It’s everyone’s favorite line on the daily prep schedule: “Clearances Call”. An opportunity to gather around the speakerphone in the Art Department office and make silent group gestures of disbelief and frustration as the Clearances Coordinator tells you all the things you can’t use in the film.
But what madness has driven us to the point of launching conference calls and endless email chains about whether the artwork on a tissue box disqualifies it from being shown onscreen?
For roughly the last 30 years, studios and independent producers have grown increasingly stringent about not filming copyrighted and, to a lesser degree, trademarked material without the consent of the intellectual property owner. The mandate of ensuring nothing “uncleared” finds its way onscreen has spawned a professional ecosystem composed of Script Research Companies, Clearance Coordinators, and Clearance Lawyers. In the independent film world, a Script Research Company will usually issue a report identifying all items in the screenplay that represent possible legal conflicts if used as is. This includes character names, business names, artwork, and props. From there, a Clearances Coordinator will go over the report with the relevant departments and handle the administration of day to day issues that pop up. At the top of this pyramid is a Clearances Lawyer, who has the final word advising producers on more complex judgment calls involving risk management.
Often, and especially on smaller projects, production will try to rely heavily on the Art Department and the Production Designer to deal with clearances. One of the many problems with this approach is that clearances can be a nebulous world without hard and fast rules. Many decisions come down to the Clearance Lawyer’s judgment about what will be problematic. What are the chances Budweiser is going to sue the movie, potentially preventing distribution, if a character drinks a real Bud instead of an ND beer? How likely is it that the artist of the brilliant, unsigned flea market painting the decorator found will surface and file a claim that requires the movie to use post money to hire additional attorneys? To account for this complexity, production should always provide someone outside of the Art Department to track clearance issues. If the budget absolutely won’t allow for a Clearances Coordinator then a PA should be brought on specifically for the task.
As an attempt to gain some inside info on the subject for the next time I have to begrudgingly fight a clearances battle, I went straight to the top of the food chain and sat down with Clearances Lawyer extraordinaire Sam Bayard to talk over the finer points of copyright, trademark, and scamming the system.
How do you describe your job to the uninitiated?
I think of it as trying to make sure that the production of scripted stories doesn’t infringe on anyone’s intellectual property rights. Mainly copyright and, to a lesser degree, trademark rights.
What is the difference between copyright and trademark? Is one more difficult to deal with than the other?
Copyright is protection against the (unauthorized) use of someone else’s artistic expression, more or less. It applies to anything you can think of that has any original expression in it. It’s photos, artwork, footage, movies, books etc.
One thing about copyright that’s important is that it’s bounded in time. It only applies for certain lengths of time. Right now it’s the life of the author plus 70 years in the United States. It’s a long period, but it ends at some point…and things become in the public domain. So old photos and old songs etc are no longer covered by copyright, they become free to use.
Copyright protection is strong and strict while it applies, and then when it’s over it’s over.
And for our purposes, the rules are much stricter about using someone’s artistic expression (as copyright) than trademark.
You actually just touched on it there briefly, how would you define the public domain?
The Public Domain is… when, for one reason or another, there’s no copyright protection for a work. It’s usually because the work is very old and the term of copyright has expired. In the United States, it’s usually pre 1923, so anything that was first published before 1923 is in the public domain in the US. Most other countries measure it as a number of years after the author’s death. Most commonly 70 years. But as a general rule of thumb, to make sure it’s public domain across the whole world, hopefully we’ll find it’s 100 years after the author’s death.
Sometimes Public Domain is based on who creates it, and the big example in the US is US government works. Federal government works, works created by a federal agency, an employee of the federal government, there are no copyright protections for that. Like NASA photos of space is a very common one. Footage of Donald Trump giving a press conference that’s on whitehouse.gov.
Awesome. And back to Trademark?
Trademark is totally different (than copyright). It’s the protection of a mark. A sign, a symbol, a word, an indicator that identifies the source of a good or service. So Coca Cola, Tide, Apple. And it’s not a complete prohibition on using that word or symbol, it’s a prohibition on interfering with the source identifying function of that mark.
And so the law there protects against confusion about that mark. You infringe someone’s trademark if you confuse someone’s customers into thinking your product is associated with that mark, when it’s not. And the thing about trademark is it lasts forever, it’s not like copyright, it’s not bounded. If you continue to use your mark in commerce, then you can protect that mark for all time.
In general, there’s more legal protection for film/tv productions using trademarks, then there are for film/tv productions using copyrights.
