Entertainment & Media Law Signal

You're Getting Sued for What? An E&O Odyssey (Pt 6)

Bob Tarantino — Thu, 02 Feb 2012 11:10:23 -0500

This post is part of an occasional series highlighting the type of risks which film and TV producers face and which are supposed to be covered by E&O insurance, and which aims to demonstrate that what might seem to a producer to be paranoia on the part of their lawyer is, in fact, well-founded. These posts will point to actual lawsuits which have been filed against film/TV producers for various alleged rights infringements (whether copyright, trade-mark, right of publicity, or otherwise) - and which inform the nit-picking approach taken by producer's counsel.

As reported by Eriq Gardner at Hollywood, Esq., a lawsuit was launched in California against Jay Leno and NBC as a result of the use in a the Tonight Show joke of a picture of a temple. As described by Fordham's IPLJ blog:

A California Sikh, Dr. Randeep Dhillon, has filed a lawsuit against Jay Leno, alleging that the Sikh community was the unfair butt of The Chin’s joke on the January 19^th episode of The Tonight Show. The joke at issue portrayed Mitt Romney, the uber-wealthy Republican presidential candidate, as the summer resident of the Golden Temple of Amritsar—the holiest shrine of the Sikh religion. Seizing on the buzz created by the release of Romney’s tax records for 2010-2011—when he earned $42.5 million in income—Leno mocked the candidate’s wealth by showing Newt Gingrich’s and Ron Paul’s homes, saving “Romney’s” gilded temple for the final zinger. ... In the complaint, Dr. Dhillon seeks general and punitive damages for libel. He claims that the joke “clearly exposes plaintiff, other Sikhs and their religion to hatred, contempt, ridicule and obloquy because it falsely portrays the holiest place in the Sikh religion as a vacation resort owned by a non-Sikh.”

Without getting into the merits of the claim, the situation offers a timely reminder that Canadian entertainment lawyers who are conducting E&O reviews of film and TV projects should ensure that their review is a fulsome one, extending beyond the usual concerns relating to copyright, trade-mark, defamation and personality rights. Other matters for consideration (and of possible particular relevance for documentaries) include:

possible Criminal Code violations, such as obscenity (Section 163), child pornography (Section 163.1) and hate propaganda (Sections 318 and 319)
violations of court orders or other legal prohibitions on identifying participants in court proceedings and crimes (such as a court order prohibiting broadcasting the identity of the victim of an alleged sexual assault, or the provisions of the Youth Criminal Justice Act which prohibit identifying youths accused of crimes)
contraventions of the broadcasting standards such as those contained in the Broadcasting Act , the CRTC Policy on Violence in TV Programming and the Canadian Association of Broadcasters' codes of ethics, portrayal of violence and equitable portrayal

(A hat tip to Tony Duarte, whose invaluable resource Canadian Film & Television Business & Legal Practice, provided inspiration for this post.)

The Play's the Thing - Illinois passes theatre tax credit to lure large-scale productions

Roni Hoffman — Wed, 01 Feb 2012 13:34:50 -0500

J. Kelly Nestruck reported in the Globe and Mail on Monday that a tax credit aimed at the theatre industry has recently been passed by the Illinois legislature. The Live Theatre Production Tax Credit will provide commercial producers up to $2 million dollars in tax rebates for “pre-Broadway” and “long run” shows.

Both Chicago and Toronto are traditional pre-Broadway stops for large-scale musicals, and the cities derive tourism and economic boons from their vibrant theatre scene. And now with the Illinois tax credits taking effect in July, some of Toronto’s theatre advocates are trying to make the case that a similar tax credit for Toronto is both arts friendly and business savvy.

Tax credits are certainly not new to the Canadian film industry, but Mirvish Productions and Dancap –along with representatives of theatre unions and associations – are hoping for similar incentives directed towards the theatre as well. They have been active in advocating for competitive measures from the city and the province so that productions aren’t lost to American cities.

Could this be, as Nestruck suggests, the new ammunition in a theatre war between the Windy City and Hogtown?

Canadian Copyright and Campaigns - Moral Rights Edition

Bob Tarantino — Sat, 28 Jan 2012 13:58:49 -0500

Canadian entertainment lawyers are forced to look on in wonderment (and envy?) at the plethora of entertainment law-related legal disputes which arise in the United States. Now (finally!) one with a Canadian angle - Gingrich ordered to stop using Heavy song

U.S. presidential hopeful Newt Gingrich's campaign is striking a sour note with a Montreal record label.

Third Side Music has sent Gingrich's team a cease and desist order demanding they stop using the song "How You Like Me Now" at campaign events.

The song is by the British band The Heavy, and the Third Side record label holds the rights to it.

