SPEAKING AT COMIC-CON 2014

If you’re coming to Comic-Con 2014 (and I hope you are) I’ll be speaking at the Comic Book Law School panel on Hot Topics in the Law.  The panel is Saturday at 10:30 a.m. in Room 30CDE.  Please come and say, “Hi,” if you see me.

Here are the details:

In this session noted attorney Michael Lovitz, author of the classic The Trademark and Copyright Book comic book, brings you a panel discussion highlighting some of the most pressing legal issues and trends facing the creative and business communities.Professor Marc Greenberg and attorneys David Lizerbram, Larry Zerner, and Mark Reichenthal share their collective knowledge and insights while covering the following fascinating topics: contributory copyright infringement and Tarantino v Gawker; collaboration agreements between artists and writers; work-for-hire agreements for independent contractors; the case of Sherlock Holmes and the public domain; a review of the 9th Circuits decision involving Google/YouTube and the Supreme Court decision on the interplay of laches and statute of limitations in copyright suits. In addition, the entire panel will reflect on the Kirby v. Marvel appeal to the Supreme Court, and what impact the case could ultimately have on the comic book industry. Please note: The Comic Book Law School seminars are designed to provide relevant information and practice tips to practicing attorneys, as well as practical tips to creators and other professionals who may wish to attend. [This program is approved for 1.5 credits of California MCLE.]

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WHY ADAM CAROLLA DOES NOT NEED TO PUT GAFFER TAPE ON HIS NIKES.

I was listening to the Adam Carolla podcast this morning (as I do most mornings when walking my dogs) and Adam, as he is wont to do, began to rant. And this rant captured my attention because it had to do with legal issues and movies, two of my favorite subjects.

Adam was talking about shooting his movie Road Hard, and how he had taken a black marker and blacked out the Nike swoosh on his shoes, but the wardrobe department kept putting gaffer tape on his shoes to make sure that the swoosh was completely covered.  (You can listen to the rant here starting at 18:12.)  Adam was complaining about the fact that although the swoosh was gone, now it looked like his character wore gaffer tape on his shoes, which is just stupid.  But what struck me when listening to the rant was that even though Adam is the producer, writer, director and star of the movie, and even though he knew that there was no legal reason to block out the Nike swoosh, he just didn’t tell the wardrobe mistress to get away from him with the gaffer tape, clean the black marker off his shoes, and go on with making the movie without dealing with such nonsense.

Why does this happen?  When did filmmakers get the (completely wrong) memo that all trademarks need to be removed from their clothing (and presumably cars, refrigerators, toasters and any other products seen in the movie)?

First, let me make it clear to any filmmakers out there who are making a movie and are worried about having to dummy up fake brands of soda and ketchup to dress the dinner table, THERE IS NO NEED TO DO SO. So long as the character are simply using the product in the normal way it is intended (drinking a soda, wearing a shoe, driving a car), there is absolutely no need or requirement to block out the logos or the name of the product.  And it’s perfectly fine for characters in your movie to talk about products and places in the movie (“I’ll have a Coke,” “Let’s go to McDonalds,” “Where’s my IPhone?”)  For god’s sake, Pulp Fiction has a seminal scene in which the characters talk about nothing but the Burger King Quarter Pounder with Cheese.  

So, if it’s not required by law, how did this get started?  Well, one reason is that it’s a carry-over from reality television.  On most reality shows, logos get blurred out.  Again, this is not a legal requirement it’s because the show is probably sponsored by a food, drink, or clothing company and the network doesn’t want to risk pissing off a sponsor.  If the show gets sponsored by Pepsi, they are not going to be happy if everyone is drinking Coke, and vice-versa.  Since the producers of the reality show doesn’t usually know who the sponsors will be when filming, they play it safe and blur out all of the products, to avoid possibly problems down the road.

The same goes for major motion pictures.  Because of the possible cross-promotion opportunities, when making a big-budget blockbuster like Transformers or Iron Man, deals will be made regarding cars, clothes, watches, and other products seen in the film.  That will mean that the studio will sometimes agree not to show competing brands in the film.

But you, my loyal reader, probably don’t have those kind of concerns.  If you’re making your own movie, you probably do not have any sponsorship deals.  So don’t worry about covering up brands in your films.

