Q&As for filmmakers

By Rebecca Laubi, Senior solicitor*

The Arts Law Centre of Australia (Arts Law) regularly advises filmmakers on a wide range of legal issues affecting their arts practice, such as copyright, trade marks, or telling real stories. This is the first instalment of questions and answers that Arts Law lawyers deal with most often, either as part of the telephone legal advice or document review service they provide, or in the context of education seminars they deliver.

Protecting my idea

1. I have this really good idea for a film; No one has ever done anything quite like that. Now I want to speak to people in the film industry before proceeding further. How can I copyright my idea to ensure no one will steal it?

In order to protect your rights, you might consider the following points before speaking about your project to third parties such as potential producers or funders:

1.   Write it down

Copyright does not protect ideas, only their original expression in some material form such as writing, painting, recorded images. Therefore, you cannot rely on copyright law to prevent others from using your great idea unless you have expressed it in material form. For example, your idea for a documentary film about graffiti artists will not be protected by copyright, but your treatment or script for the film will be. Once you have developed your idea into a written treatment, synopsis or script, the written expression of your idea, rather than the idea itself, will be protected by copyright. Once you have expressed your idea in material form, you do not need to take any further step: copyright arises automatically upon creation of the relevant work, without need for registration or any other formal act. Therefore, the first step is to write down the magic that is in your head. Copyright does not protect ideas, but it will protect the original expression of those ideas.

You should develop your idea as much as possible. The more detail you are able to include, the stronger your claim of copyright ownership. For example, if you submit a short paragraph to a producer describing a television show that involves celebrity chefs demonstrating their favourite recipes, and the producer later produces a television show involving celebrity chefs, you are likely to have difficulty establishing copyright infringement. If, on the other hand, your proposal includes a series name, script ideas, a set design and a detailed description of a particular program, and the producer makes a program using all of those elements, you will be in a much stronger legal position.

Before submitting your proposal to anyone, affix the copyright symbol (©), your name and the year.

2.   Notify the confidential nature of your information

While copyright does not protect ideas, you may rely on the law of confidential information to protect your idea. Under the law of confidential information, an unauthorised person may not use (including disclose) your confidential information (including ideas) if you communicated that information in trust and confidence, for example by asking the recipient to keep it secret.

You will be able to rely on the law of confidential information to protect your ideas provided that:

• they are secret or only known to a few people; and
• your ideas have been communicated in circumstances that made the person receiving the information aware of the confidential nature of the information.

3.   Try obtaining a signed confidentiality agreement

A more effective way to protect your ideas is to enter into a confidentiality agreement before you disclose your idea. The agreement binds the recipient of the confidential information not to use your idea and gives you the right to claim damages in the event of an unauthorised use.

Getting a signed confidentiality agreement may, however, sometimes not be a practical option as this is often resisted by producers and publishers. In such circumstances, affixing a confidentiality notice on your work in order to rely on the law of confidentiality might be your best option. If you get the opportunity to make an oral pitch, begin the meeting by stating that the ideas you are presenting are confidential and must not be disclosed to anyone else without your consent. Confirm this in writing after the meeting by way of a letter or email.

See Arts Law’s information sheet Protecting your ideas for more information, including a sample Confidentiality Deed.

Conclusion

Protecting your idea does not mean that you can never share or divulge it, it just means taking some practical steps before you do so to reduce the risk of it being used without your permission. It helps to understand your legal rights and to be strategic and focused in the way you approach potential producers or publishers.

Using an existing story

2. I would like to base my feature film on my favourite novel. Can I just go ahead and do it?

The answer to that question depends on what you actually propose to do. Do you intend to adapt the book to the screen, are you merely contemplating telling a similar story in film, or are you just relying on research materials?

Adapting an existing book

Under the Copyright Act 1968 (Cth), the author of a literary or dramatic work (such as a book, play or screenplay) has the right to control reproduction, adaptation and publication of that work. As a result, a filmmaker who wants to adapt a novel into a film must secure the rights to do so – or risk an action for copyright infringement.

Permission to adapt an existing novel into a film is generally obtained by entering into an option and purchase agreement with the copyright owner. Under the option agreement, the owner of rights in a literary work grants the other party (the prospective filmmaker, you) the option to buy the film rights to the work within a certain limited period, and determines how the option can be exercised. The second part of the agreement, the “purchase”, is used for the actual purchase of the rights upon exercise of the option.

As mentioned above, failure to secure rights might expose you to a copyright infringement claim. Such a claim may succeed even if the film differs significantly from the original text if the copyright owner can prove that the filmmaker had access to the original text and drew on the author’s skill and labour.

Filming a similar story

There will be no copyright issue if you merely wish to film a story with a plot similar to that of an existing work, unless you actually reproduce a substantial part of that work in your film. For example, there are countless films drawing on the plot of (forbidden) love between a boy and girl from two rival groups: In any film adaptation of Shakespeare’s Romeo and Juliet, the enamoured heroes by the same names are from rivalling families; West Side Story‘s Tony and Maria fall in love with each other although the gangs they are close to, the Jets and the Sharks, are fighting to death. More recently, High School Musical can be seen as a vague adaptation on the same theme, with two high school juniors from rival cliques brought together by their mutual love of music.

