Filmmakers have not only the macro-considerations of famous buildings and facades in their movies, but also the micro-considerations of copyrighted or trademarked items or images in their shots. Each frame must be scrutinized to make sure all clearances are completed for parts of the set dressing that may be the subject of a copyright or trademark. Even scenes or items visible on a television in a room are possible infringements if the rights holder sees or is made aware of the appearance in a film of his or her intellectual property.

Although the quality of the shot makes a difference, whether the item is out of full focus in the background or is shown for a very limited time, there is still the chance of liability for the filmmaker. Several infringement cases have been decided against the filmmakers in instances of set dressing, some filed only because the rights holder was not consulted nor given credit in the movie for the creations used....

In Ringgold v. Black Entertainment Television, Inc., Home Box Office, Inc.[1], an artist created a work of art entitled “Church Picnic Story Quilt” which depicted aspects of the Africa-American experience in the 1900s. Ms. Ringgold had sold the original quilt to a church in Georgia, but retained the copyright to the work. The church put it on display and created posters of the quilt which were sold in its gift shop for $20.00 each under a non-exclusive license; thousands of copies of the poster have been sold since 1988.

The artist was w

atching the ROC television show on the BET network and saw a poster of her creation in the background of a church. The show was originally aired on a broadcast television network in 1992, and in October 1994 BET aired the show for the first time on cable television. Ms. Ringgold happened to watch a repeat showing of the episode and at that time became aware of the defendants’ use of the poster as part of the set decoration.[2]

Ms. Ringgold sued the defendants for the unauthorized use of the poster as part of the set decoration for the episode of “ROC” under federal copyright law[3], and also alleged common law unfair competition and a violation of New York’s statute protecting artistic authorship rights.[4] The lower court in the Southern District of New York found for the producers of the show, saying that the use was “incidental and reasonable” and fell within fair use. The plaintiff’s claims for unfair competition were dismissed as being preempted by the Copyright Act, and declined to exercise jurisdiction over her state law claims.

On appeal, the Second Circuit reversed the lower court, holding that the producer’s use of the poster did not fall within the fair use standard under federal copyright laws. Although the poster is never referred to by the actors and is in the background of the main action, and is only shown for a total of twenty-seven seconds in nine shots, the use was not “de minimis” or insignificant. The poster was not in perfect focus, but is plainly observable by the audience.

The Second Circuit court refers to a regulation issued by the Librarian of Congress providing for royalties to be paid by public broadcasting entities for the use of published pictorial and visual works.[5] The Librarian distinguishes between a “featured” and a “background” display, setting a higher royalty rate for the former.[6] The court then remarks:

“… the Librarian has defined a "featured" display as "a full-screen or substantially full screen display for more than three seconds," id. § 253.8(b)(2), and a "background" display as "[a]ny display less than full-screen or substantially full-screen, or full-screen for three seconds or less," id. If defendants' program were to be shown on public television, plaintiff would appear to be entitled to a "background" license fee for a "less than full-screen" display.”[7]

The poster was visible several times for four to five seconds, both in focus and out of focus, and the court held that such repetitive effect of the multiple views of the image reinforces the visibly significant aspect of decoration that the poster contributed to the set. The de minimis threshold for actionable copying had been crossed, and the Court remanded the case to the District Court for assessment by the fact finder of the four fair use factors in section 107 of the federal Copyright Act.[8]

The court also said that the lower court should give consideration to the plaintiff’s claim under the New York Artists’ Authorship Rights Act[9], which stated that the defendants violated her statutory rights because they did not credit her as the creator of the story quilt.

In light of Ms. Ringgold’s state claim, one has to wonder whether she would have sued at all if she had been given proper credit by the producers of the television show. The case is very instructive for filmmakers because it sets out the boundaries of non-actionable use of a copyrighted item in set decoration, and also provides a strong incentive to ask permission of a rights holder and give credit for the use of his or her creation in a film.

