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September 15th, 2004
Getting Only Limited Rights?
More than four years ago, Polar Bear Productions, a Montana-based production company, sued Timex Corporation, alleging that Timex continued to use footage licensed by Polar Bear after the term of the license had expired. Even after two trials, and a decision earlier this month by a federal appeals court in Washington, the lawsuit isn’t over, with the parties still fighting over the calculation of damages and other issues.
As part of its marketing efforts for its "Expedition" line of watches, Timex entered into an agreement to sponsor an extreme whitewater kayaking film produced by Polar Bear, entitled "PaddleQuest." Polar Bear agreed to feature Timex-branded equipment in the film and to use the Timex logo in packaging and posters for the film. In addition to paying a sponsorship fee, Timex agreed to help promote and show the film. Timex also obtained a one-year license to use the film in promotional materials.
Seeking millions of dollars in damages, Polar Bear alleged that Timex had infringed Polar Bear’s rights by, among other things, using excerpts from the film at trade shows and in sales training videos, after the license had expired. The appeals court, when evaluating part of Polar Bear’s damages claim, said in its decision that, "having taken the copyrighted material, Timex is in no better position to haggle over the license fee than an ordinary thief."
Using licensed footage?
Advertising agencies and production companies commonly use stock or other licensed footage in television commercials for many reasons, such as to reduce production costs, to meet tight deadlines, or because the footage can not be recreated. When you license footage, you frequently only get the right to use it in a limited number of commercials, for a limited time, in certain media, and in a specific territory. The problem that agencies and production companies face, however, is that even though they are only obtaining limited rights to use the footage, their contracts with their clients may require them to provide unlimited rights.
When using stock footage, if you want to avoid being called an "ordinary thief" and being embroiled in years of litigation, here are a few simple steps you can take to help protect yourself.
- If you are only obtaining limited rights to use stock footage, make sure that your contract with your client permits this.
- Check with the client to see what rights are actually needed. Don’t assume that the client will only be using the commercial on-air, in the United States, for one year. If the client needs the rights to use the spot in Canada, on the Internet, in-store, or for additional years, for example, make sure that you obtain those rights.
- Get any additional rights that you may need up front. Additional rights, and options for additional usage, can often be obtained for much lower cost if they are part of the original deal. If you go back later, you may be forced to pay a premium, or the rights may not even be available.
- Communicate, in writing, to your client what usage rights you have obtained, and get your client’s approval, so that there is no confusion later on about how the footage may be used.
- Get indemnified by your client for any claims arising out of any of misuse of the footage by your client. If the client violates the footage license, why should you be responsible?
- Don’t assume that stock houses won’t care if you use footage for low profile, off-air purposes that are not permitted by your license. If they do, they may look for big dollars.
Using stock footage doesn’t have to mean big risks. Communicating with the client up front about what rights are needed, and getting it in writing, can help you avoid taking a licking later on.
- Jefrrey A. Greenbaum
This article first appeared in the September 2004 issue of SHOOT magazine. It presents a general discussion of legal issues, but is not legal advice, and may not be applicable in all situations. Consult your attorney for legal advice.
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