Relying on research materials

Arts Law callers often enquire whether they can use third party materials such as historical texts, newspaper articles, diaries, and transcripts of interviews when creating a film. That situation should be distinguished from the one referred to above, where the filmmaker intends to adapt an existing work rather than merely rely on research material. Because copyright does not protect facts or information, but only the way in which those facts or information are expressed, copyright will not be infringed simply because the facts dealt with in the research material are incorporated into the film. For instance, you may rely on newspaper articles, interview transcripts and several biographies to find information about a musician for your intended documentary-drama. There is no legal restriction on you weaving that factual information into your script. If, however, you decided to adapt an existing biography of the musician into a film script by using its structure and closely copying particular incidents described in it, copyright in the biography may be infringed. In other words, the boundaries of what is legally permissible might be crossed once you copy the way in which the biographer has organised, compiled or selected fact instead of just using the biography as a source of information.

Conclusion

Unless you are clearly adapting an existing work, in which case you need to secure corresponding rights from the copyright owner, it is sometimes difficult to ascertain whether your intended use of third party copyright material is allowed under copyright law. Arts Law recommends to seek advice from a lawyer with film expertise, to whom you will explain what you propose to do and who will be able to tell you when you should seek permission from copyright owners.

Basing films on real people’s lives

3. How does the law regulate one person publishing a story about another person?

Filmmakers often want either to make a film about a member of their family or community, or otherwise depict a person they know or don’t know in a film. When they call Arts Law, they wish to ascertain whether that is possible and if so, what limits apply.

In Australia there is no general right prohibiting one person from telling a story about another person. However, depending on the story, and the reputation of the subject, issues may arise if:

• the work is defamatory; or
• the information in the story was secret and obtained on a confidential basis.

Defamation

Defamation is a communication from one person to another about an identified or identifiable third person that lowers the reputation of the third person. If you defame someone they may be able to sue you successfully unless you can rely on a defence, such as showing that your publication is true, or that you expressed clearly that it is only represents your opinion. For more information, see Arts Law’s information sheet Defamation.

Here are some tips to remember in order to avoid being sued for defamation if you want to publish biographical material:

• Only a living person can be defamed. If you are depicting a dead person it is, however, important not to defame other people associated with your subject, such as members of their family or business partners;
• Defamation is only applicable if you damage someone’s reputation. This comprises all aspects of a person’s reputation, including their business reputation;
• Changing a true story into a fictionalised one by changing the characters’ names won’t necessarily protect you if the person is still identifiable.

Breach of confidence

Retelling a person’s secrets, such as when a family member, patient or friend confides in you, may be an unlawful breach of confidence. As mentioned above  (see Protecting your ideas), you will come under an obligation to keep information secret when:

• the information is of a confidential nature; and
• you were told or put on notice the information was confidential or you had reason to believe it was confidential based on the way you obtained it.

If you make an unauthorised use of information obtained in those circumstances, you could be sued. A successful action by the ‘owner’ of the confidence could prevent your from ever showing your film.

See Arts Law’s information sheet Protecting your ideas for more information.

The following tips can help to avoid a breach of confidence action:

• Information already in the public domain is not protected by confidentiality;
• Consider whether one person’s story contains the confidential information of another person?
•  Get written permission to use and publish the information from the person whose information is confidential. Ask for a promise that the information is not someone else’s secret. One of Arts Law’s Interviewee’s Releases (Interviewee’s Release or Interviewee’s Release: Short form) might be a useful template for such a written permission

Misleading use

Filmmakers should also be mindful not to use their film’s subject in any manner that is misleading, for instance by suggesting an affiliation with, or endorsement by, the subject that is untrue, as this may be actionable in some circumstances.

Use of branded or recognisable products in film

Characters in films eat, drink and wear clothes (sometimes). Using branded or recognisable products might be an effective way of subsidising the cost of producing your film if you are able to negotiate a product placement deal with the people who control those products. Absent such a deal or some other agreement, you must be aware of the following areas of law when using branded or recognisable products in film:

1.           Trade mark;

2.           Copyright;

3.           Passing off and misleading and deceptive conduct.

Trade mark

A trade mark is a sign used in business to indicate that goods or services come from a particular manufacturer or service provider and distinguish those goods and services from those of other traders. For example, the swoosh symbol indicates that the products come from the Nike company.

A trade mark can be a letter, name, signature, word, numeric device, brand, heading, label, aspect of packaging or shape, and even a scent or sound, or a combination of any or all of these.

The Trade Marks Act 1995 (Cth) prohibits unauthorised use of trade marks as trade marks. In other words, it prevents use of a trade mark to indicate a connection between the goods or services and the manufacturer or service provider. Anyone who wants to use a given trade mark needs the permission (called a licence) of the trade mark owner. An unauthorised use of a trade mark constitutes an infringement of the owner’s rights and bears legal consequences. See Arts Law’s information sheet Trade marks for more information.

