they choose the latter, YouTube splits the advertising revenue with the publisher.
It is important to note that if the publisher chooses the second option, the artist performing the cover will not receive any of the fees generated by advertising. This, however, is to be weighed against the possibility of worldwide recognition discussed above.
Vine and Instagram do not employ Content ID. But the music publishers have not, so far, cracked down on covers on these social networks. An argument could be made that the snippets played in these services are “de minimis,” i.e., too trivial to amount to copyright infringement. It can also be argued that these brief videos are “fair use.” The argument would be that, under the doctrine of fair use, a person can use a brief excerpt of a copyrighted work if the new work is “transformative” of the original.
2. Work For Hire Production Contract
I was the Director of Business Affairs for TV & Video at Sony Music from 1991 to 2001. We produced over 250 videos each year that I worked there, and every video that Sony commissioned was a “work for hire.” Under the copyright law, a work for hire is defined as follows:
(1) a work prepared by an employee within the scope of his or her employment; or
(2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.
In the case of works made for hire, “the employer or other person for whom the work was prepared is considered the author …[and] owns all of the rights comprised in the copyright.”
Recently I worked with a small book publishing company that wished to produce a series of music videos to promote the new edition on one of its religious text books. The videos will feature songs by 12 different Christian rock acts. The agreement that we used to commission the videos was basically the same as Sony’s work for hire agreement. I recommend to my artist clients the same business format for the production of their music videos. Re-published below is sample work for hire contract for producing a music video.
If you are either a new artist or a small label, and you wish to create a music video, in addition to using a work for hire agreement, you should also make sure that you will not have legal problems associated later on with any person or location depicted in your video. Although you should always have every side artist, model, dancer or actor in your video sign a release, some judgment is required when determining whether to secure a location release.
Personal Releases: If a label is commissioning a video, the artist’s appearance in the video will generally be covered by the recording agreement between the artist and the label, which usually includes a provision specifically addressing music videos and giving the label the right to use the video for any promotional or commercial purpose.
If an indie artist is appearing in a video, obviously she will not need a release for her own performance. But whether the commissioning party is a label or an artist, they will want to have any other person appearing or performing in the video sign a personal release giving the label or the artist, as the case may be, the right to use the video, including that person’s appearance and/or performance in all media.
Usually, the production company will handle this responsibility. An example of a personal release is included below. Personal releases do not vary very much, although some contain more legalese than others. The basic point of any personal release, however, is that the person signing the release grants the artist or label all rights to use their appearance and/or performance in the video.
Note that the person signing such a release may have recorded their audio performance as a background vocalist or musician. A separate contract usually covers that audio recording, but the release contained below would cover that audio performance as well. Also note that the release usually does not include financial remuneration, but if a musician, dancer or actor contributed a performance in the underlying audio track, there may be a separate agreement in which that person is compensated.
A cautionary tale about failing to secure proper releases: The producer of a video for an artist at a major record label used a picture of an old girlfriend from her Facebook profile in a spilt second of a still titled “Missing Persons” in a video featuring the artist singing about a romantic break-up. The ex-girlfriend noticed and was not pleased. She retained a lawyer who was able to negotiate a significant settlement.
Crowds and Audiences: If you are shooting in a public place, releases should be given to anyone wandering into the scene if they are recognizable. If they don’t want to sign the release, you should avoid using that footage. If you are shooting in front of a live audience you can use a sign at the entrance to the performance area informing the audience that, by entering, they consent to appearing in the video. The sign should be large enough and displayed in a place prominent enough that anyone entering will notice. However, if a person from the audience is featured, or especially if they appear on stage, they should sign a personal release.
Location Release: The location release at the end of this article is for a venue that agrees to let you shoot your video at their location without a fee. It is particularly useful if there is a sign or logo that people would recognize. The release will make it clear that no consideration was expected for the use of the location.
Of course, sometimes a location, such as a restaurant or bar, will require a fee. In that case, the amount to be paid can be inserted in the release.
Public Places: Generally, if public venues and landmarks such as the Empire State Building appear in the video, you do not need a release if the location is incidental to the action in the video. But if, for instance, you are shooting in front of a well-known place such as Nathan’s hotdog restaurant in Coney Island, and their name appears prominently in the video, it would be wise to have the manager sign a location release.
The use of a trademark in a music video is generally protected by the First Amendment, but not always.
Likelihood of Confusion Test: The limited purpose of trademark protection set forth in the Lanham Trademark Act (15 U.S.C. § 1051 et. seq.) is to avoid confusion in the marketplace by allowing a trademark owner to prevent others from duping consumers into buying a product or using a service they mistakenly believe is sponsored by the trademark owner. Trademark law aims to protect trademark owners from a false perception that they are associated with or endorse a product or service.
Generally, to assess whether a defendant has infringed upon a plaintiff’s trademark, the courts apply a “likelihood of confusion” test that asks whether use of the plaintiff’s trademark by the defendant is likely to cause confusion or mistake, or to deceive as to the affiliation, connection, or association of plaintiff’s brand with defendant’s product or service.
Applying these principals to music videos, the bottom line is that if a trademark is used in such a way that it is not likely to confuse a viewer into thinking that the brand sponsored the video, the producer has a First Amendment right to use the mark. The classic example is a rapper wearing a baseball cap or t-shirt. Just because the singer may be wearing a Yankees cap or Baltimore Orioles t-shirt doesn’t mean that a reasonable person would think that the Yankees or Orioles sponsored or produced the video.