I do have one small caveat to this rule.  If someone is going to use the product in an unusual way, then you may want to create a fake product.  For example, if someone in the film was going to drink a poisoned soda and die a horrible death, you might be better off mocking up a fake can, rather than using a Coke.  Do I think that if you did so you would be infringing Coke’s trademark? No, I don’t.  But, unless it’s critically important to the plot that you use a name brand, I would advise against it, just to ensure that you don’t get entangled in a baseless lawsuit.

But otherwise, and I’m talking to you Adam, stop wasting your time with this nonsense and get back to making your movie.

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DO I NEED TO PREREGISTER MY SCRIPT WITH THE COPYRIGHT OFFICE?

Many of you may have heard that the you can now preregister your work with the Copyright Office (if you haven’t heard it before this, you have now) and thought to yourself, “Preregistration.  Sounds important.  Should I do that?  Do I have to do that? Why would I do that?”

Boy, do you have a lot of questions!

Let me explain the purpose of preregistration and that will probably give you an answer as to whether you need to or not.

This all goes back to an issue that I’ve discussed in this blog many times before, the importance of registration with the Copyright Office  before any infringement begins.  Copyright registration must occur before any infringement or you cannot recover statutory damages or attorney’s fees in a lawsuit.  Well, one problem that arose from this requirement is that some works were infringed before they were even finished or available to the public.

This happens most commonly with albums by big name artists or blockbuster motion pictures.  Someone gets into the recording studio, makes a copy of whatever Eminem or Beyonce is working on, and then uploads it to the web. One of the most famous examples of this occurred in 2009, when Kevin Cogil uploaded nine songs from Guns N’ Roses Chinese Democracy to his Soundcloud account.  Also in 2009, someone uploaded an unfinished and incomplete workprint of X-Men Origins: Wolverine to the web. The print apparently came from an Australian special effects company.

The problem in cases like these is that because the infringement occurs before the work is completed, the creator has not yet registered the work with the Copyright Office.  So even though there has been a horrible infringement, the artist or studio can only sue for “actual damages” (which can be very difficult to prove) and can’t recover attorney’s fees or statutory damages.

Preregistration was developed to solve this problem.  If you have a work that you think might be infringed before it is put out on the market, you can preregister it.  Preregistration is not a substitute for registration but it allows the infringed party to sue before the authorized release of the work and recover statutory damages and attorney’s fees.  In order to obtain these benefits, the author must register the work within one month after learning of the infringement and no later than three months after first publication of the work.

For the vast majority of you, there is no need to preregister.  First of all, it’s expensive ($140). Second, most of you do not have works that will be infringed while they are still in development. Third, preregistration is only allowed for the following types of works:

  • motion pictures
  • sound recordings
  • musical compositions
  • literary works being prepared for publication in book form
  • computer programs (including videogames)
  • advertising or marketing photographs

So for artists and sculptors, preregistration is not even an option.  And, if you’re a screenwriter, there is no need to preregister because you should be registering the script as soon as it is completed enough that you are submitting it to agents and producers. But, if your career develops to a place where you think it’s possible that your work may get infringed before it is completed, it’s good to know that preregistration is available as an option.

For more information on the preregistration process from the Copyright Office, click here.

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Help! A Producer Gave Me A Submission Release For My Script. Should I Sign It?

For many screenwriters, the hardest thing about getting started is finding an agent to rep them.  Until that lucky day occurs, they are forced to try to make their own submissions to producers and production companies.  However, for writers not represented by agents, the producer will often require the writer to sign a release form as a condition to accepting the submission.  And these releases can have far reaching legal consequences.  So before you sign one of these agreements, you better understand what you’re signing, and what the potential implications are if infringement occurs. 

As an example, I’m going to reprint a submission release that a client of mine was asked to sign, and explain the legal implications of the various clauses (NOTE: I’ve removed some of the more uninteresting provisions of the agreement for space). 

Dear Producer:

I am submitting to you herewith and under the terms and conditions stated herein the following material (hereinafter referred to as the “Material”):

I acknowledge that because of your position in the entertainment industry you receive numerous solicited and unsolicited submissions of ideas, formats, stories, suggestions and the like, and that many such submissions heretofore or hereafter received by you are similar to or identical to those developed by you or your employees or to those otherwise available to you. Further, I acknowledge that you have adopted the policy, with respect to unsolicited submission of material, of refusing to accept, consider or review such material unless the person submitting such material has signed an agreement in form substantially the same as this. Accordingly, I acknowledge that you would refuse to accept, consider or otherwise review the Material in the absence of my acceptance of each and all provisions of this agreement (“Agreement”). I acknowledge that no fiduciary or confidential relationship now exists between you and me, and I further acknowledge that no such relationships are established between you and me by reason of this Agreement or by reason of my submission to you of the Material.

