How to Clear IP for Independent Productions

By Lisa Callif and Chris Perez, Partners at Donaldson Callif Perez LLP

As an independent creator, you’ve probably had that moment where you watch a great movie, hear an amazing song, or read an inspiring book and think, “I’d love to use that in my own project!” Whether it’s a catchy tune, a powerful scene, or a clever line, incorporating these elements can really bring your vision to life.

But here’s the thing—creating an independent production involves many creative and logistical decisions, including the critical task of clearing intellectual property (IP) rights for any materials you want to include in your project. Whether you’re producing a scripted film, documentary, or any creative work you want to distribute to the public, understanding the various types of IP and the permissions required is essential to avoid legal liability. This quick guide will walk you through the rights clearance process—figuring out what kind of intellectual property you are using, who owns the material, whether you need permission to use it, and who can help along the way.

What type of IP are you using? Is it copyright, trademark, or unprotected material?

The first step is to figure out which type of IP you are using. This involves determining if the material is protected by copyright, trademark’, or if it falls within a category of materials that are unprotected.

‘American Animals’film-grab.net

Is it a copyrighted work?

Copyrighted materials are original creations that someone has put out into the world, such as a photograph, song, movie, book, or piece of art. Imagine someone scribbling the lyrics to a new song on a napkin at a coffee shop—that’s an original work. As soon as it’s written down, it’s automatically protected by copyright.

For something to be copyrightable, it needs to meet a few key elements: it has to be original (meaning it’s not copied from somewhere else), creative (showing some level of creativity or expression) and fixed in a tangible form (like written on paper, saved in a file, or recorded). So, even that napkin with song lyrics could be protected by copyright as long as it’s original and creative.

If you plan to use an asset protected by copyright, you’ll need to get permission from the copyright owner, unless your use falls within the parameters of fair use (which we will explain below).

Is it a trademark?

A trademark is a word, symbol, or combination of both that identifies a product or service. There are many factors that set trademarks apart from copyrights—it’s not just the name, logo, motto, slogan, or design itself that matters—it’s what the trademark represents. A trademark signifies the source, meaning it tells you who made the goods you’re buying or who provided the services you’re enjoying.

So, if you plan to use a logo, like the Nike swoosh, or a brand name, like Coca-Cola, in your film or any other project, trademark law comes into play. Interestingly, trademark laws are intended to protect the consumer, not the owner (like copyright law). Lawmakers want to make sure that customers are not confused by the source of origin or, in other words, where the product came from. Accordingly, trademarks are typically permissible to use in your project without permission so long as you are not misrepresenting the product, such as implying that the producer or service has a negative quality that is does not actually have, or confusing the audience.

Is it protected at all?

Some things aren’t protected by copyright, trademark or any other IP—these fall into the category of unprotected materials. Here are a few examples:

• Public Domain: These are works that are no longer protected by copyright because their copyright has expired, or they were never eligible for protection. For instance, the original versions of Shakespeare’s plays or Beethoven’s symphonies are in the public domain, so you can use them freely in your project. Also, works published before 1928 are generally considered public domain, so you can use them without needing to ask for permission.
• Ideas: While the specific expression of an idea can be copyrighted, the idea itself cannot. For example, the concept of a superhero with superhuman strength isn’t protected, but Marvel’s specific portrayal of the Hulk is.
• Theories: Like ideas, theories are not protected by copyright. You can use scientific theories like Einstein’s theory of relativity in your work without needing permission.
• Facts: Raw facts, including historical facts, can’t be copyrighted. This means you can use facts like “Meghan Markle was celebrated by some as Britain’s first Black princess,” without any restrictions. However, specific interpretations or presentations of those facts (like a particular documentary or history book) might be protected.

‘Deadpool’Disney/Marvel

Who owns the material you want to use?

When clearing IP for your production, you need to identify who owns the material you want to use. Determining ownership is crucial because it also helps you identify what, if any, permissions are needed and from whom you need to obtain them.

So, who owns the material? In the world of copyright, the owner is typically the person or entity who created the original work—like the author of a book, the composer of a song, or the artist behind a painting. With trademarks, the owner is usually the business or individual who created and registered a brand name, logo, or slogan—like the Nike swoosh, the McDonald’s golden arches, or the phrase “Just Do It.”