In recent years, particularly in the 2008 US presidential campaign, assertions of copyright intended to stop politicians from making use of songs reached such a fever pitch that it was one of the primary topics of discussion on Ben Sheffner's late, lamented blog (from which this post swiped its name) Copyrights & Campaigns, and the US Center for Democracy and Technology published a 2010 report entitled Campaign Takedown Troubles: How Meritless Copyright Claims Threaten Online Political Speech. There are also some great law journal articles on the topic: for example, Erik Gunderson's "Every Little Thing I Do (Incurs Legal Liability): Unauthorized use of Popular Music in Presidential Campaigns" (14 Loy. L.A. Ent. L.J. 137 (1993-1994)) and David Johnston's "The Singer Did Not Approve This Message: Analyzing the Unauthorized Use of Copyrighted Music in Political Advertisements in Jackson Browne v John McCain" (27 Cardozo Arts & Ent LJ 687 (2010)).

What is the position under US copyright law regarding the use of songs by political campaigns? First, we need to draw a distinction between using a song at a public event, like a rally, and using a song in an advertisement - the legal restrictions are different in the different circumstances. Tamera Bennett provides a handy summary of the relevant legal implications:

...so long as a campaign secures the necessary public performance license, a song can be played at campaign events without any permission from the artist, songwriter or music publisher. If Mr. Gingrich would like to incorporate the song into a video or advertisement, then his team would need to secure a master use license from the record label and a synchronization license from the music publisher.

Fairly simple: in the US, using a song at a public event requires only the securing of a valid public performance license from a performing rights organization (such as ASCAP, BMI or SESAC) by either the campaign or the venue at which the event is being held. Beyond requiring that a public performance license has been secured, it seems that an artist or record company has no other ability to restrict the use of a composition or recording at a political event. If, however, a political campaign wants to make use of a song in an ad, then a synchronization license and a master use license would be required.

So, if that's the case, on what basis might The Heavy and Third Side Music be objecting to the Gingrinch campaign's use of "How You Like Me Now"? After all, available news reports indicate that the song was only being played at public events and not being used in ads, and it would be a pretty basic error for either the venue to not have a license or the campaign to not have acquired what is referred to as a "travelling blanket license". What gives?

Here's where the differences between Canadian and US copyright laws come into the picture (Canadian copyright law is relevant because the record label is in Canada and it was evidently a Canadian lawyer who sent the letter to the Gingrinch campaign). In Canada, the Copyright Act (Canada) gives to authors rights referred to as "moral rights". The relevant part of Section 14.1 of the Act reads as follows:

The author of a work has, subject to section 28.2, the right to the integrity of the work...

Section 28.2 of the Act elaborates on what "integrity of the work" means:

The author’s right to the integrity of a work is infringed only if the work is, to the prejudice of the honour or reputation of the author,

(a) distorted, mutilated or otherwise modified; or

(b) used in association with a product, service, cause or institution.

Thus, under Section 28.2, the use of a composition "in association with a ... cause" which "prejudice[s]" the "honour or reputation of the author" would constitute an infringement of the author's moral rights.

Regrettably, we don't have any Canadian caselaw on point which would help us analyze the circumstances in which a Canadian author might be able to successfully claim an infringement of his or her moral rights if the author's song has been used by a Canadian political campaign. Presumably the use of a song by a politician who does not enjoy the support of the author could constitute the necessary prejudice, since Canadian courts have held that the question of whether prejudice has occurred is a subjective one - essentially meaning that so long as the author thinks their reputation has been prejudiced, and so long as the author's opinion is "reasonably arrived at", then prejudice will have been deemed to occur (see Snow v. The Eaton Centre Ltd. (1982) 70 C.P.R. (2d) 105). It doesn't take a very limber imagination to envision an artist who does not want their work used by a politician.

So, does that answer the question? Do The Heavy have a right to stop the Gingrich campaign from using their song? Well, we're not quite there yet. A list of just some of the issues which remain outstanding:

first, the Gingrich campaign is operating in the US - which does not recognize moral rights for authors (or, properly, only recognizes moral rights for authors of works of visual art, such as painting and sculpture) - so someone could not assert a moral rights claim in the US
second, the UK (from where The Heavy hail) only recognizes a more limited form of moral rights as compared to Canada - and the UK version of moral rights does not include the "used in association with a cause" branch which is found in the Canadian Copyright Act - The Heavy wouldn't suddenly acquire expanded moral rights simply because their record company was located in Canada
third, moral rights are held by authors, not by record companies or music publishers - if anyone wanted to complain here, it would have to be The Heavy themselves (assuming they are the authors of the song in question), not their surrogates
fourth, it would be interesting to inquire whether The Heavy (again, assuming they are the authors of the song in question) had waived their moral rights in any kind of music publishing contract they had signed

In sum, then, can The Heavy prevent the Gingrich campaign from using their song at public events? Not under US law. Could they prevent a Canadian politician from using their song at a public event in Canada? Possibly - though if they wanted to take the dispute to court they would certainly be breaking new ground in Canadian copyright law.

