John J. Tormey: Entertainment Attorney

This Article Is Brought To You By The Letter Blank: Written By New York Entertainment Lawyer And Trademark Attorney John J. Tormey III, Esq.

This article is not intended to, and does not constitute, legal advice with respect to your particular situation and fact pattern. Do secure counsel promptly, if you see any legal issue looming on the horizon which may affect your career or your rights. What applies in one context, may not apply to the next one. Make sure that you seek individualized legal advice as to any important matter pertaining to your career or your rights generally.

Most of the American public including most all entertainment lawyers, heard about one of Oprah Winfrey’s well-publicized litigations a number of years ago. My understanding was that she was sued in Texas by a commercial cattle-oriented conglomerate. The plaintiffs apparently claimed that Oprah had inaccurately and unfairly maligned the culinary safety of cow meat, during one of her television programs. The Texas case seemed vaguely surreal and comic, even from the perspective of an entertainment lawyer - sort of like an overly-imaginative law school exam question. But next we must go from the sublime to the ridiculous. This next case was an entertainment lawyer and trademark lawyer’s delight. Talk about the eradication of your sacred cows. The local press in New York reported that a German “fetish magazine” named “O” sued one of Oprah’s companies and her publisher, over the sale of Oprah’s magazine bearing the equally-expansive title of “O”. Query if it was really a service mark dispute as opposed to a trademark dispute.

Perhaps even more befuddling, from the entertainment lawyer or publishing lawyer perspective or otherwise, the German “fetish” magazine somehow derived its own title from the erotic novel “Story of O” - serving as even more of a reminder that there is truly nothing new under the sun. And if this were not bizarre enough, the local press reported that Oprah’s company and publisher were prepared to change the name of her magazine to “O, The Oprah Magazine”, in an apparent attempt to assuage the seething service mark or trademark plaintiff and make the distinction between the two magazines more apparent.

Coincidentally, this lawsuit received even more attention from trademark lawyers, entertainment lawyers, and others, than usual, since Lions Gate was slated to release a film called “O” around the same time the suit materialized. I understand the Lions Gate film was somehow loosely based upon Shakespeare’s “Othello”. The Bard himself referred to the Globe Theatre as “this wooden ‘O’“. Maybe if we find Shakespeare’s heirs - perhaps arguably incarnate in the Bacon Brothers - we can thereby locate the real plaintiff who has something to complain about?

But come on. All kidding aside, could this trademark (or service mark) lawsuit really be happening? Yes. Yes it could. But maybe it shouldn’t be allowed to happen. The minds of reasonable trademark lawyers, entertainment lawyers, and others, may differ.

Let’s back up a step. Generally speaking, as entertainment lawyers or trademark lawyers will advise, one acquires trademark rights or service mark rights under U.S. law, by consistently using a trademark or service mark in connection with goods or services, and/or by registering the trademark or service mark with one or more appropriate governmental authorities.

Most people and businesses pick lousy names from a trademark or service mark perspective, and most people pick those names without the assistance of an entertainment lawyer or a trademark lawyer. The majority of marks go unregistered, and the majority of trademarks or service marks are never properly searched and cleared by a trademark lawyer, entertainment lawyer, or anyone else before use. Again, there is very little new under the sun, and as most all trademark and entertainment lawyers will attest, most word-paths have been tread upon by someone else previously. Then again, searching and registering a trademark or service mark, with or even without a trademark lawyer or entertainment lawyer, is not without cost. So, many cost-constrained start-up businesses elect to just “wing it” and dispense with the search until they can afford to “get around to it”. And surprisingly, sometimes even major-league companies who can otherwise afford to so it, dispense with the trademark or service mark search, dispense with the services of the trademark lawyer or entertainment lawyer, and just go ahead and use the proposed name. Ironically, this type of decision keeps trademark and entertainment lawyer litigators who work the back-end of these fact patterns, in business.

