Rights Clearance

By: Po Yi, Venable LLP.

When your client plans to create new content or use existing third-party content in a new work, it must conduct a review to ensure that it is permitted to use the material. This review is known as rights clearance.

UNAUTHORIZED USE OF SUCH MATERIAL COULD SUBJECT your client to liability for violating a third party’s copyright, trademark, or other intellectual property or proprietary rights. A rights clearance review should be done for all content, including films, books, songs, television shows, advertisements, or online videos.

Rights clearance is multi-faceted and occurs on several levels. Not only must you clear the work as a whole, but each individual element must be identified and separately cleared. Understanding the many rights that could be implicated in any one piece of content is important to ensure proper and complete clearance and will inform which licenses and permissions are necessary.

This article details the rights clearance process and discusses the types of works that require clearance, as well as the issues you should consider when conducting a rights clearance review and obtaining third-party consent.

How to Conduct Rights Clearance

You must take the following steps when conducting a rights clearance review:

• Identify the protectable content in the work your client intends to use.
• Determine who owns or controls the rights in the content (the client or a third party).
• Evaluate whether permission is needed to use any thirdparty content.
• Seek permission from the rights owner, if permission is required.

It is important to remember that you must clear the content as a whole, as well as the individual elements present within the work. For example, to use a print ad that includes a photograph of people sitting around a dining room table, you may need:

• A license from the copyright owner of the photograph as a whole
• Permission from each person appearing in the photograph (to whom the right of publicity applies)
• A license from the copyright owner for any artwork appearing on the wall behind the table in the photograph

Various content types raise different considerations for rights clearance.

Identify the Protectable Content

There are essentially three types of rights that you need to consider when identifying protectable elements and determining what rights need to be cleared:

• Copyright
• Trademark
• Right of publicity

Copyright

Copyright protects original works of authorship, including:

• Songs
• Movies
• Television shows
• Books
• Magazines
• Photographs
• Software
• Architecture

Copyright may protect the work as a whole, as well as the less obvious or underlying elements, such as the screenplay for a movie. Copyright protection covers original works, regardless of whether they were created for artistic or commercial purposes; therefore, a television commercial is entitled to copyright protection in a similar manner as a movie.

However, not all works are subject to copyright protection—namely, in those instances when:

• Copyright protection expired, and the work is in the public domain
• Copyright protection never existed (for example, because the work was created by government employees in their official capacity or the work was insufficiently original to qualify for protection)

Trademark

Trademarks identify the source of certain goods or services, and may include:

• Brand names or other words
• Business names
• Logos
• Slogans
• Product designs
• Product configurations
• Some architectural elements, such as distinctive landmark buildings

Unauthorized use of a trademark may subject your client to liability if it leads to a likelihood of confusion as to the source of the goods or services or makes it appear that the trademark holder sponsored or approved the use. As a result, clearance is required for uses or depictions of third-party marks, such as products bearing a trademark (like someone drinking from a Coca-Cola can). Trademark protection can sometimes pop up in unexpected places. For example, landmark buildings, such as the Chrysler Building, are protectable under trademark law and need to be cleared for use.

Trademark owners, particularly owners of famous trademarks, can be aggressive in policing their marks. Thus, even if a court would ultimately find that there was no violation, the trademark owner may still object to your client’s use of its mark, which could result in cease and desist letters and a lawsuit. Rather than seek permission or proceed with unauthorized use of the mark, your client may want to consider removing the appearance of third-party logos or trademarks from the content, such as by blurring them or otherwise blocking them out to render them unrecognizable.

Additionally, to minimize the potential infringement of a thirdparty mark, many advertisers or content creators use fictitious trademarks within the proposed content. For example, films, books, and TV shows frequently refer to brands—including social media websites, restaurants, universities, or other companies—by fictitious names. However, even such fictitious uses should be cleared by conducting a preliminary and/or comprehensive trademark search to ensure that the fictitious mark is truly fictitious and doesn’t already exist for the goods or services referenced.