This section is used to establish that you are agreeing that there is no confidential relationship between you and Producer, so you can’t use a “Breach of Confidential Relationship” as a possible cause of action if your script is stolen. 

In consideration of your receipt of the Material, I hereby agree to execute this Agreement. I acknowledge that you have no obligations to me except as set forth in this Agreement, and that no other obligations exist or shall exist or shall be deemed to exist. I further acknowledge that at this time you have no intent to compensate me in anyway and I have no expectation of receiving any compensation. I acknowledge that you are under no obligation to review or use or negotiate with me with respect to the Material in any manner.

Notice the underlined language.  You are agreeing that you have no expectation of being paid for your script.  This is to stop you from suing later on and claiming that they stole your idea.  Since there is no expectation of being paid on your part, you couldn’t have been damaged . . . Right?

I acknowledge that the Material is submitted by me voluntarily and not in confidence, and that no confidential relationship is intended or created between us by reason of the submission of the Material. I agree that nothing contained in this Agreement nor the fact of my submission of the Material to you shall be deemed to place you in a position different from that of, or to cause you to have any fewer rights than, a member of the general public to whom I have not submitted the Material.

Again, this means that you cannot claim that there was any implied agreement with Producer just because he accepted your script. 

I acknowledge that materials (or portions thereof) developed, created, acquired, licensed or otherwise obtained by you, or third party materials to which you have had access, may be similar or identical to the Material (or portions thereof) in theme, idea, plot, format and/or other respects. I agree that I will not be entitled to any compensation because of the use of any such similar or identical material. I acknowledge that materials developed by you may contain similarities to the Material. I hereby waive, and agree that I will never make, any claim or demand or bring any action against you in connection with the use of the Material. In this connection, I hereby release and absolutely and forever discharge you of and from any and all claims, damages, legal fees, costs, expenses, debts, actions and causes of action of every kind and nature whatsoever, whether now known or unknown, suspected or unsuspected, asserted or unasserted, which I now have, or at any time heretofore ever had or which I may have in the future, against you which in any way arise out of or in connection with the Material.

Here’s the big one.  In this section, you agree that you will never, ever, ever sue Producer if he steals your script.  And, if you try to do so, he will simply show the court the agreement where you agreed to never sue him with regard to the use of your script (aka “the Material”), and the court will throw your suit out. 

I hereby acknowledge that I am familiar with Section 1542 of the Civil Code of the State of California, which section reads as follows:

“A general release does not extend to claims which the creditor does not know or suspect to exist in his favor at the time of executing the release, which if known by him must have materially affected his settlement with the debtor.”

I hereby waive and relinquish any and all rights and benefits which I have or may have under Section 1542 of the Civil Code to the full extent that I lawfully may waive and relinquish any and all such rights and benefits.

A waiver of Section 1542 is fairly common in releases, it means that you are waiving not only the things you know about but even as to claims that you don’t know about at the time of signing.  Again, this is to make it very hard for you to file a claim later. 

Each party hereby waives any and all rights and benefits which he or it might otherwise have or be entitled to under the laws of California to litigate any dispute in court, it being the intention of the parties to arbitrate, according to the provisions hereof, all such disputes, as the sole and exclusive means to resolve any such disputes. Any such dispute may be submitted to arbitration in the County of Los Angeles, State of California, in accordance with the rules and regulations of the American Arbitration Association then in effect, provided that said arbitration shall be heard before a single arbitrator, selected pursuant to said rules and regulations. Said arbitrator shall be well acquainted with the entertainment business in the County of Los Angeles. The arbitrator’s decision shall be controlled by the terms and conditions of this Agreement and shall be final and binding. Judgment upon the award of the arbitrator may be enforced in any court of competent jurisdiction. The prevailing party shall be entitled to recover from the losing party, in addition to all other relief to which it may be entitled, its costs and expenses, including, without limitation, actual attorneys’ fees and the costs of expert witnesses. In the event of any dispute concerning this Agreement, my sole remedy shall be to seek actual damages and in no event shall I be entitled to seek injunctive or other equitable relief.

