Copyright, Trademark, and the Right of Publicity – The Triumvirate of Entertainment Law
By Kimberly J. Cooper

Entertainment law is the ultimate legal mash-up. Depending on which segment of the entertainment industry you practice in—theatre, music, publishing, film/television, multimedia—you may need a working knowledge of contract law, employment law, labor law, tax law, agency law, defamation law, and the First Amendment among others. But no matter whether you are in film, television, music, or theatre, you will always need to understand the triumvirate of entertainment law—copyright, trademark, and the right of publicity. These are the three legs upon which entertainment law stands.

Copyright
Copyright protection exists in original, creative works that are fixed in a tangible medium of expression. Examples include literary works, music, dramatic works, choreography, paintings, sculptures, photographs, graphic designs, motion pictures, sound recordings, and architectural works. Copyright does not protect ideas, concepts, procedures, processes, or systems. 17 U.S.C. §102.

Copyright is similar to real property in that copyright is a bundle of rights that can be separately owned, assigned, transferred, or licensed. A copyright owner has the exclusive right and authority to reproduce, distribute, perform, display, and create derivatives of the copyrighted work. 17 U.S.C. §106.

Trademark
A trademark is any word, name, symbol, or device (e.g. NBC’s chimes or Owens Corning’s “pink” insulation) used by a person in commerce to indicate the source of the goods provided by a person and to distinguish those goods from the goods sold or made by others. A service mark is any word, name, symbol, or device used by a person in commerce to indicate the source of the services provided by a person and to distinguish those services from the services sold or made by others. 15 U.S.C. §1127. The term “trademark” is often used to mean both a trademark and a service mark. In this article, I use the term “mark” to include both a trademark and service mark. The Lanham Act is the statutory scheme that provides for federal registration and protection of marks on a national level. States often offer registration and statutory protections of their own, but such protections are confined within the state. In Nevada, the process for trademark registration and protection is outlined in NRS §600.240 et al.

Right of Publicity
The right of publicity protects a person’s interest in the commercial exploitation of his or her name, voice, signature, photograph, or likeness. NRS §597.790. It provides the exclusive right to license the use of a person’s identity for commercial endorsement. Right of publicity laws vary by state and only 19 states have a statutory right of publicity. Other states recognize the right via the common law right of privacy.

Practice pointers for entertainment law
The following addresses some of the more common issues that pop up in the entertainment context. Inevitably those issues center on the triumvirate—copyright, trademark, and the right of publicity. There are, of course, other important issues that arise in the entertainment context that involve the areas of law mentioned above; however, this article focuses on the triumvirate. Some of the issues may only arise when representing talent; other issues occur regardless of who the client may be.

More bang for your buck.
A copyright exists as soon as the original, creative work is fixed in a tangible medium of expression. A copyright registration is something filed with the U.S. Copyright Office. You don’t need to file for registration to hold a copyright, but registration does provide certain benefits. One of the more important of which is statutory damages. If a work is registered at the time of someone’s unauthorized use (infringement), the Copyright Act provides for statutory damages. Depending on certain factors, like willfulness, the copyright owner can be awarded anywhere between $200 and $150,000 per act of infringement. 17 U.S.C. §504(c). Also, court costs and attorney’s fees are available on top of any damage award. 17 U.S.C. §505. Without a copyright registration prior to infringement, damages must be proven. If there is not a lot of money involved, which can often be the case in copyright infringement actions, legal costs will far exceed any judgment. So, registration often becomes key to a copyright owner’s ability to protect the creative work. Online copyright registration is currently $35 per application which is a small price to pay for a minimum $200 award plus costs and attorney’s fees. Now, that’s a bargain.