Right of Publicity

Right of publicity laws protect unauthorized use of an individual’s recognizable attributes, including that individual’s:

• Name
• Voice
• Likeness
• Image
• Distinctive personal attributes (such as gestures or phrases)

Use of any of these in content for commercial purposes (such as advertising, marketing, or otherwise promoting goods, services, or brands) requires that person’s consent. In some cases, even copying identifiable characteristics of a famous person—such as using a look-alike or a sound-alike or copying the person’s signature phrase—without his or her permission has been found to violate the right of publicity of that person. See, e.g., Hilton v. Hallmark Cards, 599 F.3d 894 (9th Cir.2010) (Paris Hilton had a cognizable right of publicity claim against Hallmark Cards for use of her catchphrase, “that’s hot.”); Midler v. Ford Motor Company, 849 F.2d 460 (9th Cir.1988) (Bette Midler had cause of action against Ford for using a sound-alike in its commercial. “A voice is as distinctive and personal as a face.”).

Rights of publicity are not limited to celebrities or public figures, and permission is needed for any person that appears recognizably in the content. As a result, when creating content that will feature other people, it is important that each of the individuals sign a release, especially if the content is to be commercialized.

Since publicity rights are derived from a patchwork of state laws and vary among jurisdictions, the best practice for drafting releases is to include a choice-of-law provision specifying the state whose laws should apply to a dispute arising from the release.

In several states, including California, Massachusetts, Indiana, Tennessee, and others (but not New York), the right of publicity also continues after a person’s death. Depending on the jurisdiction, the deceased’s heirs or estate may continue to control the deceased’s right of publicity for a certain period of time following his or her death. The length of this postmortem period depends on the state. In certain states, it varies depending on whether the deceased was an ordinary citizen or a celebrity.

If your client seeks to use the image, likeness, name, or other attributes of a person’s identity following his or her death, you should first determine which state’s law applies, and then identify who controls the estate of the deceased in order to obtain permission if needed.

Determine Who Owns or Controls the Rights

Once you have identified the protectable content, you need to properly identify the rightful owner of that material. Because intellectual property rights are transferrable through a license or assignment, the owner of the rights, or the party who can license the rights, is not always obvious. For instance:

• The author or original creator of a work may not own the copyright if the work was commissioned as a work made for hire or the copyright was assigned or licensed to another person or entity.
• The writer of a musical composition may not control the administration rights to the composition. Those rights may be controlled by a music publishing company.
• Trademarks may be owned by trademark holding companies or a parent company of the mark or brand at issue. Right of publicity of a deceased person can be held by the estate of a deceased person or another party who bought such right from the estate.
• As a result, it may be difficult to identify the proper rights holder of certain content. Private investigators and professional search firms may be able to obtain this information if it is not ready accessible.

Client-Created Works

If your client created a copyrightable work, you should consider whether the work is a work made for hire. Employers rather than employees own works made for hire when the employee created the work within the scope of employment. When an employee creates a work outside of his or her work responsibilities, or creates a work as an independent contractor, the author/employee (not the employer) may own the copyright if the work was not assigned in writing.

To ensure that all employee- or independent contractorcreated works are owned by the employer, it is advisable to have each party execute the proper work made for hire or assignment agreement at the outset of the engagement. In the absence of an agreement, determining whether an author is considered an independent contractor or an employee can sometimes be tricky and requires consideration of a number of factors, as discussed in Community for Creative Non-Violence v.Reid, 490 U.S. 730 (1989).

Third-Party Works

If your client is using third-party material, you may be able to identify the applicable rights holder through various online resources, including through:

• A copyright search on the U.S. Copyright Office’s website (http://www.copyright.gov), which permits you to search copyrighted works by name
• A trademark search on the U.S. Patent and Trademark Office’s website (http://www.uspto.gov), which allows you to search for trademarks and obtain owner contact information

However, note that neither copyright nor trademark protection requires registration, so unregistered works or marks will not be found on these government websites. You will need to do additional research to identify the owner of the applicable rights.

Music in particular often has many individual elements and multiple copyright owners. You may be able to determine ownership by checking the three performing rights organization (PRO) websites (ASCAP, BMI, and SESAC), searching http://www.copyright.gov, and/or reviewing album liner notes.

Evaluate Whether to Seek Permission

Even when you have identified protectable content, you may, in certain circumstances, be able to use the material without permission from the rights owner. The primary exceptions or defenses to using another’s work without permission are:

• Public domain
• Fair use

However, it is generally difficult to predict what would or would not be considered a permissible use in court, and thus, using the content without permission is often speculative and risky. The owner of the content may still bring a lawsuit even when you correctly determine that permission is not required, forcing your client to defend the claim. Thus, if your client is risk averse and wants to avoid legal disputes altogether, the best practice is to obtain permission for all uses of thirdparty content.