Do I need permission?

You’ve figured out what type of material you’re dealing with and who owns it—great! Now, the next question is: do you need permission to use it? You have several options, depending on the type of material.

‘Harry Potter and the Half Blood Prince’ Warner Bros.

Copyright: License or Fair Use

So, you figured out that the material you are using is protected by copyright. If you want to use the material, you have two main options: obtain a license or rely on fair use. If your use does not fall under fair use, you will need to get a license from the copyright owner. This involves securing a license agreement with key terms such as the media rights (where and how the material will be used), term (how long you will have the rights to use the material), amount used (how much of the work you are allowed to use), territory (where you are allowed to use the material), and the fee (or the cost of obtaining the rights to use the material).

On the other hand, if your use falls under fair use, you may be able to proceed without obtaining a license. Fair use allows you to use a limited amount of a copyright owner’s material without permission. However, determining whether your use qualifies as fair use is fact specific. Courts consider four key factors: the purpose and character of your use, the nature of the copyrighted work, how much of the work you used, and the impact your use has on the market for the original work.

While it’s essential to consider the factors that courts use, our office has developed a more user-friendly practical guide. We call it the ‘Safe Harbor Test,’ where if you can confidently answer “yes” to the following key three questions, your use of the copyrighted materials is likely to fall within fair use:

1. Does the material being used illustrate or support a point that the creator is trying to make in the new work?
2. Does the creator of the new work use only as much of the material as is reasonably appropriate to illustrate or support the point being made?
3. Is the connection between the point being made and the material being used to illustrate or support the point clear to the average viewer?

Trademarks—Is Permission Required?

Generally, you don’t need to ask permission to use a trademark or logo in your film, as long as you use it as it was intended and don’t mislead the audience or damage the trademark’s reputation.

Some filmmakers want to seek permission because they want free product or compensation for featuring a specific brand. However, before asking for permission, it’s important to weigh the risks involved. In some cases, asking for permission may lead to complications if the brand does not want to be a part of your project or deems the material unfavorable. If you believe that your use of the brand is within your rights but expect it may be denied due to being unfavorable to the brand, it is often better not to seek permission.

Also, if you’re unsure whether your use might cause issues, consulting a lawyer could help you navigate the situation. In short, unless you’re aiming to get paid to feature a product in your project through product placement, obtaining a license is generally not required.

‘Night of the Living Dead’ film-grab.com

Unprotected Materials

You don’t need permission to use unprotected materials because they aren’t covered by copyright or trademark laws. This means that you are free to use them in your project without needing to ask for permission or pay for a license.

Who can help me with this clearance process?

As a creator, protecting yourself from potential legal issues is crucial when dealing with IP, but you don’t have to do it alone. There are professionals who specialize in helping creators like you clear IP rights and ensure your project is legally sound. Here’s who can help and what they can do for you:

1. Archival Producer

If your project involves using archival content like footage, photos, or music, an archival producer can be invaluable. They’ll find the materials you need, negotiate the rights, and secure permissions, making sure that you’re legally covered. By working with an archival producer, you protect yourself from inadvertently using content without the proper clearance, which could lead to legal trouble.

2. Copyright Researcher

Copyright researchers are companies or individuals who conduct in-depth investigations into copyright ownership and validity. They meticulously search through various databases, including United States Copyright Office records, to determine who holds the rights to a particular work or whether it has entered the public domain.

For instance, suppose you are interested in using a film produced by a studio, but its ownership has changed hands multiple times over several decades. A copyright report can provide you with a detailed chain of title, outlining each transfer of ownership and confirming the current rights holder. Additionally, these researchers may explore other relevant legal documents, such as licensing agreements and court rulings, to ensure that the work’s copyright status is accurately determined.

3. Clearance Attorney

A clearance attorney is essential when you’re unsure about the legal implications of using copyrighted material or trademarks. They can help you determine if you need permission or if your use falls under fair use. They can also negotiate licenses and make sure your contracts are airtight. By consulting a clearance attorney, you protect your project from potential lawsuits and ensure that all your legal bases are covered.

Good luck!