What's The Deal? The Sundance Special

Michael Shedletsky — Fri, 27 Jan 2012 11:57:29 -0500

Sundance Film Festival 2012 in Park City, Utah has not disappointed so far, with flurries of activity early and often. Here are a few of the recent film and television deals:

Lionsgate and Roadside Attractions purchased the US rights to Arbitrage, a Richard Gere financial thriller, for about $2 million.
Entertainment One acquired the North American rights to Wish You Were Here.
Fox Search Light bought Beasts of the Southern Wild after winning a bidding war against Weinstein, Sony, Focus and a few others. However, Sony and Focus still managed to make a few other acquisitions. Fox also purchased the worldwide distribution rights to The Surrogate for about $6 million.
Sony Pictures Classics bought the rights to Celeste and Jesse Forever across North America, Latin America and Eastern Europe. Bidding continues for the remaining foreign rights.
Sony Pictures Worldwide acquired Samuel Goldwyn’s Robot and Frank.
Focus Features bought Seth Rogen’s newest comedy For a Good Time, Call ….
IFC Films acquired Liberal Arts and IFC Midnight acquired The Pact, bothwithin North America. Meanwhile, Picturehouse Entertainment and Revolver Entertainment bought the UK rights to Liberal Arts and The Imposter.
Magnolia bought the North American rights to V/H/S horror film for over $1 million, after a successful bidding war. Apparently, Magnolia has chosen an alternative release schedule for the film by initially releasing it through VOD prior to a theatrical release.
And, Millenium Entertainment acquired the US rights to Robert De Niro film Red Lights.

On the television side, National Geographic acquired the rights to climate change documentary, Chasing Ice.

A complete wrap up of all of this year’s action at Sundance will follow soon.

Mickey Mouse Heads Overseas

Michael Shedletsky — Fri, 27 Jan 2012 10:50:07 -0500

After it was announced that Shanghai will soon have its own Disneyland theme park, and just when you thought Mickey Mouse could not get any bigger, he announces that Disney is planning to open 25 to 40 stores across major cities in China. While some North American brands are hesitant to do business in China because of counterfeiting and intellectual property rights issues, Mickey Mouse is not afraid.

Below is a brief comparison of certain intellectual property laws in China and Canada:

Trademarks

China operates on a first-to-file system, which makes trademarks available to third parties with no evidence of past use or ownership.

Canada operates in a similar fashion, however, the Canadian Intellectual Property Office (CIPO) requires evidence of prior use or ownership, and allows third parties to contest such registrations. This system is more akin to a first-to-use system (for clarification, see Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC).

A key difference between Chinese and Canadian trademark law is enforcement levels. To avoid potential enforcement issues, foreign businesses should register their trademarks with China’s Trademark Office in Beijing and companies should register Chinese versions of their trademarks before entering the market. Apple learned this lesson the hard way. For more on that, click here.

Copyright

In China, registration is not required for copyright protection. Although copyright protection is offered in China to individuals whose countries are members of copyright international conventions or bilateral agreements, registration should be completed to combat potential enforcement issues.

China subscribes to the basic standards of copyright regulation, as signatories to the Berne Convention and the Trade-Related Aspects of Intellectual Property Rights agreement (TRIPS). For example, Canada's fair use exception is not mirrored in Chinese copyright law, which only has explicit exceptions for private study, comment, or news media. Accordingly, it is unlikely that a court would interpret these exceptions to include expressions like political speech.

Over the past few decades, China has strived to improve its intellectual property laws, and is gradually moving towards more comprehensive protective measures. It is a signatory to the World Intellectual Property Organization (WIPO), the Paris Convention, and TRIPS, in addition to other international intellectual property treaties. China has also established judicial mechanisms to settle intellectual property disputes, with an intellectual property rights trial division that has jurisdiction over all intellectual property matters not involving criminal or administrative law. Additionally, the Supreme People’s Court of China has recently established the Intellectual Property Rights Office which provides guidance for intellectual property proceedings.

In addition to these judicial measures, China has implemented administrative mechanisms to protect and enforce intellectual property rights. The country’s Trademark Office oversees the registration and administrative controls of trademarks, and also handles infringement issues. Similarly, the China National Copyright Administration investigates copyright infringement cases. On the enforcement side, the Chinese Customs Agency investigates goods suspected of violating Chinese intellectual property laws, and can detain such infringing products. Despite these improvements, countries including Canada and the U.S. remain concerned about China’s ability to enforce IP rights. These concerns often revolve around copyright-protected products such as books, DVDs and software.

Disney is no stranger to the Chinese judicial system, having won a copyright infringement case in 1995. In Walt Disney Co. v. Beijing Youngsters and Children Publishing House, Disney pursued an action for the illegal production and distribution of children’s books featuring some well-known and loved Disney characters. While the court awarded Disney a lower sum than it had claimed, the win was seen as a promising sign in the mid-90’s that enforcement mechanisms are available, and continuing to evolve.

*Special thanks to Monique Ashamalla, Student-at-Law, for her intellectual property law research assistance

SOPA and PIPA: Commentary Round-Up (1.25.12)

Ken Dhaliwal — Wed, 25 Jan 2012 18:02:26 -0500

If you favorite website went black last week during the "Dark Wednesday" protests against the proposed SOPA and PIPA legislation and you don't know what the big deal was (much less what SOPA and PIPA stand for), below are a collection of articles that will catch you up.