Trademark lawyers and entertainment lawyers may sometimes advise their clients to select multiple-word names rather than one-word names - as rock-band-name trademarks or service marks, for example - since the statistical chances of infringing some other band’s name and trademark or service mark are likely thereby somewhat reduced. Most artists, on the other hand, are solely concerned about the aesthetics of the band name, and if a one-word band name sounds right to them, they will use it and darn the torpedoes. This type of decision can also keep trademark and entertainment lawyer litigators who work the back-end of these fact patterns, in business.

I have admittedly not yet trademark-searched any of the following band names. But as a trademark and entertainment lawyer, a proposed one-word band name like “Blur”, at first blush, would trouble me a bit more than the two-word “Def Leppard”, from a trademark or service mark perspective - since, without knowing anything else about the underlying facts, I would assume that the statistical chances were somewhat higher that another band might be named (or might have been recently named) “Blur”. When a trademark lawyer or entertainment lawyer performs a search on a trademark or service mark or proposed mark, these kinds of concerns and historical analyses come into play.

Trademark lawyers and entertainment lawyers may also sometimes advise their clients to try to use more incongruous word combinations as band-name trademarks or service marks, rather than predictable word combinations. By this rationale, “Squirrel Nut Zippers” (the first time, for the candy, that is!), or “Stone Temple Pilots” start to look pretty good as far as their trademark or service mark prospects, to say nothing I suppose about “Orchestral Manoeuvres In The Dark”. After all, what are the odds, the trademark lawyer queries, that the full name “Orchestral Manoeuvres In The Dark” name was used as a trademark or service mark by any other pop or rock band prior to or contemporaneously with 1986’s “If You Leave”? Then again, apart from entertainment lawyer legal concerns, the band and its handlers may have had trouble fitting the full name onto a record jacket sleeve, and may also have had trouble convincing record label A&R executives that the choice of name should be supported.

One must understand, therefore, that the prospect of trying to protect, let alone enforce and prevent others from using - a one-letter trademark or service mark, is the trademark lawyer’s or entertainment lawyer’s equivalent to fingernails scraping on a chalkboard. If a client walks into the office of a trademark lawyer or entertainment lawyer and says “Hi. I’d like to protect, for my own exclusive use, the letter ‘W’“ - well, then absent some extreme fact pattern perhaps relating to a powerful Texas family, that lawyer can expect at least a long and tough road ahead - and perhaps a few broadsides of ridicule from the bench and other trademark lawyers and entertainment lawyers at the bar as well. They might think that the so-subscribing lawyer took Sesame Street’s commercial endorsement announcement “This program was brought to you by the letter ‘W’”, a little too seriously when younger.

Most Americans conceive of “monopolies” as something anti-competitive, unfair to the consumer, and ultimately evil - especially given publicity in recent years accorded to the Microsoft case. But what is interesting about copyrights and trademarks and service marks, as a trademark lawyer or entertainment lawyer will tell you, is that they are in fact legal monopolies protected by federal statute. A property right is, essentially, the right to exclude others from using that same property. That is conceptually quite similar to a monopoly. If I own my house, I can keep you off my land with a fence, and the law will back me up on that. If a company owns a registered trademark in “Chock Full o’ Nuts”, for example, then, through the efforts of its trademark lawyer or entertainment lawyer counsel or otherwise, that company owns the right to exclude others from using the same name in connection with the sale of coffee, and perhaps related goods and services as well.

So here is the trademark lawyer entertainment lawyer philosopher question. Haven’t we as a society gone too far, when we even entertain the prospect of a company, or a celebrity, laying claim to a single LETTER of the ALPHABET as a service mark or trademark? Indeed, should any prior claimant be able to use the services if a trademark lawyer or entertainment lawyer to legally monopolize the use of a letter of the alphabet, in connection with ANY kind of goods or services, magazine or otherwise? Should they and their trademark lawyers and entertainment lawyers even be allowed into court with that kind of argument?

Are all individual Arabic numerals also now in play for trademark lawyers and entertainment lawyers? We might as well allow some corporate behemoth to pull the character of Santa Claus out of the public domain, into the realm of copyright-protection, and charge a royalty whenever the fat man’s name or image is evoked. As for trademark versus service mark, does Mr. Claus provide goods or a service, when you get right down to it? And what about prior sources? Do the publishers of the first edition of Webster’s dictionary, or their successors, now have a valid trademark claim to assert through their trademark lawyer or entertainment lawyer litigators, against Oprah and the German magazine, for the use of “their” letter of the alphabet as a service mark or trademark?