It wasn’t me; it was an anonymous user.
Most entertainment companies and celebrities have an online presence whether it is a Web site, forum site, blog, or other social media outlet. If your client operates any type of site where users can upload content, your client will want to take advantage of the safe harbor provisions of the Digital Millennium Copyright Act (“DMCA”). The DMCA specifically protects webmasters and site owners from liability when users of the site upload allegedly infringing materials. 17 U.S.C. §512. Most people assume that they are automatically protected under the DMCA, but in fact, the DMCA has some formal requirements that must be met before the safe harbor provisions are triggered. This includes: 1) designating an agent on the site to receive notices of copyright infringement; 2) promptly responding to notices to remove or disable access to allegedly infringing material; and 3) registering a designated agent with the U.S. Copyright Office. 17 U.S.C. §512(c). This third step, registration of a designated agent, seems to be the point where most people trip up in the process, not because registration is difficult but because people are simply not aware of the requirement. To register, download the Interim Designation of Agent to Receive Notification of Claimed Infringement form from the U.S. Copyright Office website at http://www.copyright.gov/onlinesp/agent.pdf, fill it in, and send to the address indicated on the form along with the filing fee which is currently $105. Without registration of a designated agent, your client cannot take advantage of the protection of the DMCA’s safe harbor and your client can be held liable for any infringement by their site’s users.

Who owns what?
Under copyright law, the creator of an original expression in a work is its author. The author is also the owner of the copyright, unless there is a written agreement by which the author assigns the copyright to another person or entity. If two or more authors prepare a work with the intention that their contributions be merged into a unitary whole, then the authors are considered joint owners of the work and each holds an ownership interest in the undivided whole. A common example is when members of a band write a song together. Generally, each member is considered a co-author and co-owner of the song. In cases of works made for hire, the employer or commissioning party is considered to be the author. 17 U.S.C. §101. (Note that what constitutes a work made for hire under the Copyright Act is a bit complicated. For a good explanation see Circular 9, Work-Made-For-Hire Under the 1976 Copyright Act at http://www.copyright.gov/circs/circ09.pdf.)

Here’s looking at you, kid.
In Nevada, every person has a right of publicity in the commercial exploitation of their name, voice, signature, photograph, or likeness. NRS §597.790. The author of a creative work is generally the owner of the copyright in the work. What happens when a photographer takes a photograph of someone? The photographer generally owns the underlying copyright in the photograph. But the person who is the subject of the photograph also enjoys certain rights (subject to the First Amendment), one of which is the right of publicity. In order to commercially exploit the photograph, the photographer will need to obtain a release, often called a Model Release, from the person who is the subject of the photograph. Otherwise, the photographer may be stuck admiring her work only in the privacy of her own home or risk being sued.

What’s in a name?
For talent, their name is everything. Most people are familiar with the use of marks (or brands) on products or services that they buy every day such as WHEATIES, NIKE, VERIZON, and APPLE. But most people, including talent, may not consider that celebrities and artists are also a brand. Registration of their brand (e.g. mark) is one more way for talent to protect and exploit their celebrity. Take for example, Robert Burck, the guitar-strumming-underwear-clad New York Times Square entertainer known as the “Naked Cowboy”. He sued Mars for trademark infringement when it used his Naked Cowboy persona in advertising without his permission. He survived Mars’ Motion to Dismiss in part due to his trademark rights, and the parties soon settled. The United States Patent and Trademark Office allows the name of a character or person to be registered as a service mark if the record shows that it is used in a manner that would be perceived by purchasers as identifying the services in addition to the character or person. TMEP §1301.02(b). For example, the name Johnny Carson was held to function as a mark, where use of the name was in conjunction with reference to entertainment services and information as to the location and times of performances and places where tickets could be purchased. In re Carson, 197 USPQ 554 (TTAB 1977). See also In re Ames, 160 USPQ 214 (TTAB 1968) (name of a musical group functions as a mark, where the name was used on advertisements that prominently featured a photograph of the group and gave the name, address, and telephone number of the group’s booking agent). Robert Burck and his NAKED COWBOY mark supports the value of a federal registration and you don’t have to be a superstar to take advantage of it. But note that LADY GAGA, the FRESH PRINCE, EMINEM, DR. DRE, JENNIFER LOPEZ, and many other high profile celebrities have already registered their brands.