A very good nice overview of recent events and some history of the legislations by Larry Downes writing in Forbes.
Steve Forbes writing in Forbes on why this legislation is, in his view, bad for business.
Bill McGeveran writing in The Guardian on why the proposed legislation has only been temporarily delayed and suggestions to make it better.
Michael Geist writing on the Huffington Post on the potential implications of SOPA and PIPA for Canadians.
An interesting piece by Kim Masters in the Hollywood Reporter recounting some of the history of the legislation and the relationship between the MPAA, some of Hollywood's leaders and this legislation.

Heenan Blaikie's Professional Development Series Kicks off 2012 !

Ken Dhaliwal — Wed, 25 Jan 2012 09:39:46 -0500

Today's highly informative inaugural seminar focused on Cloud Computing and some of its inherent risks and opportunities.

If you missed this seminar, an archived stream should be available for viewing here in the next few days as well as a listing of the upcoming seminars in the series.

Materials from today's seminar can be downloaded here.

Chris Castle on Record Producer Agreements

Bob Tarantino — Tue, 24 Jan 2012 17:49:15 -0500

Chris Castle has collected all of the installments from his ongoing series of posts More Questions for Artists: Record Producer Agreements which covers, in fascinating detail (but readable prose!) just about everything you could possibly want to know about record producer agreements. The collected posts are an incredibly valuable resource for recording artists and the lawyers who advise them.

Music Canada: Licensing Digital Music in Canada

Bob Tarantino — Tue, 24 Jan 2012 09:39:20 -0500

Music Canada has released (hat tip: Sundeep Chauhan - @CopyrightReport) a handy publication entitled Licensing Digital Music in Canada, which, starting on page 6, provides useful charts and links to describe what licenses are needed to provide different types of online music services (e.g., for digital downloads, talk to the record labels, SOCAN and CMRRA). Contact information is provided for all the relevant copyright collectives, the major labels and a slew of indie labels.

Conroy on Personality Rights in Canada

Bob Tarantino — Mon, 23 Jan 2012 17:03:10 -0500

Amy Conroy, a Ph.D. student at the University of Ottawa's Faculty of Law, has written an excellent article summarizing the various legal regimes applicable to the protection of "personality rights" in Canada, from the common law tort of "appropriation of personality" to the statutory "privacy" regimes in various provinces to the civil code and Quebec Charter-based position found in Quebec. The article, "Protecting Your Personality Rights in Canada: A Matter of Property or Privacy?", is available online, and has been published in the first issue of the University of Western Ontario Journal of Legal Studies.

Film and Television Festivals 2012

Ken Dhaliwal — Fri, 20 Jan 2012 11:07:54 -0500

With the kick-off of Sundance yesterday, the 2012 schedule has officially begun.

Below are some of the key film and television festivals for the first part of 2012 along with dates and links:

Sundance - JANUARY 19, 2012WWW.SUNDANCE.ORG/FESTIVAL/

Rotterdam -JANUARY 25, 2012WWW.FILMFESTIVALROTTERDAM.COM/EN/

Berlin- FEBRUARY 9, 2012WWW.BERLINALE.DE/EN/HOMEPAGE.HTML/

Hong Kong - MARCH 21, 2012WWW.HKIFF.ORG.HK/EN/INDEX.PHP/

MIPTV - April 1, 2012WWW.mipworld.com/miptv/

hot docs - APRIL 26, 2012WWW.HOTDOCS.CA/

CANNES - MAY 16, 2012WWW.FESTIVAL-CANNES.FR/EN.HTML/

Banff World Media Festival - June 10, 2012WWW.banffmediafestival.com/

OBA Institute 2012 - Entertainment, Media & Communications Law Program

Bob Tarantino — Fri, 20 Jan 2012 10:51:44 -0500

From February 9-11, 2012 the Ontario Bar Association's annual Institute will be taking place - and on Friday, February 10, the Entertainment, Media & Communications Law section, guided by the able hands of program chairs Brian Wynn and Jeanette Lee, will be presenting its program Foundations, Protections and Reinvention. Featuring a keynote address from Sunny Handa (on "Creation Out of Destruction: Reinventing Canadian Content Regulaton in the Digital Era"), the program is accredited for 2.5 substantive CPD hours, 0.5 professionalism CPD hours and 3 new member CPD hours.

Genie Award Nominations Announced

Ken Dhaliwal — Fri, 20 Jan 2012 10:42:28 -0500

The 32nd Annual Genie Awards nominations have been announced. The full list can be found here www.genieawards.ca/genie32/press/G32_Nominees.pdf.

The Genie Award celebrate excellence in Canadian film.

Congratulations to all of the nominees!