Harkening back to the Oprah cattle litigation, some cows are sacred. Some things should simply stay in the public domain. Section 105 of the U.S. Copyright Act, for example, excludes works “of the United States Government” from copyright protection. Shouldn’t letters of the alphabet be treated the same way, as non-service mark non-trademark public commodities exempt from any monopolistic endeavors, upon instruction to all trademark lawyers and entertainment lawyers who might try to argue otherwise? There may well already be case law holding unitary alphabet letters to be disqualified from trademark and service mark protection under certain circumstances. The U.S. Patent and Trademark Office likely has trademark application and registration procedures, possibly reading to similar effect. If so, why not simply codify that common-sense principle in all applicable trademark statutes and other laws, as a de facto and de jure standing instruction to all trademark lawyers and entertainment lawyers and their clients? Among other things, a decisive action like this one could eliminate, or at least mandate a shorter life-span for, court-clogging trademark and service mark lawsuits like the “O” story.

And what’s next? Will the adjudicated winner of the O litigation also be awarded a legally-sanctioned monopoly as trademark or service mark over the corresponding three dashes in “- - -”; that is, in the International Morse Code symbol for the letter “O”? Will that be some other trademark lawyer’s or entertainment lawyer’s next argument? Or should that control instead now be awarded to the heirs of Morse, wherever they may be? And what about our National Anthem? Am I at risk of being enjoined by another trademark lawyer or entertainment lawyer from singing “O(h) say can you see...” at the start of baseball games at Shea Stadium – I mean, CitiField? And what about Tic-Tac-Toe? Must there now be a Congressional mandate that “X” must always win, and must always occupy all 9 cells on the grid, so as not to “infringe” the trademark or service mark rights of the clients of any other trademark lawyers or entertainment lawyers? And if so, what about the fate of Whoopi Goldberg and Hollywood Squares in syndication?

A number of entertainers use single-word names, and we as a society tolerate that – as do, apparently, the trademark lawyers and entertainment lawyers that represent and enable the talent. We tolerate the Gilbert Gottfried “One-Named Boy” routine moreso if the entertainer has the talent to back it up: “Elvis”. “Sting”. Now, “Prince” is, of course, a variation on the theme, an entertainer who at one point dispensed with his chosen one-word name in favor of an arcane symbol not found in the American alphabet – with or without his trademark lawyer’s or entertainment lawyer’s imprimatur. The general point here is that, Prince aside, the trademark lawyer and entertainment lawyer will advise the entertainer that he or she may be able to build up some trademark or service mark protection in his or her continuous and uninterrupted use of the [a]rtist’s one-word name, particularly if that entertainer is extremely well-known.

But some of us trademark and entertainment lawyers and others may feel that claiming one of the 26 letters of the alphabet as your own, takes its own special brand of... uh... chutzpah. Basketball’s Oscar Robertson was known as “The Big O”, probably because fans and the press tagged him with that moniker – probably not because his trademark lawyer or entertainment lawyer told him to use it - and probably not because Oscar adopted it for himself. Oscar Robertson may not have been as well-liked a guy, if instead he himself had arrogated “The Big O” nickname for his own use! And speaking of Oscar, asks the trademark and entertainment lawyer, how ‘come he hasn’t appeared yet in this lawsuit?

In similar vein, some trademark lawyers, entertainment lawyers, and others may feel that Oprah should have been satisfied to call her magazine “Oprah” rather than, simply, “O”. It is unlikely that Oprah’s decision as to how to name the magazine was forced upon her by her colleagues – entertainment lawyers or otherwise. In other words, a different P.R. decision may have had incidental legal benefit, too.

Sure, there is precedent in the entertainment field, as trademark and entertainment lawyers are aware, for trademark or service mark use predicated upon a single letter of the alphabet. The musical group “M” had a number-one hit with “Pop Muzik” in 1979, and that was kind of cute - but the group seemed to disappear from the music scene before anyone even began to consider the trademark or service mark implications of their continued use of their band name. Perhaps the group’s trademark lawyer or entertainment lawyer will read this article and write to this website to weigh-in.

