Filmmaker-2-Filmmaker: Tip 5 - Why Public Domain Music Isn't As Cheap As You Thought

During my last year in film school, I got some bad advice.

I was working on my student film, the one that would have to play in the senior film festival. I had no budget and most of my actors and crew were generously donating their time to help me finish what I expected would be a masterpiece.

As post-production loomed, I began searching for music to score my film that fell within my budget - zero dollars. I was hoping to hire a local Providence-based band, but none of the ones I contacted were willing to do it for free. While I didn’t know much about copyright back then, I knew enough to avoid using popular songs and I didn’t want to get pinched for illegally downloading music (back then, Napster was all the rage).

Witnessing my plight, a friend suggested that I use classical music. His reasoning: the songs were composed hundreds of years ago and were in the public domain, so I wouldn’t have to ask anyone's permission and I definitely wouldn’t have to pay anyone for the privilege. Even better, classical music would give my film an air of sophistication, like 2001: A Space Odyssey. Because nothing demonstrates film school hubris quite like comparing your student film to one of the greatest pieces of cinema ever made.

Anyway, I followed my friend's advice and used classical music. The film played in the student filmfest and, while not exactly on par with Kubrick’s masterwork, it was moderately well received. I sent it off to some real film festivals and was rejected by all of them.

My friend was right about one thing: music composed before 1922 is not protected by copyright law. As a result, it lives in the public domain (meaning you can use it for any purpose without paying for it). But it was still bad advice. As I later learned in my producing career, where music is involved, not only is the song itself subject to copyright protection, the RECORDING of that song is also explicitly granted copyright protection. Which means that most music is protected twice under the law.

Why are recordings granted their own copyright protection? Because they're considered separate works of artistic expression. The copyright to a piece of music protects only the WRITTEN music and accompanying lyrics. The copyright to a recording rests with the specific audio RECORDING of the song. More than that, each separate recording - even if it’s of the same song - is granted its own copyright. A live recording of Eric Clapton’s Layla (like the famous MTV Unplugged version) has a separate copyright from the original recording which appeared on the 1970 album Layla and Other Assorted Love Songs because it's a completely unique and discrete interpretation of the song. And each of those copyrights stand apart from the copyright granted to the words and music as written by Clapton and his partner Jim Gordon.

Even if the music is in the public domain, copyright protection will still attach to recordings made after 1922. Just yesterday I was listening to a rendition of Fare Thee Well (Dink's Song) by Marcus Mumford and Oscar Isaac off the Inside Llewyn Davis soundtrack. The origins of the song can be traced to 1904, which means it predates modern copyright law. But a simple iTunes search will reveal dozens of recordings of the song by Bob Dylan, Pete Seeger, Dave Van Ronk, Jeff Buckley, Ramblin’ Jack Elliot, and many more. Each recording of the song gets its own copyright, even though the music and lyrics are no longer protected.

So the moral of the story for all you filmmakers out there: don’t do what I did and think you’re getting off scott free just because you chose some archaic piece of music that was popular during the Napoleonic wars. You’ll still have get permission from the owner of the recording's copyright.

Ask Greg: How To Fight Back When Someone Has Infringed Your Work

Q. I recently discovered that someone was selling T-shirts featuring my illustrations. They've credited me as the artist on their website, but I've received no financial restitution and they didn't ask my permission. I want them to either pay me or stop selling the T-shirts altogether. What are my options for getting them to stop?

A. Let's be honest, you don't want to sue anybody. You don't have the time and you probably don't have the money, and even if you did, the effort and emotional toll it takes is astronomical. So before you go down that road, there are some things you can do to save time and money, and hopefully avoid court.

1. Send the infringing party a “cease and desist” letter. You'd be surprised how often people don’t even realized they're infringing someone else's work. Oftentimes, they think the work is in the public domain simply because it's available online. And even when people do infringe your work on purpose, an officious sounding letter is usually enough to make them stop. While you can always draft a cease and desist yourself, it has more teeth if it comes from a lawyer.
2. Negotiate! If you reasonably feel that the infringer isn't acting with malicious intent, give them a call and see if they're willing to talk turkey. You want to get royalties for all T-shirts already sold, and you definitely want to get a fee for all future sales. If this works, it's a classic win-win. They stay in business and you get a financial benefit. At the very least, you'll get a sense of their motives.
3. Use social media to rally people around your cause. This can be a surprisingly effective way to get public support and put pressure on the infringer to do the right thing. You may have heard this story about a graphic designer who wasn't paid for poster designs he made for Spike Lee's newest film, Oldboy. The designer sent an open letter to Lee recounting his abuses. This was a smart choice on the part of the designer. Even though Lee, like most directors, has no role in the marketing of his films (marketing is almost exclusively the domain of the studio), by going right to the top, the designer started creating groundswell. And if he can get Lee to go to bat for him, the pressure placed on the studio could be overwhelming.
4. Lastly, BE NICE, no matter how much of a jerk the other party is. That old saying about catching more flies with honey than with vinegar - it's absolutely true. I can't tell you how many times I've seen victims of infringement get swatted by a judge because they acted like unrepentant assholes. If you look worse than the guy who actually stole from you, you're going to lose, plain and simple. In general, when interacting with a potential legal adversary, you should follow my patented Famous Three Step Rule For Dealing With Infringers: First time be nice. Second time, be nice. Third time, be nice. You can always be direct, but politeness really can make the difference in your outcome.