The amount and substantiality of use of copyrighted photographs as a set decoration figured in a different result in the case of Sandoval v. New Line Cinema Corp.[10] New Line Cinema used reproductions of ten copyrighted but never published photographs taken by Jorge Antonio Sandoval in background shots for the film “Seven”. The photographs only appeared in the film for short lengths of time ranging from one to six seconds per shot, in a scene that lasted only one and a half minutes and was an hour and sixteen minutes into the film that was 123 minutes in total length.[11] The photographs were often obstructed from view by the actors and props in the scene.

The lower court dismissed Sandoval’s copyright infringement action and relied heavily on the analysis employed in the Ringgold v. Black Entertainment Television, Inc.[12], examining the four factors used in determining fair use: 10 the purpose and character of the use; 2) the nature of the copyrighted work; 3) the amount and substantiality of the portion used; and 4) the effect upon the potential market for the copyrighted photographs.[13]

The District Court decided to dismiss the case without first deciding whether the use was “de minimis”, but the Circuit Court held that the use of the photographs in the movie was de minimis as a matter of law and affirmed the lower court’s judgment. Unlike inRinggold, the court found that the copying of the photographs “fell below the quantitative threshold of substantial similarity”, because the photos were not “clearly visible” as the artwork was in Ringgold. The reproductions of Mr. Sandoval’s photographs as used in the movie were not displayed with sufficient detail for the average lay observer to identify even the subject matter of the photographs, much less the style used in creating them.[14]

Although the plaintiff Sandoval claimed that the defendant film company violated his right to publicly display his photographs under the Copyright Act, but the lower court said that the photographs could not constitute a “public display” because they are not recognizable to the public.[15] Under the requirements of the fourth factor in determining fair use, the court stated that “ …the value of and market potential for his work is in no way usurped, since the public is not even aware after viewing Seven that they have had a glimpse of Sandoval’s work.”[16] As the use was deemed de minimis, no action for copyright infringement can be brought, and the issue of fair use was not necessary to determine. The Sandoval case was described as the first to establish the de minimis doctrine as a full defense to the unauthorized use of graphic works in motion pictures and television.[17]

In an earlier case in which a movie company used a copyrighted artwork fashioned into a mobile for a baby’s crib in a film, the District Court in New York found that the limited view given in the movie to the mobile did not constitute a “copy” for purposes of a copyright infringement action.[18]

Although these three cases involved using copyrighted artworks to dress a movie set, filmmakers would do well to examine their facts in deciding on props to be used in their own movies. It is not unheard of in the annals of filmmaking to see a prop or part of a set being elevated to a symbol for the movie itself. This could elevate the prop into trademark status, as merchandising of objects from the film ensues. If the prop turns into a trademark identifying the film itself, a Lanham Act[19] suit could be brought by the creator of the prop if it is a copyrighted work such as a sculpture or photograph.

Remember, the Lanham Act is intended to prevent consumer confusion as to the source of goods, and the artist could be using or intending to use the artwork as a trademark for his or her goods. Lanham Act also governs unfair competition and trademark dilution or tarnishment[20], and a prop used in a film in a certain way could leave the filmmaker open to a lawsuit.[21] Copyright and trademark rights are often overlapping and often both causes of action, in addition to doctrines of privacy and publicity and state laws protecting artist’s rights, should be considered in the context of clearing rights for items used in your film.

Product placement is sometimes seen as a panacea for filmmakers, a way to make extra money from their film or to raise funds for the production. Conceivably you can charge a trademark holder for the privilege of being selected for use in your film, but often the company holding the rights to the product does not desire an association with a smaller film. There have been films financed by a non-film company so that their products are featured prominently.

This has already happened – Adidas bankrolled a movie entitled Goal! The Dream Begins which was about a Mexican-American boy who follows his dream to play professional soccer in Europe. Of course, all the products in the film were made by Adidas, and the real soccer teams featured in the film were sponsored by Adidas in real life.[22] The movie did not do that well at the Box Office, but a large company like Adidas probably used the film as a part of its advertising campaign, not expecting to recoup the money spent. The goal of Adidas was not to advance or support the creativity of the film, but just to sell its products.