The television company “E!” of Chelsea Handler and Talk Soup renown has apparently been successful in establishing a brand name for itself, presumably with trademark lawyer and entertainment lawyer counsel and assistance, accepting the inherent challenge in generating trademark and service mark rights in a one-letter name. But the E! Network’s use of the exclamation point, and their occasional use of the linked phrase “entertainment network”, arguably properly distinguishes them from the alphabet-usurping pack. The Motion Picture Association of America (MPAA), along with the help of its trademark lawyer counsel, lays claim to its single-letter-ratings as trademarks or service marks in some fashion - that is, currently, “G”, and “R”. But then again, I suspect that the MPAA would carefully refrain from threatening another company’s use of the letter “G” or “R”, unless that use was made in the context of ratings or otherwise in connection with motion pictures or filmed entertainment.

The point is, there is something disturbing about this O lawsuit filed in the district court in Manhattan, from the perspective of an entertainment lawyer and trademark lawyer, and perhaps to others as well. What if a schoolteacher reads about this lawsuit, and now tries to find a trademark lawyer lay personal service mark claim to the letter grades “A” through “F” as used on student-graded papers? What if that same teacher starts invoicing all other teachers who grade papers in the U.S., demanding trademark royalty payments? And speaking of damage to the world of education, what will Grover, Elmo, and the gang at Sesame Street do, when they can no longer boast that a particular program is “brought to you by the letter ‘W’”, at least not without their entertainment lawyer or trademark lawyer counsel present on set? Worse yet, will that entertainment lawyer or trademark lawyer be required to wear an over-the-head costume or be a muppeteer to blend-in on the set when doing so? The consternation is enough to press the ghost of O. Henry and his trademark lawyer back into active service - the only question being, if O. Henry rejoins the non-ethereal world and joins the lawsuit, will he join as party-plaintiff or party-defendant on the advice of counsel? And, will O. Henry’s apparently-prescient use of the period after his “O” render him impervious to trademark or service mark liability?

But seriously folks, in defense of Oprah and the trademark and entertainment lawyers that love and enable her, it is apparently not her or her entertainment or trademark counsel or entities that initiated the aggressive attempts to exclude others from use of the letter “O”. Rather, according to the news reports, it was the German “kinky fashion” magazine promoting leather and garters that decided to attack Oprah’s company in the context of the New York court, and the magazine then sought out a trademark lawyer for that purpose. And in response, Oprah and her affiliates, presumably on trademark lawyer or entertainment lawyer advice, apparently decided to expand her magazine title, to make the bright-line distinction between the two magazines more apparent to all, including the consumers. Maybe as a matter of reciprocal international courtesy, and in an effort to keep this dispute from wasting further judicial resources or using up more trademark lawyer or entertainment lawyer time, the leather and garter crew should agree to change their magazine’s name from “O” to “Ouch!” But query if they thereby would risk receiving an adverse trademark or service mark claim from the ‘E!’ network based upon the use of ‘E!’s exclamation point.

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My trademark law practice as a publishing and entertainment attorney includes all fields of entertainment and media including music, film, publishing, television, Internet, and all other media and art forms – and trademark, service mark, and copyright work. If you have questions about legal issues which affect your career, and require representation, please contact me:

Law Office of John J. Tormey III, Esq.

John J. Tormey III, PLLC

1324 Lexington Avenue, PMB 188

New York, NY 10128 USA

(212) 410-4142 (phone)

(212) 410-2380 (fax)

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Copyright Registration Is Not A Pre-Condition To Protection: Written By New York Entertainment Attorney And Copyright Lawyer John J. Tormey III, Esq.

http://www.tormey.org/copyright.htm

Law Office of John J. Tormey III, Esq. – Entertainment Lawyer, Entertainment Attorney

John J. Tormey III, PLLC

1324 Lexington Avenue, PMB 188

New York, NY 10128 USA

(212) 410-4142 (phone)

(212) 410-2380 (fax)

Copyright Registration Is Not A Pre-Condition To Protection: Written By New York Entertainment Attorney And Copyright Lawyer John J. Tormey III, Esq.