If you do all of these and the infringer still won't pay you back or cut you in, it's time to sue. Call a lawyer and get that ball rolling ASAP (you have three years from the discovery of the infringement to bring a lawsuit). And if you have anymore questions, don't hesitate to Ask Greg.

Licensing Getty: A Cautionary Tale For Artists Using Stock Photos In Their Portfolios

[Yesterday I got an email from a reader telling me a pretty scary story.  She's permitted me to share it, but for the sake of confidentiality I'll change her name to "Jean".]  

Five years ago, Jean was hired to design an ad for a local business.  As part of the design process, she incorporated a stock photo from Getty Images, an online stock photo library.  Jean's client liked the work and paid Getty a licensing fee to use that photo in the ad.  The terms of the licensing agreement stated that the image could be used in print ads only.  Jean put the ad on her personal portfolio website.

Last July, Getty's netbots discovered the ad w/image on Jean's website.  Because the terms of the licensing did not include website use, Getty sent her a letter accusing her of breaching the license agreement and demanding $8,000 in usage fees.  The netbots also found two images that she had used in mock-ups for other clients, but those mock-ups were never approved by the clients and the images never licensed.

Faced with a pretty scary situation, Jean did what a lot of people would do: she took down the images.  This seems to have placated Getty because no more demand letters were sent.  But did she really have to take them down?

Well, there are two issues determining whether Jean should fear Getty's wrath.  1) Did Jean's use of the image constitute copyright infringement?  2) Did Jean's use of the image constitute a breach of contract?

Regarding Copyright Infringement

Most IP lawyers agree that displaying your work in a portfolio, even when the copyright is owned by someone else, is permitted under fair use.  That's because portfolios are non-commercial in nature, and don't generally compete with the copyright owner's financial interest.  Jean's case is slightly different because the artist and the client aren't the only parties involved.  There's a third-party copyright owner (Getty) who is laying claim to the image.

But even with that wrinkle, Jean is okay leaving the ad featuring the licensed image on her site.  It doesn't conflict with Getty's market and she's not profiting from its display.  She's using it as an example of her prior design work.  No copyright infringement here.

Regarding the unlicensed images, I think removing them was the right decision.  On the face of it, fair use applies to these images just as they would to the licensed image.  But fair use is a squishy doctrine and in the absence of a license agreement, a judge could look at Jean's website and reasonably believe that she's not an innocent infringer (using images without permission from a website whose sole business is to license those images could indicate intent to pirate).

Regarding Breach of Contract

According to Jean, Getty placed very specific conditions on the use of the licensed image - print ads only, no web.  Any violation of those terms constitutes a breach of contract, which is why Getty sent her an $8,000 bill.

Getty is fiercely protective of its copyrights.  Their licensing agreements regulate every possible use of their images: the size of the image, number of times the image can be used, what mediums the image can be used in, and even placement of the image in the final artwork.  When I was a producer, I would license stock photos from Getty all the time and they negotiate like Iranian hardliners.  One time, I was trying to get their permission to use a single stock photo for a fifteen-year term in a documentary.  No matter how hard I pleaded, I couldn't get them to budge from a ten-year commitment.

That said, standard agreements like these don't usually make third-parties liable for breaches of contract.  Meaning that since the agreement was between Getty and the client, the terms of the contract likely didn't apply to Jean.  Therefore, Jean is not liable for breach of contract.

So What Can Jean (And You) Do?

Realistically, Jean had no legal liability for displaying her work on her website.  But to prove this, sadly, Jean would have to risk being sued by Getty.  And as I've discussed before, going to court and winning, especially on a fair use case, is still a loss because of the time, money, and effort she would have to invest in defending herself.  So the trick is to minimize liability before Getty can even send you a letter.

So, for all you designers who use stock photos in your work to stay (legally) safe, here are a few things you should always do:

1. All photos should be properly licensed by you or your client
2. Web use and/or portfolio use should be explicitly permitted in the license agreement
3. Even if the licensing is done by the client, read and understand the terms of the licensing agreement to understand your liability to the other parties (i.e. if the client pays the license fee, are you as the artist liable to Getty as well for a breach of the contract?)