Although entertainment law is a mash-up of many different areas of practice, a thorough understanding of the triumvirate will lay the foundation to build a solid entertainment practice.

Kim Cooper is an associate with Santoro, Driggs, Walch, Kearney, Holley & Thompson’s Technology and Intellectual Property Group. She practices mainly in the areas of intellectual property and entertainment law. Ms. Cooper is the Chair of the Intellectual Property Section of the State Bar of Nevada.

Nevada Reaffirms Its Position as the Gaming Leader in the U.S.
By Glenn J. Light and Karl F. Rutledge

On August 24, 2011, the Nevada State Gaming Control Board (“Board”) issued a draft set of regulatory proposals intended to establish the state’s regulation of Internet gaming, or, more specifically, Internet poker. This is pursuant to the passage of Assembly Bill 258 (“AB 258”), which was signed into law by Governor Brian Sandoval in June 2011 and mandates that the Nevada Gaming Commission (“Commission”) enact such regulations by January 31, 2012. Unlike the Internet gaming legislation proposed by other states, Nevada’s proposed regulations will not simply govern Internet poker within the state’s borders, but will also allow Nevada to license and regulate Internet poker occuring on a federal level should the federal government legalize such activity.

In particular, any federal legislation that authorizes and regulates Internet poker is likely to create an unusual regulatory structure in which state gaming regulatory agencies that qualify under the federal statute can grant licenses to operators, service providers, and manufacturers of Internet poker systems. Once licensed by one of these state agencies, an operator can provide poker to any permitted state. This likely would include any state where poker is a legal game at the time the federal statute is adopted and any other state that decides to “opt in” to the federal scheme.

At the time of this writing, the Board had authored five draft regulations in accordance with AB 258, and also held a public regulatory workshop to consider these regulatory drafts. Many of the drafts were simply amendments that updated existing regulations to add specific language regarding interactive gaming. For instance, draft regulation 4 amends Commission Regulation 4.030 to provide that a manufacturer’s license includes a manufacturer of interactive gaming systems, to provide for an operator of interactive gaming license, and to provide for a service provider license. The new categories of licenses for “operator of interactive gaming” and “service provider” authorizes the holders of such licenses to “from Nevada, engage in the business of operating interactive gaming” and “act as a service provider and includes an interactive gaming service provider,” respectively. See Draft Commission Regulation 4.030(6) and (7), dated August 1, 2011.

The regulatory drafts also include a new regulation, Commission Regulation 5A, “Operation of Interactive Gaming,” which creates the comprehensive framework to govern the operation of interactive gaming in Nevada. First and foremost, Commission Regulation 5A restricts accepting or facilitating wagers on any game other than poker or its derivatives, as approved by the Chairman of the Board (the “Chairman”), thereby, significantly curtailing the parameters of interactive gaming. Id. at Commission Regulation 5A.140.

Commission Regulation 5A further provides that only a person from Nevada may act as an operator of interactive gaming and only if that person holds a license specifically permitting the person to act as an operator of interactive gaming (an “Operator”). Id. at Commission Regulation 5A.020(7). Equally important is the limitation on where an Operator may offer interactive gaming. Specifically, an Operator shall not offer interactive gaming to individuals located in jurisdictions outside of Nevada unless the Commission has determined:
(a)   That a federal law authorizing the specific type of interactive gaming for which the license was granted is enacted; or
(b)  That the Board or Commission is notified by the United States Department of Justice that it is permissible under federal law to operate the specific type of interactive gaming for which the license was granted.

Upon the Commission making a determination that (a) or (b) has occurred, an Operator that intends to offer interactive gaming to individuals located outside Nevada shall first submit a request for administrative approval to the Chairman.