Contrary to the near-indefatigable lay assumption that entertainment attorneys like myself hear all the time, one is not required to register a copyright in one’s work with the U.S. Copyright Office (USCO) at the Library of Congress in Washington, D.C. (or elsewhere) as a condition precedent for U.S. copyright protection. In other words, the New York-based author in Chelsea, for example, already has copyright protection in his or her finished original work of authorship, under U.S. federal law, just as soon as the work is reduced to a tangible medium of expression in New York. That copyright protection is automatic, and inheres in the Chelsea-situate New York author immediately, his or her entertainment lawyer will opine.

Therefore, when the New York entertainment attorney hears the Chelsea-based New York writer saying “I ‘copyrighted’ my novel by registering it with the Library of Congress and the Copyright Office in Washington , D.C.”, the writer is usually operating under a mistaken set of geographic and legal assumptions. It is incumbent upon entertainment lawyers to correct those assumptions. This one is a particularly difficult myth to explode - because members of Congress, those that write and edit case law, and a few jurisprudential scholars have been known to use “copyrighted” as a verb form, too. When I hear it, it sounds to me like nails on a chalkboard.

So, “No”, the New York entertainment attorney replies to the New York writer in Chelsea, “you already had automatic copyright protection in your work as soon as you wrote down the text - as soon as you reduced your vision to a ‘tangible medium of expression’. Your act of mailing it from a post office on Manhattan’s West Side in New York City, to Washington D.C., isn’t what engendered the copyright. Rather, your prior act of crystallizing it in a tangible medium here in downtown West Side New York – pen to paper, or keystroke to hard-drive – is what caused the copyright in your work to be born. The New York entertainment attorney then explains that the phrases and verb forms “to copyright” or “I copyrighted” should probably be avoided outright – certainly avoided as synonyms for “registration” or “filing” - specifically to prevent that kind of lay confusion. After all, if the Chelsea screenwriter in New York “copyrighted”[sic] his or her work only by mailing it to Washington D.C. on Friday morning, then that would imply that no copyright yet existed in the work when he or she completed the final draft, hit the “Save” button on his keyboard, and printed it out in hard-copy form in his or her Chelsea home office in Manhattan on the Thursday evening prior – and that conclusion would be legally incorrect. In that fact pattern, the entertainment lawyer opines, the copyright existed and the screenwriter owned it as of Thursday evening based upon the events that happened in downtown West Side New York.

The process of U.S. copyright registration is just an after-occurring formality, though it is one which entertainment attorneys (from New York, and yes, even elsewhere in places like Hollywood) handle for their clients often. In other words, the work is already copyright-protected prior to one’s mailed submission of the work from New York or any other city, to the U.S. Copyright Office and Library of Congress in Washington, D.C. Yes, U.S. copyright registration does thereafter provide certain advantages over unregistered works, as your entertainment lawyer will tell you. But copyright registration is not itself a pre-requisite for copyright protection. The copyright protection exists first. The copyright filing comes second.

After all, the USCO form specifically asks the filer when – in what year - his or her work was completed. You could in theory file in 2011 for a 2006-completed work. In that case, the copyright would have existed as of 2006.

Under the U.S. Copyright Act, (which can be found at various locations on the Internet, at 17 United States Code [U.S.C.] Section 101 and following)

http://www.law.cornell.edu/uscode/html/uscode17/usc_sup_01_17.html

the author of an original and otherwise-protectable work automatically possesses a copyright in that work as soon as the work is reduced to a “tangible medium of expression”. No later.

http://www.law.cornell.edu/uscode/html/uscode17/usc_sec_17_00000102----000-.html

The New York choreographer on Manhattan’s West Side improvises a new set of dance steps for her students - fleeting, in the air - but owns no copyright in these movements or their performance or rendition. However, the moment she writes down the original dance steps using a detailed graphic chart, or videotapes herself performing them in her New York studio – perhaps at her entertainment lawyer’s suggestion - she may then have a chance to claim some copyright-protected work. The key, again, is the work’s reduction to a fixed medium.

http://www.law.cornell.edu/uscode/html/uscode17/usc_sec_17_00000102----000-.html

In fact, she may own the copyright in that material without ever interacting with Washington, D.C. – even though her entertainment attorney will tell her that it sure would be a good idea to thereafter mail a filing to D.C. if the original work of authorship is perceived to have any economic or other long-term value.

