Sandra Richmond is a partner in the Toronto law firm

of McMillan Binch LLP and a member of the firm’s KNOWlaw Group. This article was prepared with the assistance of Greg Walters.

It might be in the background. It might be out of focus. It might be obscured by an actor or part of the set. It might appear on screen for less than a minute.

But that won’t necessarily protect you from a claim that using a piece of art in your production infringes someone’s rights. Artistic works are protected by copyright, and using them without permission can lead to a lawsuit.

Even if you own the actual paintings or sculptures you’re using, or have written permission from the person who does, you may still need to get consent from the artists, who rarely assign copyright when they sell their work.

And while it may seem obvious that you will need permission to prominently feature a work of art in a production, a number of cases suggest you should also consider getting consent even if the work is used only for set dressing as long as it’s even slightly identifiable.

More than minimal use

When artist Faith Ringgold noticed a poster of one of her story quilts being used as set decoration in an episode of the sitcom ROC, she sued for copyright infringement.

Black Entertainment Television and HBO claimed the use of the poster was so minimal that it fell below the threshold required to be protected by copyright law, or that even if it didn’t, it was exempt as ‘fair use.’

The poster appeared on screen nine times for less than 30 seconds in total. Sometimes the poster was obscured; sometimes it was in the centre of the screen; sometimes it was in the background. No attention was drawn to it in the episode.

On appeal, the court decided the use was not below the threshold, saying enough of the work had been copied to give rise to infringement. The court said the painting was ‘plainly observable, even though not in exact focus,’ and noted that, while the short screen time and lack of focus made it difficult to see details of the work, the technique and style were seen in sufficient clarity.

The case was sent back to the lower court for consideration of the ‘fair use’ claim.

Unidentifiable works

After the Ringgold case, photographer Jorge Antonio Sandoval appealed an earlier court decision that the use of 10 of his photographs in the film Seven did not infringe his copyright.

In the film, transparencies of the photos, which were self-portraits, were shown on a lightbox on the back wall of an apartment for a total of less than a minute.

Despite the apparent similarities to the Ringgold case, Sandoval lost his appeal because the court decided the film’s use of the photographs was so minimal, it fell below the threshold required for the courts to protect it.

The court said Sandoval’s photographs were shown in poor lighting and from far away and were severely out of focus – the average viewer would not be able to identify even the subject matter of the photographs, let alone the style used to create them.

In addition, while brief but repeated shots of the Ringgold poster reinforced its prominence, there was no such cumulative effect in Seven because the images in the photographs were not distinguishable.

Protection for sculpture

When sculptor Frederick Hart claimed the bas relief on an apartment wall in the film Devil’s Advocate infringed copyright in his sculpture Ex Nihilo, which appears over the main entrance of the National Cathedral in Washington, the court ordered the video release to be delayed so the parties could resolve the claim creatively.

Four days later the parties reached a settlement in which Warner Bros. agreed to attach stickers to the videocassettes disclaiming any relationship or endorsement by Hart or the National Cathedral and acknowledging the copyright ownership of the sculpture by Hart and the National Cathedral. In addition, while Warner was allowed to release the initial run of videos already produced, it was required to make changes to the film for future video and television distribution.

However, when sculptor Andrew Leicester claimed a backdrop in the film Batman Forever infringed copyright in his sculpted courtyard in Los Angeles entitled Zanja Madre, the court denied his claim.

The court said the sculpture was part of a building and, based on a provision in the Copyright Act providing an exemption for copyright in an architectural work located in or visible from a public place, said the work was not protected.

There is a similar exemption in Canada’s Copyright Act, which applies to reproducing an architectural work (other than as an architectural drawing or plan) or sculpture permanently situated in a public place or building.

Additional rights

for photographs

Photographs have basically the same copyright protection as paintings and sculptures, but you may need additional consents.

For example, if you are using a photograph of, say, a painting or a sculpture, you will need permission from the owners of copyright both in the painting or sculpture and in the photograph.

Even if you license the photograph of the work from a stock agency, the release you sign will likely apply only to the copyright in the photograph, not the painting or sculpture. Typically, the release will state that obtaining consent is your responsibility.

If you are using a photograph of people who are recognizable, you will need permission from the copyright owner and from the people in the photograph to avoid a claim of infringement of privacy rights or publicity rights.

How – and where – someone’s image is used can increase the risk of a claim. In her lawsuit for invasion of privacy against the producers and distributors of the film sex, lies and videotape, French actress Vera Feyder claimed their use of her photograph humiliated her because of the sexually explicit nature of the motion picture. The photo appeared on a bulletin board in the living room where the characters’ interviews about their sexual thoughts and fantasies were taped.

However, to be on the safe side, you should get a written release from everyone who is recognizable in a photograph in your production – even if the photograph is in the background in an innocuous scene and even if the photograph is of your director’s mother.

Celebrities are especially careful about the use of their likenesses without permission both because of lost compensation and because the use can hurt their image and reputation; for example, by suggesting they are connected with the production or, in the case of advertising, endorse a product.

In the last year, celebrities including Nicole Kidman, Tom Cruise, Mr. T., Arnold Schwarzenegger, Denzel Washington, Bruce Willis and the cast of The Sopranos have all filed claims for unauthorized use of their images in advertising – a few of them for upwards of $10 million in damages.

In an interesting twist, British singer Lady Miss Kier has filed suit against Sega claiming misappropriation of her likeness – as an animated character in a computer game. According to the claim, Sega offered the singer a licence fee for using her image, but she says when she declined, Sega modeled the character after her anyway. She is asking for $750,000 in damages.

Other than the exemption mentioned above for architectural works and sculptures in public places, Canadian copyright law likely won’t offer you much protection from a claim. The ‘fair dealing’ exemption under Canadian law is more restrictive than the American ‘fair use’ exemption and is usually restricted to using a copyright work only for purposes of research or private study, news reporting or, perhaps most relevant for artwork, criticism or review.

There is an exemption under Canadian copyright law for ‘incidental use’ of a copyright-protected work. However, this applies only if the inclusion of the work was not deliberate and so isn’t very helpful for film and television production, not even for documentaries.

Even if you manage to convince your errors and omissions insurer that the risk of including a particular work is small (perhaps because the work you want to use is obscure and the use is not controversial), you will likely have to make sure any disputed scenes don’t appear in advertising, trailers or press kits for your production – and to require your distributors and broadcasters to do the same.

This can be difficult to negotiate and police, and if the requirement is part of your insurance policy, failure to do so may mean you’re not covered for a claim.

While it can be a hassle, the best way to protect yourself against a claim is to determine whether the work is identifiable and, if it is, see that you get the permission you need.

(This article contains general comments only. It is not intended to be exhaustive and should not be considered as advice in any particular situation.)

-www.mcbinch.com