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Rights of Publicity, Libel and Other Laws

In this excerpted from the book "Intellectual Property Law Primer for Multimedia and Web Game Developers", the authors explain how to clear rights for music, art, and other intellectual property.

In addition to the intellectual property laws discussed above, you must also be familiar with several other areas of law that deal with the right of the individual to control his image and reputation.

The right of publicity gives the individual the right to control the use of his name, face, image or voice for commercial purposes. For example, Ford's advertising agency tried to persuade Bette Midler to sing during a Ford television commercial. She refused. They hired her backup singer. The performance of the backup singer was so similar to Bette Midler that viewers thought Bette Midler was singing. On the basis of that confusion, she sued and won $400,000 in damages.

Libel and slander protect an individual against the dissemination of falsehoods about that individual. To be actionable, the falsehood must injure his or her reputation or subject them to hatred, contempt or ridicule. The individual can obtain monetary losses as well as damages for mental anguish.

If you intend to use pre-existing material from television or film, you may also have to deal with the rights of members of the entertainment unions to get "reuse" fees. These unions include the Writers Guild, the Directors Guild, the Screen Actors Guild, American Federation of Musicians, and the American Federation of Television and Radio Artists. Under the union agreements with the film and television studios, members of these unions and guilds who worked on a film or television program have a right to payment if the work is reused. This topic is discussed in more detail in our book. Although you as the game developer are not signatory to these agreements and may not be directly liable for these payments, the license from the film and television studio will generally make you responsible for paying them. These payments are generally modest. However, if you are using many clips these payments can become quite expensive.

If you use professional actors, directors, or writers in developing your game, you will also need to deal with these unions. Most of the unions have very complex contracts developed specifically for their traditional film and television work. Both SAG and AFTRA have developed a special contract for multimedia projects. You should be aware that if you use professional talent, you should be prepared for the additional complexity arising out of these union agreements.

HYPOTHETICAL GAME CD-ROM AND WEBSITE

This section will apply the legal rules just discussed to the creation and distribution of a new game based on a retrospective of the Battle of the Bulge including both history and game play. The work is being created by a new company, Panzer Productions. Its intended market is individuals. It will be distributed on a CD-ROM and as a website. The game, in addition to "story" text created by Panzer Productions and video footage which it shot at the front, will consist of the following elements:

  • Magazine articles about the generals and excepts from various books about the battle.
  • Still photographs.
  • Excerpts from period motion pictures.
  • Music, including some of the hit songs from the era.

A. Text Works.

From a legal point of view, the "story" text created by Panzer Productions is treated differently from the magazine articles and book excerpts. As the creator of the new text, Panzer Productions will probably own the copyright in the text, either through the work-for-hire doctrine or assignments.

For the magazine articles and book excerpts, however, Panzer Productions is most likely not the copyright owner. Panzer Productions must go to the owners of the copyrights in the articles and books to get permission to use the articles and book excerpts.

B. Photographs.

Copyrights in photographs are initially owned by the photographer, although they may either be assigned to another party or transferred to the photographer's employer under the work-for-hire doctrine. The determination of who owns the appropriate rights in the photograph can be very difficult and time consuming because of fragmentation in this industry. For example, the fact that a photograph appeared in Time Magazine does not necessarily mean that the Time owns the copyright in the photograph. Time may only have a license to use it once in its magazine. Common limitations in the licensing of photographs include the color of reproduction, the medium (i.e. newspapers, magazines, etc.), and attribution as well as those relating to numbers of copies.

The rights required for interactive and web games would be quite different from those which are normally granted to use photographs. For example, the photograph may appear several times throughout the work and the number of its appearances could be controlled by the viewer. Such flexibility is quite different from the rights traditionally granted in the photography industry.

C. Film and Video.

Once again, Panzer Productions must distinguish between film or video which it has created (the footage which it shot at the battlefield) and film or video owned by third parties (the excerpts from the motion pictures).

As to the material it created, the battlefield footage, if the legal issues are properly structured, Panzer Productions owns the copyright. The "authors" of a videotape may include the actors, directors, scriptwriters, music composers and the cameramen. To avoid the problems of joint ownership of copyright, Panzer Productions should obtain the appropriate agreements from the individuals involved in creating its videotapes. The use of feature films in games can be particularly complex and expensive and generally requires multiple permissions such as clearing the music used in the videoclip, paying reuse fees to the entertainment unions such as SAG and Directors Guild. Feature films are frequently based on a novel whose use is licensed to the studio. The film may also use music developed by a third party. Consequently, the owner of the copyright in the film may not have the necessary rights to the music or the underlying novel to permit their use in the multimedia work. Panzer Productions may also have to obtain rights of publicity releases from the individual actors depending on their contract with the studio.