Nevertheless, considering whether your client’s use may be permissible without the rights owner’s consent may be a useful analysis, especially when your client is willing to take calculated risks. Additionally, understanding whether an unauthorized use is defensible could bolster your client’s request for permission.

Public Domain

When a work is in the public domain, the rights holder can no longer assert private rights over it. This concept arises under copyright and right of publicity.

Copyright

A copyrightable work is only protected by a copyright for a specific length of time (typically, the life of the author plus 70 years after the author’s death). Once that period expires, the work enters the public domain, where it can be used freely without permission. Thus, if your client wants to use an older work, you should first determine whether the copyright is even still in effect.

Right of Publicity

Right of publicity can be limited in certain instances when an individual has no reason to expect privacy or control over his or her image. Most notably, an individual’s permission is not required to use his or her name, likeness, or recognizable attributes for news reporting or commentary, or for other informational purposes that do not have a commercial tie-in. Keep in mind, however, that the use of a name and/or likeness for these purposes can give rise to other state law claims, such as defamation or false light claims. Thus, any statements should be true and accurate.

Fair Use

Fair use is a defense to both copyright and trademark claims, and it generally permits the limited use of protected material under certain circumstances.

Copyright

In determining whether a use is fair under the Copyright Act, 17 U.S.C.S. § 107, courts look at the following four factors:

• The purpose and character of your use. The more you alter, or transform, the original work, the more likely the use is fair. This factor also takes into consideration whether the use is for a commercial purpose: the less commercial the use, the more likely it is to be fair.
• The nature of the copyrighted work. If the work is fact based, like a biography, it is more likely the unauthorized use is fair because dissemination of facts has a public benefit. However, using works of art or fiction are less likely to be deemed a fair use.
• The amount and substantiality of the portion taken. The less you use, the more likely the use is fair. However, even use of a small portion may not be considered a fair use if the use is considered the most important element, or the heart, of the work.
• The effect of the use upon the potential market for the original work. If your use has a negative impact on the potential market for the original work, such that consumers are less likely to desire the original, it is more likely that the use will not be considered fair. However, if your use will benefit or have no impact upon the market for the original work, this factor will favor a fair use or have a neutral effect on the analysis.

Use of third-party copyrighted works for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research may be considered fair use, provided that they satisfy the fourfactor test identified above. The Copyright Act also generally exempts from protection reproduction by libraries and archives and public display or performance for educational, religious, or charitable purposes.

Be particularly cautious when conducting a fair use analysis in the commercial context, as what constitutes a fair use or an exception to copyright protection is notoriously difficult to predict.

Trademark: Nominative Fair Use

The nominative fair use defense is a non-statutory doctrine that permits a third party to refer to the trademark owner’s goods or services in a non-confusing manner. A use is nominative if it:

• Is necessary to refer to the product or service in question
• Is limited to only as much of the mark as is reasonably necessary to identify the product or service (e.g., using only the word mark, not the entire logo)
• Does not imply any association, sponsorship, or approval by the trademark owner

As a result, the nominative fair use defense is narrow and has limited applicability. A common nominative fair use is identifying a third party’s trademark in comparative advertising.

When conducting a nominative fair use analysis, you must ultimately consider whether use of the trademark would cause a likelihood of confusion as to the source, association, sponsorship, or approval. Moreover, even if your client’s use qualifies for the fair use defense, an aggressive trademark owner may still attempt to enforce its rights through cease and desist letters, or even a lawsuit.

Trademark: Parody

Use of another’s trademark in a parody is protected by the First Amendment. However, the question of whether an unauthorized use is a parody can be subjective. Many of the same factors considered in a copyright fair use analysis (see Copyright above) may be considered for a trademark parody determination, such as whether the unauthorized use is for a commercial or non-commercial purpose. The biggest consideration is whether there is a likelihood of consumer confusion, so it is always relevant to determine whether a parody is an obvious joke.

It should be noted that satire—which comments upon society or a societal issue at large rather than commenting upon a specific person, work, brand, or product—is generally not considered a defense to trademark infringement. Thus, it is important to determine whether the content constitutes an actual parody or is merely satire.