The draft regulations also recognize that Operators may not conduct or administer all interactive gaming on their own, but rather may use interactive gaming service providers to act on their behalf. An “Interactive Gaming Service Provider” means a person who acts on behalf of an operator of interactive gaming and conducts one of several activities listed in the definition, including, for example: (1) managing, administering, or controlling wagers or games; (2) maintaining the software or hardware of an interactive gaming system; (3) providing information regarding persons to an operator of interactive gaming via a database or customer list; or (4) providing products, services, information, or assets to an operator of interactive gaming and receiving, therefore, a percentage of gaming revenue from the establishment’s interactive gaming system. Id. at Commission Regulation 5A.020(4). Any person who constitutes an Interactive Gaming Service Provider would have to obtain a full gaming license under these proposed regulations.

As originally structured, the definition of an Interactive Gaming Service Provider is very broad. For instance, Internet sites use myriad methodologies to be successful at customer acquisition. Many use affiliates to drive traffic to their sites. As affiliates are often paid based on the “rake” or commission generated from players referred to the poker sites, this practice would either have to be curtailed or the affiliate would have to obtain a license under the current draft regulations. Of course, these regulations are only proposed and could change through the adoption process, but the notion of how to regulate third-party involvement in future licensed poker sites illustrates just one aspect of the regulations that will be open for debate over the upcoming months.

To conclude, the Commission is expected to approve the regulations in late 2011 or early 2012. Prior to approval, however, the regulations are expected to undergo several changes as representatives of the gaming industry and other members of the public relay their concerns and suggested revisions to the Board. Nevertheless, while the next couple of months will certainly bear witness to alterations to the regulations before being approved, the underlying objective will remain: ensuring that Nevada is well positioned should federal legislation pass.

Glenn J. Light is an attorney in the Gaming Practice Group in the Las Vegas office of the law firm of Lewis and Roca LLP. His practice focuses on casinos, horse racing, sports betting, Internet gaming, sweepstakes, and contests.

Karl F. Rutledge is an associate in the Gaming Practice Group in the Las Vegas office of the law firm of Lewis and Roca LLP. He focuses his practice on Internet gaming, sweepstakes, contests, and traditional land-based gaming. Mr. Rutledge is listed in the 2012 edition of The Best Lawyers in America® in the category of Gaming Law.

Just as professional athletes review tape of their games to learn from and improve their performance, so too can counsel be instructed by reviewing and analyzing legal “contests.” An instructive legal contest in the entertainment and sports world—a lawsuit asserting trademark infringement—recently took place between Upper Deck and Major League Baseball. The circumstances surrounding the MLB case unfold like a step-by-step instruction on what to do as a licensor. Though Yogi Berra once said, “In baseball you don’t know nothing,” this might be the one exception.

The relationship between MLB and Upper Deck lasted longer than many marriages. But, after 20 years, MLB decided to part ways with Upper Deck and enter into a new licensing agreement with Topps. Rather than discontinuing its use of MLB’s trademarks, Upper Deck began manufacturing and selling three new MLB trading card sets. MLB responded by filing suit in New York for trademark infringement.

MLB’s complaint, and the consent judgment eventually entered in the case, reference provisions in MLB’s licensing agreement with Upper Deck involving the protection of its intellectual property that are highly instructive.

Quality control
Like anyone who leases property to others, a licensor should keep a watchful eye on how a borrower, or in this case a licensee, is using the property—the key to protecting its value. The purpose of quality control ultimately is to protect consumers, in part by assuring that the level of quality that they have come to expect in certain merchandise is the same regardless of the true source of such goods. If consumers can no longer depend on a company’s trademarks or trade dress to indicate this level of quality, they become useless. In other words, if a licensor fails to (or, in MLB’s case, is not given the chance to) oversee quality control, not only can the value of the licensed property diminish, but it also can result in outright abandonment.

To protect against this, MLB required Upper Deck in the licensing agreement to produce its trading cards in strict compliance with MLB’s branding guidelines and to furnish samples of the licensed products for prior approval. The concept of approval rights is not uncommon and is found in many licensing agreements. But what then? Assuming that a licensee is providing samples for approval, what should a licensor be looking for, and what contingencies should its license agreement contemplate?

Once again, MLB’s licensing agreement provides apt guidance.