D. Music.

To use music in the new game, Panzer Productions must get permission from the owners of the copyrights in the songs. Musical composition copyrights are usually owned by music publishers.

If Panzer Productions wants to use excerpts of existing recordings of music - from the recorded sound tracks of the winning films, for example - it must get permission from owners of the copyrights in those sound recordings, in addition to getting permission from the song copyright owners. A sound recording copyright covers the expression added by the record developer in creating the recording - the way the song is sung or played, the arrangement, the mixing, and so on. Sound recording copyrights are generally owned by record companies.

If Panzer Productions will be recording its own version of each song, this second level of permission - permission to use an excerpt from a copyrighted sound recording - is inapplicable.

Rights in music are quite complicated. The rights which Panzer Productions must consider obtaining are described below:


1. Mechanical rights. Mechanical rights are the basic right to use a musical composition. They do not include the right to publicly perform the music (see below). A mechanical license also does not permit the use of the music with still or moving images. Such use requires a "synchronization" license (see below). Although copyright law provides a compulsory license for mechanical rights, most licensees prefer to obtain these rights commercially through the Harry Fox Agency or other similar agencies. This preference is based on the very onerous payment and accounting requirements imposed by the Copyright Act for "compulsory" licenses.

2. Synchronization license. If the music is to be synchronized with still or moving images on a screen, the licensee must obtain a "synchronization" license. Although these rights may also be handled by the Harry Fox Agency, in some cases Panzer Productions may need to contact the musical publisher directly.

3. Public performance rights. Panzer Productions will probably also need a license for public performance if its game will be shown to students and other audiences. Such a showing would be considered a public performance. A performance is considered public if it is "open to the public" or at any place where a substantial number of persons outside of the "normal circle of family and social acquaintances" gather. Most music publishers permit either ASCAP or BMI to license their public performance rights (Harry Fox Agency does not handle the public performance right).

4. Right to a particular performance or recording. As described above, if Panzer Productions wants to use an excerpt from a particular recording of a song, it must get permission from the owner of the sound recording copyright. The licenses described in 1 through 3 are limited solely to the right to use the musical composition. Thus, unless Panzer Productions is prepared to have new artists record the music, it must negotiate with the holder of the rights to the particular recording (a record company, most likely).

SPECIAL WEBSITE ISSUES

The use of these materials on a website poses a number of special issues. First, the licenses of third party rights should be worldwide in scope because of the international nature of the Internet. It may be difficult to obtain such broad rights, because they may be owned by different parties. For example, many book publishers exclusively license or assign copyrights to different companies for distribution in different countries. Consequently, you would have to obtain clearances from several different companies for a single work. Second, you will need to license public display rights for text and photographs and public performance for video clips and music. You generally don't need those rights for a CD-ROM because it is used in the privacy of a home, although you would need public performance rights to demonstrate the CD-ROM at trade shows. You would also need to license such rights if the CD-ROM is to be used in a school or company where the audience will be not be limited to family and friends.

The creation of a website, just like developing a CD-ROM, requires careful attention to the legal as well as the technical aspects of the development. The online industry is so new that it has few or no traditions of the roles of the parties. The development contract needs to address the following issues: ownership of the copyright and other rights in the completed website, responsibility for the website design, definition of milestones in development process, definition of website performance specifications, method for confirming that the website meets the performance specifications, responsibility for licensing third party software, liability for the failure of the website to perform in accordance with the specifications, the responsibility for continuing performance and updating the website, method and timing of payment, remedies for failure to perform and liability for infringement of third party rights.

CONCLUSION

An understanding of legal issues is critical to success in the multimedia and online game industry. These issues are complex because of the youth of the industry and the many industries upon which it draws to create its products.

This primer is based on the Multimedia Law and Business Handbook (1996) from Ladera Press, which has been praised by the Interactive Multimedia Association. This summary of the law should not be viewed as "answering" most questions (the book discusses these issues in more detail in 320 pages and includes twenty -two sample agreements to show how these issues are dealt with in actual transactions) You can order the book by calling 800-523-3721 or faxing 810-987-3562.

 



J. Dianne Brinson has a Bachelor of Arts in Political Science and Russian, summa cum laude, from Duke University and a law degree from Yale Law School. She is a former tenured law professor at Georgia State University and has taught at Golden Gate Law School and Santa Clara School of Law. She is now in private practice as a consultant in Menlo Park, California. She may be reached at [email protected].

Mark F. Radcliffe is a partner in the law firm of Gray Cary Ware & Freidenrich in Palo Alto (formerly Ware & Freidenrich). He has been practicing intellectual property law, with a special emphasis on computer law, for over fifteen years.  He is on the Board of Directors of the Computer Law Association and is the Editor-in-Chief of the "Journal of Internet Law." He can be reached at [email protected].

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