Seek Permission

Once you have determined the proper owner of the protected content and that permission is necessary or preferred, you should approach that person or entity for permission to use the content. It is generally best to keep all communications in writing (including sending a confirmation letter following any oral communications) to avoid any misunderstanding or confusion.

The permission may come in any of the following forms:

• Exclusive license. Grants permission to your client, and only your client, to use the content in the way described by the license. Any third party using the same content would be an infringer, as there can only be one licensee.
• Non-exclusive license. Grants non-exclusive permission to your client to use the content in the way described by the license. Because the license is not exclusive, several competitors may use the same content without infringing as long as they are authorized licensees.
• Release. Typically granted by an individual, who grants permission to use his or her likeness or image.
• Consent not to sue. A promise by the rights owner not to sue for your client’s use of its content, mark, or other proprietary right. This is often a term within a broader license but can also be framed as a simple agreement without the additional terms and conditions often contained in a more formal license.

Written permission may contain a number of terms, but the primary terms should address:

• The scope of the use. How does your client want to use the content? Will your client’s use of the content cast any aspersions on the rights owner? How much of the content is your client using? Are there any restrictions?
• The territory of the use. Is the use limited to a geographic region, global in scale, or somewhere in between? Rights may be owned by or licensed to various other entities in other countries, and different countries are governed by differing intellectual property laws. Therefore, an authorized use in the United States may be infringing upon the rights of another party if used in a different country, unless all appropriate rights are cleared for each jurisdiction where the content is to be used.
• The term of the use. How long does your client require the permission? Is it for a single-time use (for instance, running a photograph in a single issue of a magazine), or a length of indeterminate duration (for instance, putting a photograph on a website)? Make sure to specifically negotiate whether the term of the permission has an end date or a date at which the rights owner can revoke the permission. If there is an end date (such as a one-year grant of permission), negotiate whether the agreement can be renewed for additional terms after the first term ends.
• Payment. Is there payment in exchange for the permission to use the content? Is the payment a flat fee or a percentage based on the revenue generated by the use? How often will payments be made?

If permission is ultimately denied, or your client cannot come to an arrangement with the rights holder, your client should walk away from the proposed use. Even if your client would ultimately have a defense to use of the material, use of the material after permission is denied will increase the risk of receiving a cease and desist letter or lawsuit.

Assess Any Public Relations Issues

In addition to the legal hurdles outlined above, your client should also consider public relations ramifications. Even if a proposed use is permissible, your client may become embroiled in a messy legal dispute, and the cost of establishing that right ultimately may be far less than the cost of repairing a tarnished public image from a public fight.

Additionally, sometimes the public response to a person’s use of another’s content can be negative and can result in the rights-holder rescinding the permission to use the content (unless the permission is irrevocable).

Rights Clearance by Type of Work

As is clear from the above, one piece of content may require rights clearance on multiple levels. The most common types of works requiring clearance include:

• Literary works
• Artwork
• Audiovisual content
• Existing sound recordings
• New musical cover songs
• Public performance of existing music

Below is a list of the unique rights clearance considerations for each type of work.

Literary Works

If you want to use portions of a book, magazine, article, or other literary work, you may need to clear the following:

• The copyright for the literary work itself (primary work), including quotes and excerpts
• The copyright for any third-party material within the portion of the primary work that you seek to use, such as a quote, a photograph, or artwork that is not original to the copyright owner of the literary work
• The copyright for any cover art or illustrations within the primary work if you seek to use the cover of the work or any illustrations within it
• The author’s name appearing on the cover of the primary work, to the extent that you seek to use the cover of the work (to address concerns with false association or endorsement)
• The title of the primary work if you seek to use the title and if that title is protected by a trademark (this guideline is more likely to apply if the primary work is a franchise or series)
• The copyright for the work on which the primary work is based, if any (this may apply if the primary work is based on a preexisting work, such as a film or play, and may also apply to instances of “fan fiction” based on a preexisting literary work)

Works of Art

If you want to use portions or the entirety of a work of art (e.g., photographs, drawings, paintings, sculptures), you may need to clear the following:

• The copyright for the primary work
• The copyright for any portion of the primary work containing material that is not original to the primary work’s copyright owner, such as third-party artwork, sculptures, text, or photographs included within the primary work
• The copyright for any work on which the primary work was based, if any (this may apply if the primary work is a collage of preexisting works of art, a new version of a single preexisting work of art, or some other type of derivative work)
• The copyright or trademark owner of any identifiable locations, buildings, or monuments depicted in the portion of the primary work to be used
• The trademarks of any words, names, or products (existing or fictional) depicted in the primary work
• Any recognizable person appearing in the work

This applies to traditional works of art as well as works found on the Internet, such as in a Google image search. However, certain online artwork (like clip art or stock photographs) is already cleared for use, though you may still have to pay a small fee. Typically, when artwork is included within a software program that you have already paid for—such as Microsoft Word—or when you visit a website offering stock photographs for a small fee, these rights have already been cleared for use by third parties.

Audiovisual Content

If you want to use a portion or the entirety of audiovisual content (e.g., movies, television clips, digital videos), then you may need to clear the following:

• The copyright for the audiovisual work itself
• The copyright for the underlying works from which the audiovisual work is made (such as the script or screenplay, or the animations or artwork)
• Any person appearing in the portion of the work you intend to use if you intend to use the work for a commercial purpose and the right of publicity was not waived (for example, people attending a large, ticketed event usually waive their right of publicity when purchasing the ticket)
• Any works of art that appear within the work itself
• Any music used within the overall audiovisual work (both the sound recording and the underlying composition, which may consist of multiple owners and administrators; see Existing Sound Recordings below)
• Any trademarks depicted in the portion of the work you intend to use

Existing Sound Recordings

If you want to use existing, pre-recorded music (a sound recording only, without a visual component), you may need to clear copyright for the following:

• The sound recording (typically, a record label). Note that performers usually assign their rights to the record label and usually don’t have any rights in the sound recording, unless the specific performance is particularly iconic.
• The underlying composition. The underlying composition may consist of multiple owners (different writers may have contributed to the creation of the lyrics, score, and arrangement, all of whom may have partial ownership of the composition and whose rights may be administered by different music publishers). If the sound recording is to be used in an audiovisual work, you must specifically obtain a synchronization license to synchronize the musical composition with visual images.
• Additional songs sampled in the primary work. If the work contains a sampled portion of another song, in addition to clearing rights for the primary work (as described above), you may also need to clear rights to the sampled piece, including clearing both the sound recording and the underlying composition of the sampled work (this may involve getting clearances from both the rights owner of the sampled sound recording, as well as the rights owner of the sample’s underlying musical composition—sometimes the sample can be simply the musical composition and not the sound recording).

Making an Original Recording of Existing Music (Covers)

If you want to commission or create a new recording of music that was written by someone else (commonly referred to as a cover), you may need to clear the following:

• The copyright in the underlying composition, which may consist of multiple owners (note that under the Copyright Act, 17 U.S.C. § 115, you can get a compulsory license for the musical composition by complying with certain specified requirements and paying a pre-determined license fee mandated by statute, but this compulsory license is not available if the recording is to be used in an audiovisual work)
• All performers of the music (and, if any of the performers are signed to an exclusive recording contract with a record label, then you also need to get a label waiver)

Public Performance of Existing Music

If you engage a band to perform a song at an event, or if you wish to play sound recordings publicly at a physical location or digitally, you will generally need to obtain special licenses from the following parties:

• The applicable performing rights organization (PRO) with whom the songwriter (who may not necessarily be the performer) is affiliated. There are three PROs in the United States (ASCAP, BMI, and SESAC) and they issue public performance licenses. Many venues, event organizers, and media platforms (e.g., broadcast stations) have blanket licenses with each of these PROs that cover the public performance of nearly all recorded songs.
• If a live performance is recorded and the video recording of the performance is played publicly at a later time, you will need to obtain a synchronization license from the applicable owner(s) of the musical composition, and you may also need to obtain a label waiver to the extent the performers are signed to an exclusive recording contract with a record label.

Po Yi is a partner in Venable’s Advertising and Marketing practice group. Assistance provided by Samantha Rothaus (associate) and Krista Coons (former associate).

RESEARCH PATH: Intellectual Property & Technology > Advertising & Marketing > Reviewing Copy > Practice Notes > Reviewing

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