Therefore, before using products bearing a particular logo or trademark in their film, filmmakers should consider whether that product placement amounts to the use of the trade mark as a trade mark. The answer to this is usually negative. For example, there is no trade mark infringement if a character wearing a pair of NIKE shoes flashes across the screen, or someone is simply drinking from a can of coke bearing the “COCA-COLA” trade mark, because the trade mark is not being used as a ‘badge of origin’ in that situation. Filmmakers should, however, seek legal advice if they have any doubt about the nature of their use of a third party’s trade mark.

Copyright

If the label or trade mark bears an artistic work, filmmakers should also consider copyright before placing branded products in films. Under the Copyright Act 1968 (Cth), “artistic works” include paintings, drawings, engravings or photographs, “whether the work is of artistic quality or not”. Clearly, some logos come within the ambit of this definition.  The owners of copyright in artistic works have exclusive rights of control over the reproduction, publication and communication to the public of their works. The unauthorised use of a “substantial” part of an artistic work in any of the manners reserved to the copyright owner amounts to a copyright infringement. A part is substantial if it is a distinctive or essential part of the work.

By filming an artistic work that is part of a brand, the filmmaker may be exercising the rights of a copyright owner. Therefore, they must ask themselves whether the reproduction and communication to the public of a label bearing an artistic work in their film amounts to the use of a substantial part of that work.  If it does, they will need a licence from the copyright owner unless a legal defence or exception applies. Often, the copyright owner will see the commercial benefit of having his or her artistic work appearing in the film, and will be willing to strike a mutually beneficial arrangement.

An important exception to the permission requirement under the Copyright Act relates to incidental inclusions of artistic works in films: copyright in artistic works is not infringed if the inclusion of the work is only incidental to the principal matters represented in the film. What is “incidental” depends on the circumstances. Relevant factors include the prominence of the artistic work, its importance to the script and the length of time it appears. For example, Josh Lyman appears in episodes of ‘The West Wing’ series carrying a Starbucks coffee cup. The reproduction and communication of the artistic work (i.e. the logo) on the Starbucks label could be considered an incidental inclusion as it appears only briefly and does not relate to the principal matters represented in the series. Contact Arts Law for specific advice on whether an intended use of an artistic work is “incidental”.

Further, there are defences for certain uses without the copyright owner’s permission, for example if the use is a fair dealing for the purpose of criticism and review, news and current affairs, reporting, parody and satire and research and study. Again, Arts Law recommends seeking advice to establish whether any exception applies to your specific circumstances.

Passing off and misleading and deceptive conduct

The law of passing off protects businesses against someone wrongfully appropriating their good reputation. In the context of product placement, a business must prove the following elements to succeed in a legal action for passing off:

i. There is goodwill or a reputation in the branded product;

ii. The filmmaker has misrepresented a connection between the brand and the film; and

iii. The brand has experienced financial damage or a threat as a result of that misrepresentation, for example in the form of lost sponsorship fees.

A closely related legal action is the action for misleading or deceptive conduct under the Australian Consumer Law (ACL). Actions for passing off are usually brought in conjunction with an ACL claim. Passing off is founded upon protection of goodwill or reputation of a business, whereas an ACL claim is directed at preventing the deception of consumers which in turn may injure goodwill or reputation.

With respect to product placement in film, the brand owner may claim that the inclusion of their product in the film implies an association with, or endorsement from, the brand owner. The strength of such a claim is clearly going to depend on the way in which the product is used and how prominently it features in the film. As with the copyright infringement, whether a brand owner could have an action in passing off will depend on the particular circumstances of the case. Where the product is actually integrated into the plot of the film without agreement from the brand owner, it is more likely that the brand owner could bring a successful passing off action. To avoid liability for passing off or misleading or deceptive conduct it may be a good idea to include a disclaimer at the beginning of the film making clear that the film is not endorsed by, or associated with, any of the products featured in the film. Contact Arts Law for specific advice on whether the product placement in your film raises issues of passing off or misleading or deceptive conduct.

Using tobacco products in film

Finally, filmmakers should remember that national as well as State laws in Australia prohibit any advertisement (which is defined widely to mean more than the conventional idea of an advertisement) for tobacco products in a film or television broadcast in Australia. See Arts Law’s information sheet Using brands and products in film for detailed information on this issue.

Conclusion

Filmmakers should be aware that in some situations, they need to obtain permission to use recognisable products. Product placement deals are about negotiating some kind of benefit for the filmmaker in return for using a particular brand in the film. The objective of the brand is to obtain a form of integrated, and hopefully unobtrusive, advertising by showing the product in an apparently non-commercial context. For the low-budget filmmaker product placement can be a way of getting a location, props, costumes or food for free, or maybe even negotiating some cash. It can also add a dimension of realism to your film if your characters are using brands that the audience recognises.

*based on a compilation of previous Arts Law publications by various contributors prepared by Marie-Christine Stenzel, Arts Law intern (January –March 2012).