On the other hand, where a trademark is prominently featured, it may be reasonable to think that a brand is sponsoring the video. For instance, a number of brands are featured in the video for “Telephone” featuring Beyoncé and Lady Gaga. But in that case, the brands were actually sponsoring the video by paying for product placement. In fact, these days, many indie artists use brands to help pay for or at least defray the costs of their videos. But if you have not received approval or received a sponsorship from a brand, it is important not to lead your viewers to believe that you have by drawing too much attention to the brand in your video.
Product Disparagement: Also called product defamation, trade libel, or slander of goods, product disparagement is any statement about a brand that is false and likely to adversely affect its profits. Product disparagement includes negative statements about a product or service, false comparisons of competing consumer products or services, and statements harming the reputation of an artist.
Applying these principals to a music video, it is important to note that showing a brand’s name or logo in a negative context could prompt a demand that the video be changed or not shown at all. Consider this real world example: a record label made a video in the early 90s, when MTV was still playing videos, of a toy train running off the track and smashing into small models of people made of clay. During the video, close-ups of the artist as the conductor of the wayward train would appear. The video was lighthearted, and no one would think that the artist/conductor was actually running over real people. However, the name of the well-known U.S. railroad appeared on the toy train, and they were less than amused. In fact, they sent a letter to MTV demanding that they stop playing the video.
The label agreed to take the name off the toy train by blurring it, but the railroad still insisted that the video be banned because the color of the toy train — a particular shade of yellow — was the same color as its actual trains. The label reacted by changing the entire color of the video to sepia which made the toy trains a different shade of yellow. Yet the railroad still had a problem because the cars were still yellow.
The label defiantly re-released the video. But the railroad company initiated a lawsuit against the label and was able to persuade a federal judge to permanently enjoin the further exhibition of the video on MTV and any other outlet. Later, the label settled the suit by paying damages to the railroad in addition to agreeing to never using the video for any purpose again.
5. Artwork and Other Copyrighted Works
Best practice is to avoid using material protected by copyright. This will save you a lot of headaches, and possibly money. The case of Ringgold v. Black Entertainment Television is an important case in this regard. In the late 90’s, Faith Ringgold, a successful contemporary artist, sued BET for airing an episode of a television series called ROC in which a poster containing her artwork appeared. In the scene, at least a portion of the poster was shown a total of nine times.
In some of those instances, the poster was at the center of the screen, although nothing in the dialogue, action, or camera work particularly called the viewer’s attention to the poster. The nine sequences in which a portion of the poster was visible ranged in duration from a little more than a second to four seconds. The aggregate duration of all nine sequences was approximately 27 seconds.
The case was decided by a federal appeals court in New York. The court found BET liable, rejecting the de minimis defense raised by BET. As already noted in the section on “Cover Videos” above, if the amount of a work copied is so trivial as to fall below the quantitative threshold of substantial similarity, the copying is de minimis and does not constitute copyright infringement. But the court found that in addition to its appearance in the scene, there was also a qualitative connection between the poster and the show. The poster included a painting depicting a Sunday school picnic held by the Freedom Baptist Church in Atlanta, Georgia in 1909, and was intended to convey “aspects of the African-American experience in the early 1900s.” ROC was a television sitcom series about a middle-class African-American family living in Baltimore, and the scene in question was of a gathering in a church hall with a minister.
In contrast to Ringgold, the case of Sandoval vs. New Line Cinema Corp stands for the proposition that use of copyrighted artwork in the background of a scene may be de minimis. In Sandoval, the same court that decided the Ringgold case, found that the use of the plaintiff’s copyrighted photographs in the motion picture Seven was de minimis and therefore not actionable. The photographs appeared in the film for a total of 35.6 seconds but they were always in the background and were never in focus. The court found that the “photographs as used in the movie [were] not displayed with sufficient detail for the average lay observer to identify even the subject matter of the photographs, much less the style used in creating them.”
The court distinguished the facts from Ringgold because there was no substantive connection between the appearance of the photos and the subject matter of the scene.
The agreement below contemplates that an artist is hiring a production company to produce a promo video. The same form of agreement may be used by a record company. An artist may consider forming a corporate entity (i.e., C corporation, Subchapter S or LLC) in order to avoid any personal liability in regard to any agreement including a video production agreement. In addition, an Artist would be wise to consult with an accountant or attorney about forming an LLC or S corporation for tax purposes including eligibility to deduct video expenses from their personal income.
This article and other articles in this series should be used as a guide to understanding the law, but not as a substitute for the advice of qualified counsel. This series of articles and the forms included in them have been created for informational purposes only, and do not constitute legal advice. If you’re going to be making any significant legal decisions, you should consult an attorney.
Read the full article here.
Steven R. Gordon, Esq., (firstname.lastname@example.org, www.stevegordonlaw.com) is an entertainment attorney specializing in music, television, film and video. His clients include artists, songwriters, producers, managers, indie labels and music publishers as well as TV and film producers and digital music entrepreneurs. He also provides music and sample clearance services for producers of any kind of project involving music.
The author gratefully acknowledges the assistance of Ryanne Perio, Esq. in the preparation of this article. Ryanne is a litigation associate at the WilmerHale law firm. He would also like to thank his intern Jena Terlip, 2L at Benjamin N. Cardozo School of Law, for her research and editing assistance.