Remember, as an artist, your portfolio is the face of your business.  The less work you can show, the less successful your business is.  But because Getty's first instinct is to throw lawyers at you, each of you has to determine for yourself whether fighting back is a viable option.  Following these three tips will help minimize that possibility.

[Author's Note: I'd be interested to hear from other lawyers out there if you've had different experiences working with Getty.  Ditto for artists.  Hit me back in the comments section below.]

Fairly Useful, Part Deux: Why It's Always Better To Ask Permission Than Beg Forgiveness

[It's the summer!  Which means all the movies in theaters are sequels, so why should this blog be any different?  Last week I wrote a follow-up to my Death of the Unpaid Internship article and it was a colossal hit.  Can lightning strike twice?  I shall endeavor to find out.]

Several months ago I wrote a post called Fairly Useful: Why Fair Use Is A Simple, But Dangerous Legal Doctrine.  The purpose of that post was to provide a bird's eye view of Fair Use, a concept that many artists know about but don't generally understand.  In that article, I said that Fair Use is "extraordinarily dangerous" when misunderstood and that if you're going to use someone else's copyrighted work, you're better off asking for permission.  Whereas that article was all about discussing the elements that make up a fair use claim, this article will elaborate on why asking permission is better than begging forgiveness.  And, as I often do, I will illustrate why with a story from my early producing career.

*****

I was on the second week of a location shoot somewhere near Bowdoin, Maine and I was looking for an eye-catching outdoor backdrop in front of which to film a conversation between our on-air personalities.  We drove around for what felt like hours looking for a suitable location and discovered that if there's anything  Maine lacks in multitudes, it's eye-popping outdoor backdrops.  Fortunately, we found our way to a quasi-civilized area and parked in front of a deli with a colorful and swirly logo.  Since we weren't going to film inside the deli, I decided not to ask for permission to film the logo.  Here's why:

1. We weren't bothering the deli owner or his customers.
2. We weren't on the deli owner's property.
3. The logo, while conspicuous, was in the background.
4. We would be there for a total of five minutes and the scene, when edited, would last ten seconds.
5. The show's format required a lot of driving, which meant that much of the filming took place inside a car... I was desperate to break up that monotony.

These were all bad reasons.  It didn't matter that we weren't in anyone's way, that we weren't on private property, or even that we'd be gone before the traffic light changed from yellow to red.  On the off-chance the owner saw his logo on TV, we would be, in the words of our in-house counsel, "royally buttf***ed."  He could sue us for copyright infringement, and while the issue was in dispute, we wouldn't be able to use the scene.  Either the show would be pulled from all future time slots - causing a significant problem for the network since ads are sold weeks and months in advance - or we would have to reshoot the scene and cut it into the show, which is the kind of expense that can only be made after firing an unwitting associate producer and using his salary to cover the cost of the reshoot.

Which isn't to say we would lose a lawsuit if the owner decided to sue.  This was a straightforward a case of fair use because it met all the requirements under the law.

1. The use was transformative because it didn't comment on the logo or the deli.  It was simply a tacit acknowledgment that the deli existed.
2. The use was non-commercial (even though the show was made for commercial reasons, that profit didn't arise due to use of the logo).
3. The use was minimal since it was in the background of a scene lasting no more than ten seconds.
4. The use did not negatively affect the market for the deli - if anything, I figured it was a bit of free advertising.

But that didn't matter.  As our lawyer explained to me when I returned from the shoot, getting sued and then winning (by successfully defending on a fair use defense) was still a loss because the amount of time and money required to defend ourselves would never be recouped.  If I had asked for permission, the best case scenario was that we would be allowed to film the logo.  The worst case scenario: the owner would either charge us a licensing fee, or say no outright and we would have to film somewhere else.  Either way would have been easier and cheaper than plodding through arbitration hearings or waiting to see if a judge would buy our fair use argument.

Lucky for me, history didn't pan out that way.  The owner was alerted to the sight of several video cameras milling around near his property and came to investigate the hubbub.  Even though I was a lowly associate producer, I was the only one in charge at that moment, so I took full responsibility (which mostly looked like groveling and blaming the cameraman).  Ultimately, the owner approved of what we were doing and signed a release for the logo.

*****

For artists, it's tempting to throw the dice and assume that you won't be sued.  Suing for copyright infringement is damn hard, and requires registration with the Copyright Office.  And many of those that threaten to sue are either bluffing or have dramatically underestimated the cost of following that threat all the way through.  But as a lawyer, I can tell you that despite all that stuff being true, taking the risk is still not worth it.  For every empty threat that gets made, I can point you towards a legitimate copyright lawsuit.   And when the time comes for you to actually beg forgiveness, it never works - especially with corporations.

You should always always always ask for permission because even if the copyright owner says no, that loss is nothing compared to what you'll lose if you wind up defending yourself in court.  Because even if you successfully make a fair use argument, it's still a loss.  As an artrepreneur, your money is time - and that should be spent making and selling your work, not defending yourself in federal court.