Copyright only applies to recreating someone’s expressive work where as trademark has more to do with the product or the item itself. For example, Coca Cola has a very powerful trademark, if the law prohibited you from showing a Coca Cola or saying the word Coca Cola, you start to have serious problems from a 1stamendment perspective, from a society perspective. You would have a problem if you can’t show a Coca Cola or can’t write a story that a Coca Cola is involved in.
So basically, it’s easier to have a real product or brand on set because that deals with trademark where as having any kind of artwork is a problem because that deals with copyright?
Let’s say you use a real product in a film without permission and a company, like Coke, brings a suit against the production for trademark infringement. What standards does the court use to decide the case.
There’s a specific test the courts apply called The Rogers Test that says the 1st Amendment protects your use of a trademark in an expressive work, like a film, if:
1) It’s artistically relevant to the expressive work.
2) It isn’t explicitly misleading.
So that’s a very easy test for us to pass. We’re usually using it for some barely minimal artistic relevance, it’s a very low bar, it doesn’t have to be highly relevant, it just has to be minimally relevant to the story or to the set or to the atmosphere. And the reasons can be anything. It can be we want to create a realistic looking set, that can be artistically relevant. And then explicitly misleading, that’s also very easy not to run afoul of. The mere use of the trademark itself isn’t explicitly misleading, unless you have a production making some dumb outright claim that Coke sponsors what’s happening in the film.
As a TV or film production, you can defend against claims that your use or mention of real products and brands is trademark infringement or trademark dilution based on these 1stamendment principles, so I tend to be much more lenient about those uses.
It sounds like there’s a pretty wide latitude with real brands/products, but I’ve definitely had issues with clearance lawyers telling me we can’t use Budweiser and other brands in the past. Are there limitations to this First Amendment argument?
There are some limitations. You often will find clearance lawyers who will tell you, don’t put a real product in an unsavory setting. Don’t have the guy drunk driving with a real beer in his hand. Don’t have the murderer wear a Yankees hat. Don’t use a Louisville Slugger branded bat to kill somebody.
There are a couple reasons why that comes into play. One, it’s just a practical assessment. It’s not really the law but, as a lawyer, you’re not just looking for when the law is broken or when you can defend, you’re advising your client “Don’t mess with that, don’t do that, that’s going to make them object and then you’re going to have to spend money to defend it,” so unless there’s some kind of incredibly important creative reason and it can’t be done differently, we will generally advise against those kinds of uses. Just because it’s more likely that Coke or the Yankees will object and then you have to defend and you have to spend money and all that.
Alright, so it’s more about not spending the time and money to defend a claim rather than outright breaking the law in that case.
Right. The other wrinkle is sometimes trademarks have copyrighted elements. Because trademarks have artwork (graphics etc) and artwork is protected by copyright. Theoretically, you could get a company that sues you for trademark infringement and copyright infringement because the logo has graphic design. We don’t really know what the answer is there. We will either take the risk or steer people away. A good example is the NFL and MLB. I will often, because of how litigious those companies are, I will try to steer productions away from the more graphic heavy logos of those companies and steer them more toward the ones that are more text based. Text and colors are ok, avoid something more graphic. So far, the leagues have never sued anyone for copyright infringement over the use of a logo. But if they did, it would be down to a fair use analysis and I’m not sure that the productions would win.
It does seem like certain companies like Netflix, HBO etc are more comfortable with assuming the risk for trademark infringement and it shows in all the real brands they use as set decoration.
If it’s more normal use, background use, and using the product as intended, most lawyers will let you do it. Every once in a while, you will find lawyers who are very conservative and want to blur everything, you have to clear everything etc, but I don’t think that’s the right view of the law. As you mentioned, if you watch a lot of high production value films and elite television programming on HBO and Showtime and Netflix, you’ll see that it’s chock full of real products. I can’t say for sure that isn’t all placement, but I would guess at least half of it is not cleared, at least. And a lot of productions (now) you just wouldn’t clear any of those products.
Are there certain legal cases or precedents that talk specifically about set decoration in film/tv?
On the copyright side, somewhat fortunately and somewhat unfortunately, there are very clear cases that have come out in the last 15 years that talk about set decoration.