Invasion of Privacy Tort in Ontario - Implications for Entertainment Lawyers

Bob Tarantino — Thu, 19 Jan 2012 09:47:37 -0500

The question of whether Ontario law recognizes a tort cause of action for invasion/breach of privacy has long been a contentious one - but it has finally been definitively settled in the affirmative. The Ontario Court of Appeal has confirmed in the case of Jones v Tsige, 2012 ONCA 32 that Ontario law admits a separate cause of action for what the court terms "intrusion upon seclusion". (As discussed in this post, the trial decision in Jones v Tsige had flatly declared that "there is no tort of invasion of privacy in Ontario".)

A number of other commentators have already opined on the decision (see Ha-Redeye, Sookman, Hayes, Gannon), so I would like to just summarize the highlights and then comment on the importance of the decision for entertainment lawyers. (I'd also like to give a shout-out to colleague John Craig, whose article "Invasion of Privacy and Charter Values: The Common Law Tort Awakens" 42 McGill Law Journal 355 was cited by the court in it reasons).

Elements of the Tort

The court is somewhat less clear than it could be on the precise elements of the new(-ish) tort. From the decision:

[70] I would essentially adopt as the elements of the action for intrusion upon seclusion the Restatement (Second) of Torts (2010) formulation which, for the sake of convenience, I repeat here:

One who intentionally intrudes, physically or otherwise, upon the seclusion of another or his private affairs or concerns, is subject to liability to the other for invasion of his privacy, if the invasion would be highly offensive to a reasonable person.

[71] The key features of this cause of action are, first, that the defendant’s conduct must be intentional, within which I would include reckless; second that the defendant must have invaded, without lawful justification, the plaintiff’s private affairs or concerns; and third, that a reasonable person would regard the invasion as highly offensive causing distress, humiliation or anguish. However, proof of harm to a recognized economic interest is not an element of the cause of action. I return below to the question of damages, but state here that I believe it important to emphasize that given the intangible nature of the interest protected, damages for intrusion upon seclusion will ordinarily be measured by a modest conventional sum.

I have italicized the language which gives rise to the confusion: it's somewhat fuzzy as to whether there are three elements to the tort (intentional/reckless conduct; intrusion on seclusion; highly offensive) or four elements (intentional/reckless conduct; intrusion on seclusion; highly offensive; causing distress/humiliation/anguish). While nothing in this case turned on the point, it's not difficult to conceive of situations which are offensive but do not cause distress, humiliation or anguish.

The case is also worth keeping a copy of because it provides a rather succinct overview of various legislative and common law attempts to protect privacy interests, and contains an appendix listing damages awards in various "invasion of privacy" circumstances.

Limitations on Tort and Damages

The court identifies the following limitations on the availability of the tort (in paras. 72 and 73):

limited to only "intrusions into matters such as one’s financial or health records, sexual practices and orientation, employment, diary or private correspondence that, viewed objectively on the reasonable person standard, can be described as highly offensive"
subject to "competing claims" for things such as the protection of freedom of expression and freedom of the press

It appears that a plaintiff could recover any demonstrated pecuniary losses, along with "symbolic" or "moral" damages which are capped at $20,000.

Implications for Entertainment Lawyers

When advising clients in the entertainment industry, particularly those who produce investigative reporting, news reports, memoirs, documentaries, docu-dramas, even "reality" TV - really anything which involves the depiction of actual living persons - Ontario lawyers will need to be cognizant of the demonstrated availability of the "intrusion upon seclusion" tort - something which previously was largely a marginal concern in the province.

There is, as Mark Hayes notes, "great uncertainty" about how and the extent to which free expression interests will be taken into account in an "intrusion upon seclusion" court action. How might a documentary or docu-drama make use of letters exchanged between two people, only one of whom is the primary subject to the movie? Could the other person bring an intrusion upon seclusion claim for revealing "private" thoughts and experiences? What kind of impact might revelations about an individual's sexual activities or orientation have (e.g., imagine a news report or book revealing that a politician privately practices activities that he or she emphatically denounces in public life)? What about a book or TV movie about a public figure which reveals that the person once attempted suicide - something which they had worked to keep private? Could showing that the finances of a public individual do not accord with their cultivated image (e.g., showing that a successful real estate mogul is in fact broke) be cause for a claim? Is the interest recognized by the intrusion upon seclusion tort a personal one which expires upon death (similar to defamation), or can it be acted upon by heirs (as seems to be the case with the appropriation of personality tort)?

Of course, none of these questions are unique to this new tort - most legal developments are "fuzzy" around the edges and so engender similar considerations. But because film and TV lawyers, in particular, need to consider not just potential liability for their clients, but also compliance with E&O insurance policy clearance requirements, a heightened sensitivity to the issue is called for.

What's the Deal?

Michael Shedletsky — Wed, 18 Jan 2012 15:35:48 -0500

Adding a fresh new piece to the Signal, I will be providing brief updates on recent deal news and activity in the industry.