In this section, you waive any right to sue in court, and must instead bring an arbitration action.  While arbitration has its advantages in some circumstances, here, the main disadvantage to you is the initial filing fee.  Whereas the filing fee for a copyright infringement case in U.S. District Court is currently $350, the initial filing fee for AAA arbitration is based on the amount of the claim.  So if your claim is between $150,000 and $300,000, the initial filing fee is $2,800, from $300,000 to $500,000, the filing fee is $4,350, from $500,000 to $1,000,000, the filing fee is $6,200, and from $1,000,000 to $5,000,000, the filing fee is $8,200.  And this, of course, does not include the cost of the arbitrator, which typically runs from $5,000 to $10,000 per day. 

The other horrible thing about this section is the waiver of injunctive relief.  In a copyright infringement lawsuit, the threat of an injunction gives the plaintiff a heavy remedy if they win, because if an injunction is granted, the studio makes no more money from the film.  This can lead to a high payout.  But if all you can receive is value of your screenplay, that caps damages at $100,000 or less.  

I hereby state that I have read and understand this Agreement; that no oral representations of any kind have been made to me; that there are no prior or contemporaneous oral agreements in effect between us pertaining to the Material; and that this Agreement states our entire understanding.

This provision (called an “integration clause”) means that the only thing in the agreement is what is on the paper.  Even if the Producer told you repeatedly on the phone that he would treat you right and pay you for your script if he used it, by including this provision it makes any such oral promises unenforceable. 

Now, I can hear you asking, if these releases are so bad, should I ever sign one?  And I would say that there are a few situations where you might be willing to sign a release like this.  The first is when you feel that you have completely shopped out your screenplay and don’t think you’ll have any more conventional means of getting your screenplay looked at.  If the alternative to not signing the release is that the screenplay just sits in the bottom drawer of your desk for eternity, then sure, what the hell. It’s a long shot, but it’s better than nothing. 

The other alternative is when you know (from doing your research) that the Producer is (somewhat) trustworthy, and you think that it’s worth the risk.  But otherwise, I would really think long and hard before signing one of these releases because you are signing your script’s life away. 

                                                                                                                          

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I’m a guest on the Nerdist Writer’s Panel Podcast

I was a guest on the latest episode of the Nerdist Writers Panel podcast along with David Hudgins (Friday Night Lights) and Ben Blacker (Thrilling Adventure Hour).  It was a really great episode with lots of good advice for aspiring (and professional) screenwriters and some good stories as well.  Take a listen and let me know what you think in the comments. 

Grab it here (website) or here (ITunes). 

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June 3, 2014 · 10:45 am

SCRIPT TITLES: YOU’RE DOING IT WRONG

I recently received a phone call from a new client.  He had just finished a new screenplay and was worried that someone would release a movie with the same title before he did.  So he wanted me to try to trademark the film’s title so no one else could use it.

This is a common situation and one which I know many screenwriters struggle with. They struggle for days to find the perfect title for their film and then lay awake in fear over someone else using it.  So let me put your minds at ease.  Stop worrying!

First of all, as a general rule, you cannot trademark the title of a single work, whether it is a movie or a book.  You can only trademark a series of movies, which is why Star Wars, Harry Potter, and Friday the 13th are registered trademarks and Transcendence is not.   Are there exceptions to this rule? Yes.  If a film has become so famous that basically everyone knows that the film comes from a certain source, then a single film might have some protection.  Some examples of this would be Gone With The Wind, or Casablanca.  And Disney was recently able to stop the release of a knockoff film originally called The Legend of Sarila but which changed the title to Frozen Land to capitalize on the Disney hit.  But films like these are few and far between.  

But really, the reason you need to stop worrying about your title is that you are forgetting what the purpose of the title is and who it is for.  Your job is not to come up with a movie title that will look good on a poster or a theater marquee.  Your job is to come up with a title that will help get your script sold!

The title of your script gives you the first occasion to speak directly to the potential buyer, before they have been tainted by anything else.  Use this opportunity to grab their attention and make them want to know more about your screenplay.  It’s the one time you are not bound by any rules so use this opportunity creatively.

One of the best examples of a writer using the title to send a creative message is Adam Herz, writer of American Pie. When Adam sent the script to producers, he called it this:

Untitled Teenage Sex Comedy That Can Be Made For Under $10 Million That Most Readers Will Probably Hate But I Think You Will Love 

Adam knew that his script was not something that the average script reader would necessarily want to give high marks, so he used the title as an opportunity to send a message to the producer.  And he made the sale.