So the next time you find yourself wanting to use someone else's copyright work in your own art, ask them for permission.  The worst thing they will say is "no."  Compared to a years-long legal battle, that's not such a bad thing.

When Foreign-Born Artists Make the U.S. Their Home, a.k.a. Common Immigration Misconceptions

Here's something a little different.  A few months ago, I was asked by the Rhode Island School of Design Alumni Office to contribute a short legal column for the upcoming Spring/Summer issue of RISD XYZ, the school's alumni magazine.  This particular issue focuses on how art and design can function as a way to communicate across cultural and ethnic barriers.

I balked at the idea at first.  I don't know squat about international law so I wasn't sure that I could contribute anything worthwhile (learning American law is difficult enough).  But after a little back and forth with the editor of the magazine, it was suggested that I draft a column discussing some common immigration issues that are routinely faced by members of RISD's sizable international student body.  It's not unusual for students to come to RISD with the goal of making the U.S. their permanent home, so even though immigration law is not my area of specialty, I decided to write the column to give them a little boost when navigating this elaborate area of American policy.  Coming from a family of immigrants, I do actually know a little something about the trials and tribulations that accompany the path toward citizenship (but don't worry, I do have some actual immigration law training).

Then I decided that this isn't an issue faced only by RISD students; every year thousands of foreign-born students come to American universities with the hope that America will become their permanent residence.  So why not put it on my blog?  For that reason, I've reprinted below the un-edited version of what will appear in the magazine.  As always, this is a cursory overview of an immensely convoluted topic.  If you're seeking citizenship in the United States, seek out an attorney who specializes in immigration law.  This is one area where you can't afford to skimp.

*****

Making The U.S. Your (Legal) Home [the title may change when the magazine goes to press]

By Greg Kanaan '02 FAV

RISD is well known as the top art school in the world, so it’s no surprise that students are drawn here from every nook and cranny of the globe.  Twenty-five percent of the student body is made up of international students representing fifty-four separate countries.  Upon graduation, many of those students will choose to stay in the United States to make their living… a difficult prospect to say the least.  As the son of an immigrant, I can tell you first hand how arduous the immigration process is (my cousin is currently going through the years-long process right now).  It doesn’t help matters that the Immigration and Nationality Act, the law governing U.S. immigration policy, is one of the most incomprehensible and byzantine laws ever written.

 That’s why I’ve singled out the three most common mistakes I’ve seen RISD alums make when trying to obtain legal residence in the U.S.  Avoid these and your path towards citizenship will become just a tad easier.

 1. Thinking student visas count towards a green card.

Nope, they don’t.  Everyone knows that it takes years to get a green card - anywhere from five to twenty-three depending on your particular circumstances and nationality (those coming from Mexico have a longer wait than most other nationalities, as you might imagine).  I once met a man who gained citizenship after twenty-nine years of residency, some of which were spent here as an undocumented worker.  Unfortunately, the student visa you got allowing you to attend RISD doesn’t count because it’s considered an M1 temporary “non-immigrant visa,” which is issued under the assumption that you’ll return to your country of origin when it expires - i.e. when you graduate.  The citizenship clock doesn’t start running until after you leave school, which means that the four years you spent in the U.S. don't count towards citizenship.

 2. Assuming that freelancing counts toward an employment-based visa.

Unless you have a parent, sibling, or spouse who is a citizen or Legal Permanent Resident and is willing to sponsor you for a family-based visa, your best hope for citizenship is through full-time employment.  Freelance work, no matter how frequent, will not get you a visa.  You need an actual legal employer, and the employer has to jump through some pretty significant hoops to get you.  They must A) advertise the job to American citizens, and B) prove that you’re qualified for the job, and that no American citizen was as willing, able, or qualified as you are for the job.  Basically, you have to be the best candidate they’re ever likely to see, and that's a tough burden to overcome.

 3. Leaving out important information in the application process.

We all make mistakes. But don’t lie about those mistakes during the application process... especially if those lies can be rebutted by the public record.  The ICE officers (Immigration and Customs Enforcement) who are tasked with looking into your case are tenacious and thorough; if you lied or withheld information, they will find out eventually.  This means that if you have a DUI or anything else you think might compromise your chance at citizenship (such as prior immigration violations), admit to them right away.  You probably won’t get squashed for driving under the influence, but you’ll DEFINITELY be denied citizenship if you’re caught lying about it.

These pointers are just the tip of the iceberg.  As I mentioned above, the Immigration and Nationality Act is extremely dense and very difficult to wade through, even for those trained in its intricacies.  So if you really are planning on emigrating, please do yourself a favor and seek out a licensed immigration attorney to help you get through it.  One wrong step could mean years lost in a process that isn't designed to be helpful to you.