Anticipate new marks
In addition to approval rights, MLB required Upper Deck to acknowledge in the licensing agreement that the licensed trademarks and any new arrangements and modifications were owned by MLB. The right to create and use any derivatives of MLB’s trademarks required a separate license. This addresses a common scenario wherein a licensee tries to change the licensed trademarks either by combining them with its own trademarks or altering the text or design for marketing purposes. Because such modifications can result in new combined marks arguably owned by both parties or derivative marks whose ownership is questionable, it is imperative for licensors to address these issues in their licensing agreement.

There are many other issues to be mindful of when negotiating a licensing agreement—for example, requiring trademark and copyright notices on materials, or ensuring that use of the intellectual property is within the scope and territory of the license—but what of the licensee? What should it be mindful of when acquiring a license to use someone else’s intellectual property? First and foremost, a licensee should ensure that it has acquired all of the necessary licenses to use the property needed to market and sell its products.

Additional licenses needed?
Often in the sports industry, multiple licenses are needed to utilize the full breadth of intellectual property rights associated with an athlete, team, or league. For instance, just because a team or league has granted a license to use its trademarks does not mean that the licensee has rights to use an athlete’s name, image, and likeness. Likewise, just because an athlete has granted a license to use his or her name, image, and likeness does not mean that the licensee has rights to use an image of the athlete in a uniform that bears and embodies the trademarks and trade dress of the team or league.

This also came up in the MLB case. While Upper Deck may have obtained licenses from the MLB Players Association to display players’ likenesses on cards, such publicity rights were distinctly different from the rights to use MLB trademarks. Moreover, even if a licensee obtains proper licenses from the athlete, team, or league, this does not mean that it has free reign to use any photo depicting the licensed trademarks or athlete. If the licensor does not own the copyrights in a particular photo a licensee wants to use, then a separate license must be obtained directly from the photographer or the photographer’s employer or contractor.

Needless to say, there are numerous other issues that can arise for a licensee, such as requiring a licensor to register the licensed intellectual property and actively enforce its rights against others. However, as demonstrated by MLB’s swift and favorable settlement of its lawsuit against Upper Deck, a well-drafted license agreement that properly anticipates these issues puts a company in a much better position to enforce or defend its intellectual property rights should disputes arise.

Jennifer Craft is a shareholder at Gordon Silver. Ms. Craft is Co-Chair of the firm’s Entertainment and Sports practice group and Chair of the firm’s Intellectual Property practice group. Jennifer can be reached at This e-mail address is being protected from spam bots, you need JavaScript enabled to view it .

Eric Hone is a shareholder at Gordon Silver and a member of the firm’s Entertainment and Sports, Intellectual Property, and Litigation practice groups. Eric can be reached at This e-mail address is being protected from spam bots, you need JavaScript enabled to view it .

Implausible though it may sound at first, piracy is alive and well. This is not a reference to pirates of the sea, but rather, pirates of the ocean of information that is the World Wide Web. One of the biggest challenges for sports and entertainment organizations today is the protection of their intellectual property (IP) rights from these e-pirates. The most valuable video content for sports organizations might be only a few seconds of an entire match, game, or bout: the successful submission by Frank Mir and tapout of Brock Lesnar in Lesnar’s UFC debut; Michael Jordan’s buzzer beater against the Utah Jazz in game five of the 1997 finals; Manny Pacquiao’s second round knockout of Ricky Hatton in their May 2009 title bout; or the final 15 seconds of the 1980 Olympic hockey semifinals, where the decidedly ragtag, underdog U.S. team beat the favored Soviet Union 4-3. And of course, it is these very moments that e-pirates gleefully steal and illegally stream, to the never-ending detriment of major sports and entertainment organizations all over the world.

This is a serious problem for many sports and entertainment organizations, as their copyrighted content is easily pirated on sites such as YouTube. Anyone can post on YouTube, and the same clip can be posted an endless number of times. The proliferation of social media has seriously magnified the problem, allowing users of MySpace, Facebook, blogs, and other Web sites to imbed YouTube videos directly into their pages.