Another good example is Elizabeth Meriwether’s (creator of New Girl) screenplay for the 2011 film No Strings Attached with Ashton Kutcher and Natalie Portman.  I think most people would agree that No Strings Attached is a fairly bland, boring title.  And maybe Ms. Meriwether would agree.  When she submitted the script, it was called Fuck Buddies.  Now I’m sure that Liz knew that there was no chance in hell any studio would release a movie called Fuck Buddies. But she also knew that what was important was having a title that got immediate attention.  Think about it.  If you were an agent or a producer and had a choice of reading two scripts, one called No Strings Attached and the other titled Fuck Buddies, which would you choose?  I don’t think it’s even a close call.

So stop worrying about protecting your title and start thinking of coming up with a title that will get your script sold.  Because that’s what it’s about. 

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The “Frozen” Trailer Lawsuit Shows The Importance Of Copyright Registration

Today, the Hollywood Report ran a story about a copyright lawsuit involving the movie Frozen. Only the plaintiff was not suing regarding the film.  The suit, filed by aspiring animator Kelly Wilson, alleges that the teaser trailer for Frozen was appropriated from her short animated film titled The Snowman.

The Snowman is about a clumsy snowman that loses its carrot nose on a frozen lake and then battles with a gang of rabbits to get it back.  You can watch it here.

 

 

The Frozen trailer is also about a clumsy snowman that loses its carrot nose on a frozen lake and then battles with a reindeer to get it back.  You can watch it here.

 

 

Do you think the Frozen trailer is similar enough to The Snowman so that Ms. Wilson prevails in her copyright infringement lawsuit?  Personally, I would say probably not, especially based on the standard of similarity judges in the 9th circuit are requiring just to get a case to a jury.  But I can certainly see why Ms. Wilson believes she was ripped off.  But are these just two films with the same idea? Or did Disney copy Ms. Wilson’s expression of that idea?  That will be up to the judge to decide.  I want to talk about the fact that even if Ms. Wilson wins, she has cost herself hundreds of thousands of dollars simply because she did not register her script with the Copyright Office until after she discovered the infringement.

As I have written many times (most notably here, and here), copyright registration is so important because if your work is infringed, a registration prior to the infringement gives you the opportunity to obtain both statutory damages and attorney’s fees.  Without prior registration, you get neither.  This case provides a good example of how this will play out to hurt Ms. Wilson.

The Snowman was created in 2010 and, according to the Complaint, was not registered with the Copyright Office until July 6, 2013, after Ms. Wilson saw the Disney trailer.  So, if Ms. Wilson prevails in the lawsuit (and that’s a big if in itself), she can only collect “actual damages suffered by him or her as a result of the infringement, and any profits of the infringer that are attributable to the infringement.”  17 U.S.C. §504.

In terms of “actual damages suffered” that number would be difficult to quantify, but I would say, at best, it would be the cost to license the right to the story of The Snowman to use in a trailer.  That number would not be very large.  At best, we’re talking about something in the low five-figures.

Well, what about Disney’s profits?  Frozen is the highest grossing animated movie in history.  Shouldn’t that mean a big check for Ms. Wilson?  It might, if the scene in the Frozen trailer had appeared in the film.  But it doesn’t.  The scene in the trailer doesn’t appear in the film at all.  In fact, people thought this was sort of underhanded since the trailer is very misleading as to what the film is about.

Ms. Wilson’s lawyers will no doubt argue that it was the success of the “infringing” trailer that led to the success of the film (and all the profits).   Good luck with that.  Assuming Ms. Wilson’s prevails on her claim of infringement, will a judge allow a jury to determine what percentage of the profits of Frozen are due to a teaser trailer released six months before the film’s release?  That is going to be a very hard sell.  Also very expensive in terms of experts.

And that is why the Ms. Wilson’s failure to register the film with the copyright office is so costly.  Had she registered earlier, she could ask for statutory damages of up to $150,000 for willful copyright infringement. And she could make the election to go for statutory damages (as opposed to actual damages) at any time before the case went to the jury.  That means that she could try to get the judge to allow her to obtain some portion of the profits of the movie, but if that didn’t work, she could change strategy and ask for statutory damages instead.

I’m sure that Ms. Wilson’s attorneys are working on a contingency fee basis as it seems doubtful that a struggling animator would have the money to pay them by the hour.  If the lawyers could obtain their attorney’s fees at the end of the case, it would mean hundreds of thousands more dollars that Ms. Wilson would receive if she prevailed.  This would also put some pressure on Disney to settle.

As it is, it’s an interesting case, but it just serves as one more example of the importance of registering your work with the copyright office (never with the WGA) as soon as you are sending it out to the public.

 

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