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December 12th, 2003
Watch Out For That…
There’s that familiar moment, during a shoot, when someone turns to the producer and says, "by the way, did we get permission to use that [insert name of really important prop here]." With short production schedules, tight budgets, and little understanding about what rights manufacturers have, production companies regularly use props without getting permission. Not surprisingly, manufacturers who spend big dollars to create their brands frequently don’t like it when they see their products appear in someone else’s advertising.
Many would say that it’s just not realistic to expect production companies to get releases for all props. Who is responsible for the props? When do you need a release? Is permission from a prop house enough?
Production contracts divide up responsibility between the production company and the agency. The production company is typically responsible for the things it supplies, such as the props. When the job is being bid, you should think about the key props you will need, and determine who will be responsible for them. You don’t want to learn, once a commercial is on the air, that it was your job to get the release.
There’s a big difference between owning the physical “thing” and owning the “rights” (such as the copyright) in the thing. A prop house may just give you access to a prop, rather than the rights. If a prop house says that it has the rights to use a prop, at a minimum, you should ask to see a copy of the release that it obtained from the manufacturer, so that you can satisfy yourself that all necessary rights have been secured.
There’s no “one size fits all” rule for when you need permission, and many props present complicated issues. For example, if you’re going to use a record cover, many rights will need to be obtained, such as the rights to use the cover art, the photographs, and the pictures and names of the artists. Here are some basic principles, however, that can help you to avoid claims.
Copyright law doesn’t generally protect objects that are purely functional, such as a sofa or pair of tennis shoes. However, design elements that are separable from the utilitarian aspects of an object – such as an original fabric design incorporated into the sofa or shoes – may be protected. Objects that are not merely utilitarian and that reflect original designs – such as toys and jewelry -- may also be protected.
Trademark law also provides protection. Manufacturers commonly claim that the use of a product in advertising without permission creates confusion about whether the manufacturer has endorsed, or is somehow associated or affiliated with, the advertiser. Manufacturers are less likely to complain if the prop doesn’t have any visible trademarks and is not otherwise identifiable as a particular brand.
Any controversial or derogatory use of a prop, or the use of a prop in a manner that does not accurately show product performance, may also increase the risk of getting a claim.
The risks are very real. Caterpillar recently sued The Walt Disney Company and Buena Vista Home Entertainment, asserting that the unauthorized use of Caterpillar bulldozers and trademarks in “George of the Jungle 2” was likely to confuse consumers into believing that the movie is sponsored by, or associated or affiliated with, Caterpillar. (The defendants claimed that permission had been obtained from a dealer.) The court refused to prohibit the release of the film, but hasn’t yet ruled on whether Caterpillar’s rights were violated.
It may sound surprising that some companies will sue over the unauthorized use of their products. But, like the character George who smashes into a tree while swinging from a vine, if a company complains because you’ve used its product, prominently and without permission, it may be awfully hard to say that you didn’t see it coming.
This article first appeared in the December 2003 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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