The most famous one is called Ringgold vs. BET. It was during the mid 90’s and BET was doing a television show with a scene in a church where they had a very fancy decorative quilt on the wall. It wasn’t just an ordinary quilt, it depicted scenes of people. This was more like a painting or more like a photo. It was very clearly advanced quilt work representing realistic scenes and it was prominently shown on the wall and it was shown for many seconds. Faith Ringgold is the artist that made the quilt, she sued because it wasn’t cleared. BET defended, and said “It’s fair use. We were setting the themes. We were trying to show scenes of life in this church so this was thematically relevant and it helped us establish the set.” And the court said absolutely not, that’s not fair use, you’re intentionally inserting this art into your set and you’re using it for the reason it was created. It’s decorative and you’re using it as decoration, it doesn’t matter that it helps your themes.
And that was a very, very important precedent because that’s why everyone now is like “Holy shit! We have to clear everything!” If that’s true, any piece of art you put on the set has to be cleared.
Wow, that poor set decorator on the BET show. Are there any legal precedents that make it easier for us to use copyrighted material?
There was a case about Seven. In the murderer’s apartment in Seven, the director took these black and white art photographs and overlaid them with some kind of mesh and put them in a light box and did some kooky, crazy stuff with it and it was kind of visible but you couldn’t really tell what it was. The photographer’s name was Sandoval and the case is Sandoval vs. New Line Cinemas. It wasn’t really looking good (for New Line), but ultimately what swayed the court there is that they were in the background and difficult to see. So the court came up with the idea that if something was indiscernible, in the background, it’s fuzzy, or it’s truncated, it’s not even fair use because you don’t get that far. It’s something called de minimis use, which means you’re not even infringing the copyright because you’re not using enough of it.
So there’s another principle we use, which is if you can’t see it well, if it’s in the background or it’s fleeting or it’s fuzzy, then that’s going to be ok. But the problem with that is that it’s very difficult to rely on that from the script stage to the shooting stage to the cutting stage. You never know when the director gets on the set, where they’re going to go. You can’t rely on that in the first instance. I will often give an answer of it doesn’t matter if it’s in the background, if you’re going to put it on set and it’s a copyrighted expression, you have to clear it, because we don’t know, this could end up being right over the actor’s shoulder. Sometimes we’ll rely on it on the other end. Things slip in, you get a cut, and we’ll rely on it because something is just in the background. Shooting in the street, there’s billboards, ads on telephone poles etc, we’ll say yeah, it’s ok because you can’t really see it that well, it goes by fast etc.
It’s true, I think basically every time we can’t get a release for artwork I’m arguing that it’s going to be so far in the background we’ll never see it. Lies. Going back to Ringold for a moment, sometimes there is this mania about clearing every single thing that could in any way resemble art. Like a tissue box, I’ve been given grief over a tissue box. What are your thoughts on objects like that?
Utilitarian articles. Things in the world that are useful, utilitarian objects, that don’t have separable, expressive artistic content: my computer, my chair, my desk, the couch. None of that, putting aside some small possibility, is usually protected at all. So that’s why you can build ordinary sets with stoves, counters, TV’s, computers, all that. And that’s why all that stuff goes into the trademark box eventually, because the computer has an Apple logo but that’s ok.
And that’s why fabrics get really complicated. Clothing is generally ok, but if it’s a Metallica t shirt with a big graphic image on it, it’s not...
Because Metallica is a bunch of jerks?
...because just because you put it on a piece of fabric, if it’s artwork that is separable, that separable artwork has to be cleared where as the t shirt itself doesn’t. And fabric is in the middle. If it’s a checked pattern? The whole thing starts to break down when it gets to pattern. Technically, I think it’s protected but do we actually worry about it? No. At a certain point…it comes down to a gut reaction of how unique and distinctive is that (pattern).
Ok, maybe this is a good segway to start looking at some individual elements that seem like they’re always judgment calls. Starting with patterned wallpaper.
Wallpaper is mind boggling. Right? Because it is artwork, but you would have a lot of trouble clearing vintage wallpaper. It’s kind of a gut reaction. Some lawyers will say “That’s too distinctive” and others will say “That’s ok”. And especially if it’s very old, the odds of a claim are very low. If it’s something from Flavor Paper in Brooklyn, you go to Flavor Paper and clear it. And it tends to work. Because if it’s something that’s old and it’s impossible to find the copyright owner, it’s probably going to be ok. And if it’s something new and easy to identify the copyright owner, then it’s better to go clear it.
Alright, here’s a softball, what about flea market art? You find a painting you want to use and there’s no way to know who the artist is or what year it’s from?