To begin close to home, Lionsgate started off 2012 quickly by announcing that it has acquired Summit Entertainment for approximately $412.5 million. Lionsgate will pay Summit in cash and stock, and in return receives Summit’s content library as well as a healthy amount of cash added to their balance sheet. Summit shareholders are used to seeing box office success from teen series Twilight and now Lionsgate hopes to duplicate that success with new franchise The Hunger Games, with the first installment set to release in March.
If you thought 2011 was a big year for deals at Sundance Film Festival, then get ready for this year. While no deals can be reported as of yet from Sundance (which begins tomorrow), there will likely be a long list of distribution deals in just a few days. This year, every movie that will be part of the Premieres category is still for sale. It will be interesting to see which distributors snatch up all of the Canadian rights this year.
On the other side of the globe, Cinemacraft, an interactive media company based in Singapore, has just raised funds for both a new interactive video ad network, as well as a consumer video application. Expect their applications to be released in Japan, USA, India and Indonesia in the near future. They will be targeting the smartphone and tablet media content users as more and more people begin weaning off traditional television and look for alternate ways to watch TV on the go. Should we expect a renewed debate over vertical integration and mobile broadcasting as company’s like Cinemacraft attempt to present new mobile applications?

Keep Your Pants On - The Morals Clause in Performer Contracts

Bob Tarantino — Wed, 18 Jan 2012 09:33:16 -0500

How much room for innovation is there in the realm of the so-called "morals clause"? A "morals clause" is a provision in a contract which stipulates that certain actions or activities undertaken in an individual's "private life" can be grounds for termination of the contract. For entertainment lawyers, these sorts of clauses most often arise in television actor or host contracts (where a producer, broadcaster or studio may want to end their association with an individual whose reputation has become toxic) and in celebrity endorsement contracts (where a manufacturer or service provider no longer wants their product or service associated with an individual who has gained public infamy).

Morals clauses have been relevant to a few different high-profile celebrity stories in the last few years: when Charlie Sheen's erratic behaviour threatened (and eventually ended) his tenure on the hit sitcome Two and a Half Men, the question of whether a morals clause in his contract would permit Warner Bros. Television to terminate his engagement was discussed (see Eriq Gardner's "Morals clause at issue in Charlie Sheen legal fight"). Similarly, whether Tiger Woods' various endorsement deals had morals clauses which were triggered by his marital infidelity was discussed in various outlets (see Morals Clauses: Tiger Woods and The Death of His Sponsorships and Will "Morals" Clauses Impact Tiger's Endorsements?).

Drew Boortz has, as usual, an insightful post on the topic in the context of celebrity endorsements in the videogame industry: Celebrity Endorsements and Morals Clauses: What To Do When Good Deals Go Bad. As Drew points out, and as I'd like to explore a bit further, morals clauses can be drafted in a variety of different fashions and so as to impose a variety of different standards on the individual who is subject to them.

As an example, here is what might be considered the most basic form of morals clause (some of these clauses are taken from Eric Goldman's drafting exercise):

Performer shall not, either while rendering such services to the producer or in his private life, be charged with or convicted of an offense [involving moral turpitude] under federal, state or local laws or ordinances.

That clause is extremely restricted in scope (and hence quite favourable to the performer/celebrity), since it requires an actual violation (or alleged violation rising to the level of the bringing of a criminal charge) of a law or regulation. If one were to include the "moral turpitude" language, that would make the clause even narrower, since only certain types of criminal activity would be caught by the restriction.

A morals clause can be expanded in scope by adding language which speaks to not just the commission of a crime, but the "bringing into disrepute" of the performer/celebrity and/or people or entities associated with him or her - using some language from Drew's post, here is an example of such language:

If at any time while Artist is rendering or obligated to render on-camera services for the program hereunder, Artist is involved in any situation or occurrence which subjects Artist to public scandal, disrepute, widespread contempt, public ridicule, [or which is widely deemed by members of the general public, to embarrass, offend, insult or denigrate individuals or groups,] or that will tend to shock, insult or offend the community or public morals or decency or prejudice the Producer in general, then Producer shall have the right, in its sole discretion, to take any action it deems appropriate, including but not limited to terminating the production of the program.

That's a relatively standard "expansive" morals clause - though I note that the portion of the clause which I have bracketed and italicized is a relatively new twist: it expands the scope of the clause to cover a situation where the performer/celebrity has made a comment (or participated in an activity) which is deemed (query how you would prove that something is "widely deemed by members of the public") to be insulting to an individual or group. In that latter category one could imagine situations where a performer/celebrity makes comments which trade on negative stereotypes of an ethnic, religious or racial group.

These sorts of "expansive" morals clauses become a bit more difficult to police - or at least the policing of them becomes more open to interpretation, since they involve not a binary question as under the "basic" morals clause (i.e., was the person charged/convicted of a crime or not?), but a qualitative assessment of whether a particular activity or "incident" is "bad" enough that it triggers the termination right. Such debates can also involve identifying the particular "community" whose sensibilities have been shocked - are we talking about a particular sub-set of consumers, viewers in a particular geographic region or some broader set of the public? Again, how would we measure whether they have, in fact, been offended?