Filmmakers and the creative people who work with them on a movie may not want to turn their vision of a film into a mere commercial for a company who is willing to fund it. The issue of artistic control of such a commercialized movie may cause a filmmaker to think twice about giving up its creative ideas in favor of showing the product paying for the film. With a big budget movie, there are usually specific requirements for product placement such as use of the product and screen time, which are negotiated in advance. Ten seconds of screen time is a common minimum requirement, and the value received by the filmmaker is directly related to the screen time.

Favorable lines from a lead actor are also valuable. A large studio will probably have as staff person to help obtain product placements. There are also companies who help independent filmmakers obtain product placement deals. Good Unit Production Managers maintain a list of product placement companies, such as International Promotions (www.productplacements.com) and Hollywood Product Placement (www.hollywoodproductplacement.com).[23] However, the owners of a famous mark or product probably would not be as receptive to allowing its use in a small independent film, much less pay for prominent placement. More likely a trademark holder would not want to share its goodwill and reputation by allowing the indie film to “piggyback” onto it with product placement, especially in the advertising or trailers for the film.

There has been special concern recently with the YouTube appearance of trademarks; large media companies routinely demand the removal of clips from shows, and there is double trouble if the material uploaded to YouTube contains copyrights or trademarks that a holder may object to. For independent films, product placement could take the form of the company supplying food or drinks for the cast and crew, if the actors drink the brand on screen, or the filming takes place in their establishment.

Some entrepreneurs may want to have their product featured in a film, no matter how small the audience; a local filmmaker may want to help out a local concern by featuring its product, which may be a good deal for all involved. Realistic expectations and achievable goals are the best bet for an independent filmmaker contemplating the use of product placement. Matching the size and reach of your film to a similarly situated product will be the key to a good relationship.

Perhaps a fledgling firm just launching its product would like to help out a smaller film that has a subject matter that fits its target audience. In turn, a filmmaker may want to associate its film with that target audience by featuring or placing the firm’s product or service in its film. The larger film may not reach the target audience of a product as well as a smaller film more focused on a certain niche audience.

[1] 40 USPQ 2d 1299 (SDNY 1996)
[2] Ringgold v. Black Entertainment Television, Inc. Home Box Office, Inc., 126 F.3d 70 (2d Cir. 1997).
[3] 17 U.S.C. § 106 (1994).
[4] N.Y. Arts & Cult. Aff. Law § 14.03 (McKinney Supp. 1995).
[5] 37 C.F.R. § 253.8 (1996) (implementing 17 U.S.C. 118(b)).
[6] Id. § 253.8(b)(1)(i)(A), (B).
[7] 126 F.3d 70 (2d Cir. 1997).
[8] 17 U.S.C. § 107.
[9] Id. footnote 60.
[10] 973 F.Supp. 409 (S.D.N.Y. 1997); affirmed 147 F.3d 215 (2d Cir. 1998).
[11] Internet Movie Database: .
[12] Id. fn. 58.
[13] Sandoval v. New Line Cinema Corp., 973 F.Supp. 409, 412-414 (S.D.N.Y.1997).
[14] Sandoval. New Line Cinema Corp., 147 F.3d 215 (2d Cir. 1998).
[15] 973 F. Supp 409, 412 (S.D.N.Y 1997).
[16] Id. at 414.
[17] Website of Pryor Cashman LLP, Attorneys at Law, http://www.pryorcashman.com/f-39.html
[18] Amsinck v. Columbia Pictures Industry, Inc., 826 F. Supp. 1044 (S.D.N.Y. 1994).
[19] 15 U.S.C. § 1125.
[20] 15 U.S.C. § 1114.
[21] See, e.g. Wham-O v. Paramount Pictures Corp., 286 F.Supp.2d 1254 (N.D. Cal. 2003).
[22] Michael C. Donaldson, Clearance and Copyright 265 (3d Edition, Silman-James Press 2008).
[23] Id. at 266.