Well, the odds are the person is dead and they have no relatives and it might be in the public domain. But, I am on the side of you can’t use it. Unless there’s more research to be found. If you really can’t figure out who the artist is, I will say no you can’t use it. You don’t have enough information to make a judgment. What if it is some relatively fancy artist who has an estate that polices it? You just don’t know. And because of the Ringold case you don’t really have a fair use argument. It’s very risky to let it be on set.
But at the same time, if you can nail it down with some specificity, like an antique, it could work. A lot of times an antiques dealer will be able to say, this is from such and such school in the 1850’s and especially if it’s starting to seem like it’s from the 19th Century, I think you’ll find a lot of lawyers who are ok with it.
What about pre existing graffiti at an exterior location?
Graffiti is the one that always amazes me now. It’s amazing that graffiti artists will assert claims. You illegally put artwork on a building and then someone filming outside catches it and then you sue them. And there’s really nothing in the law that says it matters that it (the graffiti) is illegal. Now, as a matter of practical risk and ambience in the court etc, there’s lower practical risk that there’s going to be a claim if it’s an illegal piece of art. I don’t worry about graffiti that much, but if it was some rich artistic piece, I would be worried about it.
I feel like clearances has become such a hot button issue over the last 25-30 years. Designers who were working in the 70’s/80’s have told me that it wasn’t much of a consideration for them. Why do you think it’s become so prevalent recently?
I’m totally speculating, but definitely the Ringold case accelerated the concern. Where as for many years, people didn’t think of it that way. They thought of it as, I sold the painting and someone has the painting and they own the painting and they can use it however they want. So maybe back in the old days people weren’t very sophisticated about copyright law and they thought someone owns the object and they can use it how they want. And it wasn’t intuitive that building the artwork into the new audio visual work was creating a copy, which is essentially, legally, that’s the theory. Copyright gives you the exclusive right as the owner to prohibit certain actions, one of them is to reproduce the work, and that is the logic for why using it as set dressing and filming it is a violation of copyright. Because the act of filming creates a reproduction. And I think for many years people probably didn’t realize that.
But also it may be that as years went by copyright lawyers got more sophisticated, there’s more money in all of these businesses. There’s more and more money being made, people start to become parasitic off of it, the lawyers are becoming more sophisticated from it, doing more deals.
I think it’s just a general, gradual sophistication and then it got accelerated by legal precedent that said there’s a claim here and now it’s just out of control. Sometimes it’s like, I can’t believe what we do. We’re doing all of this?
Ok, let’s get to the really good stuff, how to scam the system aka any kind of work arounds. I feel like there are a lot of wild theories out there. For example, I’ve heard a rumor that a company only has a certain amount of time, say 90 days, from your first public screening to sue. So if your first public screening is low key then maybe you can fly under the radar for long enough to wait it out?
That’s totally incorrect, that’s totally false. The statute of limitations on the potentially relevant claims is much longer than that. It might impact their ability to get an injunction (i.e., to stop the distribution of the film to the public), but it would not impact their ability to sue.
Alright, that seems pretty definitive. I don’t know if you’ve seen the movie Good Time, but they use a Sprite bottle filled with liquid LSD as an important prop. I assumed they were able to use it because of some kind of a workaround…
The answer to that is, Sprite has no legal claim. That’s the situation we talked about where as a matter of practical risk people tell you not to do that but there’s no claim, Sprite can’t sue you. You’re not saying Sprite contains acid, there’s no trademark infringement. You’re using it in an expressive work and no one would confuse the trademark, no one is going to think that you are Sprite and Sprite is you. There are a lot of conservative lawyers who wouldn’t want you to do that, but can you do that? Yes. If it’s important enough for the script then go for it. And that’s the work around, find a lawyer who actually knows the law.
Ok, another workaround myth, I’ve also heard people cite the Candy Store Principle ie “If there are more than 10 brands in a shot, none of them need to be cleared.”
Well, that is totally fine but that’s not because it’s more than 10 brands, it’s because it’s product packaging and no one’s going to sue for product packaging. Again, there’s no trademark infringement there. It’s the same with bottles behind a bar, there’s no issue there from a legal perspective.
It seems like you’re telling me there aren’t any scams I can use to get around clearing things?
From my perspective, there aren’t any scams or tricks. Certain things are ok because people have done it for a long time and no one seems to object and no one seems to care. And that might be a way of thinking about it. I think that’s what good clearance lawyers do, they don’t go after the nit picking, small things that no one is likely to care about. They just identify the big issues and figure out how to deal with them.
So that is a work around. It’s not a scam, I would never call it a scam.
Sam, thank you so much for your time.