And this makes sense. Look at it from the perspective of copyright enforcement – from the perspective of the New York entertainment attorney litigator trying to prove or disprove copyright infringement in a court of law downtown at 500 Pearl Street. How difficult would the job be of a federal judge or jury in a U.S. copyright infringement litigation in the Southern or Eastern Districts of New York, or that of a U.S. Copyright Office Examiner in Washington, D.C., if the U.S. Congress allowed all of us to claim copyright in the inchoate and evanescent? The courts in New York and indeed nationwide would be inundated with strike suits and other spurious copyright claims, perhaps more often brought by pro se litigants rather than their entertainment lawyers if any. Therefore, Congress doesn’t let us get away with it. Congress requires reduction to a “tangible medium of expression” as a pre-condition for copyright protection. But no, Congress does not require copyright registration as a pre-condition to copyright ownership itself - rather, copyright registration at or around the time of creation is discretionary with the copyright owner. Congress only requires copyright registration as a pre-condition to filing a lawsuit for copyright infringement – something that your entertainment lawyer litigator won’t miss when reviewing the statute pre-filing of the federal court lawsuit:

http://www.law.cornell.edu/uscode/html/uscode17/usc_sec_17_00000411----000-.html

Yes, your entertainment attorney will tell you that after-occurring copyright registration of a work does provide certain strategic advantages, relative to unregistered works. Copyright registration notifies those of us in New York, and in California, the U.S., and the rest of the world, at least constructively, that the copyright claimant thinks he or she owns the copyright in that registered work. Practically speaking, copyright registration creates a likelihood that another company including its own entertainment attorney performing a copyright search, will “pick up” (i.e., see, or notice) the previously-registered work, when that company or its entertainment lawyer counsel later conduct a thorough professional (or for that matter even a cursory and informal) ocular copyright search of the public records of the Washington, D.C.-based U.S. Copyright Office.

http://www.copyright.gov/records/

Most film studios and their entertainment attorneys perform thorough copyright searches as a matter of course, for example, before optioning an author’s literary work.

As discussed above, whether you live in New York, Los Angeles, or elsewhere, copyright registration with the U.S. Copyright Office in the Library of Congress in Washington D.C. is also a necessary precursor to your entertainment attorney litigator bringing a copyright infringement litigation in a U.S. federal court. For this reason, in practice, individuals and companies and their entertainment lawyers have been occasionally known to register their copyrights days - or even hours, paying an emergency rush filing fee using a New York-to-D.C. Fed Ex - before they sue for copyright infringement in federal court. Of course, the entertainment lawyer will tell you that it is better to register the work at an earlier stage than that. Filing a copyright infringement litigation predicated upon a USCO copyright registration in turn allows for the entertainment attorney litigator to recover certain types of damages afforded by the U.S. Copyright Act, such as “statutory” damages, and plaintiffs’ attorneys fees. These types of damages would not be availing to the copyright plaintiff if his or her entertainment lawyer sued using a different common law theory. A copyright registration may also work advantages in terms of certain international copyright protections.

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My practice as a New York entertainment attorney includes copyright registration work in music, film, television, publishing, Internet, media, and all artistic fields. If you have questions about legal issues which affect your career, and require representation, please contact me:

Law Office of John J. Tormey III, Esq.