A related concern is the ease with which real-time broadcasts can be uploaded and distributed over the Internet. Pay-per-view sporting events, for example, are most valuable in real time. When these broadcasts are streamed for free over the Internet, sports organizations lose millions of dollars. While YouTube and other similarly situated sites usually (and are required to) have a mechanism that allows copyright owners to flag infringing content and bring it to the site providers’ attention, it sometimes takes days for the site provider to respond and take down the infringing material. By that time, irreparable damage has occurred.

So what protections do sports and entertainment organizations (and others whose copyrighted content is illegally streamed online) have under the law? The Digital Millennium Copyright Act (DMCA) is the federal statutory scheme that sets out civil and criminal penalties for such copyright infringement. However, the courts have interpreted the DMCA in a way that is less aggressive than IP owners might like.

The DMCA does not require site providers to police their own sites for infringing content. As long as they provide a mechanism whereby copyright holders can request takedowns, and then they follow through with the takedowns, they are protected under the safe harbor provisions of the DMCA with very little, if not zero, legal incentive to self-police their sites. Instead, IP owners are obligated to police the entire internet themselves, an expensive and time-consuming proposition. See Viacom Intern. Inc. v. YouTube, Inc., 718 F.Supp.2d 514 (S.D.N.Y. 2010).

Public discourse and vigorous debate on the issue has increased over the last year or so, with the proposal of several pieces of legislation to strengthen the protections afforded to IP owners.

The Combating Online Infringement and Counterfeits Act (COICA) was introduced in the Senate on September 20, 2010. S. 3804, 111th Cong. (2010). It would have allowed the Attorney General to obtain a court order to shut down the offending website. It was approved unanimously by the Senate Judiciary Committee (19-0), but never made it to a full Senate vote. It faced vigorous opposition from groups claiming that it would allow the government to censor the internet without due process, and effectively died out in December of 2010.

COICA was then rewritten and introduced on May 12, 2011 as the Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act of 2011 (the Protect IP Act) S. 968, 112th Cong. (2011). The Protect IP Act would give the Department of Justice the ability to seek a court order against a Web site displaying infringing content, and then, using that court order, force search engines, Domain Name System providers, and Internet advertising firms to essentially make the Web site invisible. Once again, the bill passed the Senate Judiciary Committee, but was then placed on hold. The approach taken by the bill has been criticized for being technically flawed. It has also received sharp criticisms from a coalition of law professors that argue that the domain-blocking provisions run afoul of the First Amendment. Professors’ Letter in Opposition to “Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act of 2011” (July 5, 2011), available at http://www.scribd.com/doc/59241037/PROTECT-IP-Letter-Final.

The latest legislation to make it to Congress is a bill introduced in the House on October 26, 2011 titled the Stop Online Piracy Act (SOPA). H.R. 3261, 112th Cong. (2011). It is the House’s version of the Senate’s Protect IP Act. It would allow the government and IP owners to obtain court orders to disable the credit card processing functionality of Web sites claimed to engage, enable, or facilitate copyright infringement. It, like the Protect IP Act, is also criticized as too broad. Critics claim that it could be utilized to target software used to protect the identity of human rights activists in the Middle East. For example, Tor is a software that allows the user to hide his or her IP address. One can see how such technology could be used in a number of different ways. Critics further claim that it could be used to halt donations to whistle blower sites that post documents that are copyrighted or that contain trade secrets (Wikileaks, anyone?).

Ultimately, the DMCA needs to be amended to take into account today’s technology and to level out the playing field between owners and content providers. It goes without saying that the debate on this issue over the next 12 to 18 months will be very interesting to the world of sports and entertainment.

Franchesca V. Vanburen is an associate at Gordon Silver and a member of the firm’s Entertainment and Sports, Intellectual Property, and Litigation practice groups.

Michael Feder is a shareholder at Gordon Silver and Co-Chair of the firm’s Entertainment and Sports practice group. Mr. Feder is also a member of the firm’s Litigation and Intellectual Property practice groups.