There are two even more expansive ways to approach morals clauses. One is to expand the clause by identifying particular infringements - I'm just going to lift this language from Drew's post, since it so nicely illustrates the concept:

Artist shall never (a) provide services in an ‘adult-themed’ film or video program or perform onscreen services for any film or video program that is pornographic, involves nudity or graphic violence or contains material derogatory of any race, nationality, ethnic identity, gender or sexual orientation; (b) perform in any sexually explicit plays, musicals or stage shows (including strip tease acts); or (c) pose as a model for any pornographic or sexually suggestive publication; furthermore, Artist represents and warrants that Artist has never participated or been a part of any activity that would fall within the scope of (a), (b) or (c).

That's nice and clear: you get involved in any "adult entertainment" activities, and you're out - and we're not going to debate whether such activities constitute a "scandal" or are "shocking".

As Drew notes, drilling down on specific violations allows the entity engaging the performer/celebrity to tailor the contract so as to address any particular sensitivities of the engaging party or their audience (Drew mentions publicly advocating for a political position contrary to that held by the engaging party).

Finally, one could introduce what Taylor, Pinguelo and Cedrone call the "reverse-morals clause": a clause which allows the performer/celebrity to terminate the arrangement if the company hiring them acts in a scandalous manner (see "The Reverse-Morals Clause: The Unique Way to Save Talent's Reputation and Money in a New Era of Corporate Crimes and Scandals"). To use their illustration, if a performer/celebrity has an endorsement arrangement with a company which pulls an Enron, that performer/celebrity has an interest in preventing the company from making further use of the performer/celebrity's name and image.

For further reading on morals clause, I suggest the following:

Droit de suite: Forgotten Corner of the Copyright Canvas

Bob Tarantino — Mon, 16 Jan 2012 20:47:04 -0500

The good folks at the Lawyers Weekly have published a short commentary of mine on the introduction in Canada of a droit de suite (or resale right) for visual artists. The article can be found in its entirety here, and here is a brief excerpt:

In an age when the challenges of digital technology dominate copyright reform discussions, the world of auctioneers and brushstrokes may seem quaint. But there is an issue among Canadian visual artists that is just as crucial as digital downloads: The lack of a droit de suite, entitling artists to a share of revenues when their art is sold, leaves Canada out of step with many peer countries.

A droit de suite entitlement may at first appear to be not even a copyright issue, since no “copying” is involved in a sale of art. However, s. 3(1)(g) of the Copyright Act already takes special account of works of visual art by granting artists the exclusive right to control public exhibition of their works, which also does not entail making any copies.

There have been a few recent discussions at other forums about droit de suite / resale rights in other jurisdictions which I thought worth highlighting:

For previous Signal discussion on the droit de suite, see here.

You're Getting Sued for What? An E&O Odyssey (Pt 5)

Bob Tarantino — Wed, 11 Jan 2012 10:05:35 -0500

This installment in the series isn't from the world of film and TV, but rather videogames: Eriq Gardner at Hollywood, Esq. reports that game publisher Electronic Arts is in court following threats from a manufacturer of helicopters asserting that including depictions of real-life 'copters in videogames constitutes trade-mark infringement (Helicopters In Video Games Under Fire As Electronic Arts Heads to Court).

This sort of dispute raises pertinent issues which often arise when conducting an E&O review of a project - namely, what sorts of rights might the owner of an "object" claim against a producer who uses that object in their movie? For example: is there a need to get clearance (i.e., obtain permission from the owner) for the use of a car in a motion picture? (On a related point, and for a good summary of the issues see Dear Rich's recent post Can We Use Cars in CD Cover Art or Movie?). For the lawyer reviewing the matter on behalf of the producer, this often reduces to a "look and feel" analysis: Is the object (e.g., the car) being used in a prominent manner? Is there a danger that someone could construe the use of the object as constituting an endorsement of some sort? Is there a trade-marked logo which is visible? Is the object being disparaged in some fashion? Is there some kind of artistic design element on the object which might have separate copyright protection (to use an example which might be a bit out date: is the object a van with an airbrushed painting on the side)?

Digging a bit deeper into the analysis, however, there are both practical restrictions (if every object appearing on-screen needed clearance, movies would quickly become impossible to make - if every appliance in a kitchen required clearance, there wouldn't be many scenes taking place in kitchens) and legal ones - it becomes difficult to articulate what "rights" a manufacturer might have in an "object". Section 64 of the Copyright Act (Canada) removes copyright protection for designs or artistic works which are applied to "useful articles" and then reproduced more than fifty times. That would have the effect of preventing a car manufacturer from claiming copyright in their vehicle designs (assuming we're talking about mass-produced vehicles, and not simply one-off "concept cars"). But they might have some kind of relevant protection under the Industrial Design Act (Canada) which may warrant consideration. Simply depicting a trade-marked logo is likely not to constitute "use" within the meaning of the Trade-marks Act (Canada), and so the only potentially plausible trade-mark claim would have to rest on some kind of disparagement or dilution basis. The more difficult question to answer relates to copyright which might subsist in a visible logo - though, again, practically speaking in most circumstances such logos will be difficult to discern on-screen. All that being said, many E&O insurance policies will simply require that prominently-depicted objects (such as vehicles) and depicted logos be blurred or that clearance be obtained - irrespective of the precise legal grounding of a potential claim.