John J. Tormey III, PLLC

1324 Lexington Avenue, PMB 188

New York, NY 10128 USA

(212) 410-4142 (phone)

(212) 410-2380 (fax)

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Clearances For Name & Likeness, Location License, And Life-Story Rights In Motion Pictures And Television: Written By New York Entertainment Lawyer And Film & Television Lawyer John J. Tormey III, Esq.

http://www.tormey.org/clear.htm

Law Office of John J. Tormey III, Esq. – Entertainment Lawyer, Entertainment Attorney

John J. Tormey III, PLLC

1324 Lexington Avenue, PMB 188

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Clearances For Name & Likeness, Location License, And Life-Story Rights In Motion Pictures And Television: Written By New York Entertainment Lawyer And Film & Television Lawyer John J. Tormey III, Esq.

An entertainment lawyer handling production and rights motion picture work can spend much of his or her time fighting off detractors. One example? It is actually quite common for individuals who incidentally appear in a film or television shot, to later sue or otherwise claim upon the production company or network, asserting violations of their personal or proprietary rights. It is also fairly common for those that believe their life-story in whole or in part has been used or referenced in a film or TV program, to put an adverse life-story rights claim on the motion picture project, even if the reference is but a passing reference. When such a claim is long on bluster but short on underlying legal merit, it is known as a nuisance claim, or “strike suit” if and once litigated.

Entertainment lawyers with a motion picture practice in the U.S. who have worked in Business Affairs or other in-house positions at entertainment companies, as well as most all entertainment lawyer litigators at outside law firms, will confirm all of this. I have served as both, prior to my solo law practice here in New York. One thing you learn quickly in this line of work, is that, while some claims are valid, more people claim more rights in more situations than actually have them.

Film and television producers usually complain to their own entertainment lawyers that the commencement of such a rights nuisance claim is a sleazy thing to do, and the sign of someone watching too many motion pictures with too much time on his/her hands. Often true. Yet the film or TV production can be out time and money by the time that same complaint can be made to the person with the power to dismiss the claim – that is, the judge in the applicable court system. The film or TV producer’s feeling is understandable, unless the person incidentally depicted in the motion picture program is truly ridiculed or hurt in some way. But many Americans use litigation as a sport, and greed is a powerful motivator. There is an entire section of the motion picture entertainment insurance industry and an entire cadre of in-house entertainment lawyers devoted almost exclusively to extinguishing rights nuisance claims and strike suits, often but not always through what is known as errors and omissions (E&O) insurance. Without insurance, even a strike suit can sometimes close a company down.

The first thing an entertainment lawyer does when fielding an adverse film or television claim – life-story, likeness, location, or otherwise - is evaluate the apparent sense and sensibility of the rights-complainant. So, let’s assume that the distinction has already been made between an unstable unfortunate soul who thinks that every successful Hollywood motion picture director is stealing his persona and private thoughts with implanted electrodes and radio waves, on the one hand – versus a person whose full name, likeness, and/or life-story in whole or in part actually appears in an exhibited film or television property. Let’s assume that the entertainment lawyer has reviewed the claimant’s identity with his or her film or TV producer client, and it turns out that the claimant has certain rights and is sane, stable, sympathetic, aggrieved – and unsigned. If the person’s name or likeness or life-story is recognizable in the film shot or in the television script, and no written “clearance” (to wit, signed “license”, “release”, or “agreement”) is in place, then the entertainment lawyer tells the producer of the film or TV production that rights may have been violated thereby and the motion picture production is that much more at risk.

Period.

In reply to the next likely question, the entertainment lawyer next opines that the dollar value at law of the risk or exposure to the rights violation claim cannot be accurately quantified, unless and until the issue is litigated between the aggrieved claimant on the one hand, and the film or TV company (or its insurer) on the other hand.

Period.