AODA Deadlines Have Arrived! Is Your Organization Compliant?

Bob Tarantino — Tue, 10 Jan 2012 10:16:23 -0500

The first deadline for organizations to comply with the accessibility requirements set out in the Accessibility Standards for Customer Service (“Customer Service Standard”) under the Accessibility for Ontarians with Disabilities Act (“AODA”) has arrived. Future accessibility requirements under the Integrated Accessibility Standards, including obligations to make your website more accessible to persons with disabilities, may already have an impact on decisions you are making today about your website.

Has your business or organization taken the necessary steps to ensure compliance?

DO YOU HAVE QUESTIONS ABOUT…

WHO is required to comply with the AODA;
WHAT steps your organization needs to be take to achieve compliance;
WHERE you can access helpful materials to assist with compliance;
WHEN your organization must be compliant with the different requirements;
HOW your organization can ensure compliance; or
WHY your organization is required to comply?

If so, we strongly encourage you to attend an upcoming Managing the Workplace Seminar on Complying with the Accessibility for Ontarians with Disabilities Act: Who, What, Where, When, How and Why?”, which will take place on January 19, 2012.

To obtain additional information and to register for this seminar, please visit our Managing the Workplace Website.

2011 Clawbies Nominations

Bob Tarantino — Thu, 29 Dec 2011 10:31:04 -0500

The 2011 Canadian Law Blog Awards (the Clawbies) nomination season closed yesterday - but, happily, I was able to tweet my nominations last week. Steve Matthews maintains a running list of nominations, and though I'm beyond the deadline, I'd like to take the chance to explain further the reasons for the selection of my nominees.

Condo Reporter. This is a repeat from my list of nominees for the 2010 Clawbies, but I can't think of a blog more deserving of recognition than Heenan Blaikie's Condo Reporter. I am consistently impressed by the efforts of the HB Condominium Legal Team - Condo Reporter offers informative content updated on a relentless schedule, from a variety of contributors. I may be biased because I own a condo, but I almost always learn something new when there's a CR update, so I genuinely look forward to seeing their name pop up in my Google Reader. What makes CR even more impressive is that they're contributing to a blawging niche which already has numerous other Canadian providers - but I think, and not just because they're colleagues, that CR remains the best of the condo law blawgs. It's also one of the best-looking blogs I've come across, with a pleasing colour-scheme and great use of photos to supplement posts.
Workplace Wire. Yes, another Heenan Blaikie blog, but there's no nepotism here: a blog which provides as much information, on such a consistently updated basis, from so many contributors, and manages to make interesting to this reader an area of law for which I otherwise have no affinity, richly deserves recognition. Even better, Workplace Wire manages to inject some personality into their coverage of labour, employment and pension law - I can expect to find critical assessments of the state of the law and judicial/tribunal decisions, a welcome change of pace from the fate which awaits many big firm blawgs.
Wise Law Blog. In my 2010 Clawbie nominations, I avoided heaping praise on what I viewed as the "pillars" of the Canadian law blogging community - I'm waiving that approach when it comes to Garry J. Wise. In what I have learned is his trade-mark understated manner, Garry is one of the leaders of the Canadian blawging community, and while he is reluctant to sing his own praises, I'm happy to do so (even though Garry's the one with the singing and songwriting chops). I had the pleasure of co-promoting the January 2011 blogstravaganza with Garry (there were even more attendees than are reflected in that picture which Omar had the foresight to take and post), and Garry was gracious enough to ask me to participate in the LSUC Ethical Considerations in an Age of Technology CPD programs which Garry chaired. I knew Garry was a macher in the Toronto law blogging community, but it was with that LSUC program that I got to see him in action: he put together a program which was a massive success, attracting something north of 4,000 online attendees, resulting in a flood of Twitter commentary (#LSUCethics) and prompting dozens upon dozens of questions from viewers. I said it when I first met Garry in person and I'll repeat it now: what makes Garry one of the best Canadian blawgers (which, given the variety of online platforms he uses is probably a little too constricting of a term) is that he is willing to make his online presence unashamedly and undilutedly him. Whether through his blog, his Twitter feed (@wiselaw) or his YouTube contributions, you're never going to mistake what you're getting for someone else's "voice" - creative, political, thoughtful, funny, Garry provides dispositive evidence that lawyers with an online presence don't need to be bland, buttoned-down or afraid to let their personalities shine through.

To echo what I said in 2010, 2011 continued to be a great time to be a reader of Canadian law blogs, and here's hoping that continues into 2012 (and beyond).