These decidedly-fuzzy motion picture law principles even apply to film and television location licenses and related rights, albeit under different legal theories than those corresponding to names, likenesses, and life-stories. As an example, the entertainment lawyer might next ask the motion picture producer to consider the Hollywood Chamber of Commerce that historically has licensed uses of the famous “Hollywood” sign located up on Beachwood Canyon. The Chamber has, at least in the past, asserted rights to claim and sue for unauthorized uses and depictions of the “Hollywood” sign itself - even though the sign is comprised of but a bunch of letters, and rights to letters of alphabet themselves should in theory be public domain and not owned by anyone. In any event, reasonable minds in the film and TV businesses and elsewhere, including as between entertainment lawyers themselves, have differed in the past as to whether there is legal support for these types of “location” rights claims in motion picture practice. Rather than risk it, though, a careful film producer, or television producer or executive producer, usually “clears” depicted locations rather than pay the entertainment lawyer to tell him to clear those (possible) rights post facto after the film or TV project is in the can - or else the producer moves the motion picture shot to a different location if the location license rights “clearance” is too expensive. This is particularly true of the film or TV executive that knows he or she must keep the company’s errors and omissions (E&O) insurance carrier happy and motivated to provide and not cancel coverage. Much of an entertainment lawyer’s detractor-fighting discussed above, includes the creation of alliances with the E&O carriers and their counsel. E&O carrier counsel are sometimes even more rights-sensitive and risk-averse than the motion picture studio or television network Business Affairs in-house counsel are, themselves.

Sure, a film or television producer - particularly one without an in-house or other entertainment lawyer to advise him/her, or an E&O carrier to chastise him/her - can try and fly under the radar on the “incidental use” issue, and hope no rights-violation claims occur. Many producers in fact do try this. But seemingly-incidental shots and uses cannot necessarily be safely assumed to be immune from rights claims. And Murphy’s Law will tell you that someone whose life-story truly appears in a picture in whole or substantial part, will always see it and recognize it. Some of these seemingly-innocuous motion picture uses can in fact turn out to be legally-actionable, and there are plenty plaintiff-side entertainment lawyer litigators out there who seem to be hungry to take on such causes. Even if not legally-actionable, a nuisance claim or lawsuit based on location, likeness, or life-story rights against a film or TV company can still be predicated upon an incidental-shot use in a motion picture, as a practical matter. Even with no supporting legal merit to it, it can still become an expensive headache. In other words, the law is what you read in the casebooks and statutes, but life is what happens out on the street, and rights are often what even undeserving allege until extinguished in a litigation.

Moreover, most of the good film and TV rights and “clearance” stories, though perhaps bandied-about as anonymous and sanitized hypotheticals, never make it to the casebooks. Most of these types of motion picture rights and clearance claims are never litigated, much less revealed by the publication of judicial opinions thereafter. From a film or TV entertainment lawyer defense counsel’s perspective, it is often worth paying the motion picture rights claimant US$2,500 or more, just to go away. Oftentimes, the deductible on the errors and omissions (“E&O”) insurance policy for a film can be at least US$10,000. Sometimes the deductible is even more. (Life-story encroachments and celebrity likeness rights violations can be far more expensive). Therefore, in practice, in the case of an incidental use “passing shot”, the film or TV company, with or without its entertainment lawyer’s advice, may simply pay the rights claimant. The producer may elect to do this rather than (rightfully or wrongfully) even report the claim to the E&O insurance carrier, much less seek coverage on it. Moreover, the E&O carrier will typically not defend against the motion picture rights claim and staff it up with its own defense-counsel entertainment lawyers, unless and until the suit is actually commenced or filed. So it is often the film or TV producer’s or distributor’s exclusive headache unless and until the lawsuit is filed.

The New York statute on point for those in the film and television industries and other media and entertainment industries as well, is New York Civil Rights Law, Sections 50 and 51, a statutory lattice which should be deemed relevant to both name & likeness and life-story rights matters:

http://public.leginfo.state.ny.us/LAWSSEAF.cgi?QUERYTYPE=LAWS+&QUERYDATA=@SLCVR0A5+&LIST=LAW+&BROWSER=EXPLORER+&TOKEN=38256299+&TARGET=VIEW

http://public.leginfo.state.ny.us/LAWSSEAF.cgi?QUERYTYPE=LAWS+&QUERYDATA=$$CVR50$$@TXCVR050+&LIST=LAW+&BROWSER=EXPLORER+&TOKEN=38256299+&TARGET=VIEW

http://public.leginfo.state.ny.us/LAWSSEAF.cgi?QUERYTYPE=LAWS+&QUERYDATA=$$CVR51$$@TXCVR051+&LIST=LAW+&BROWSER=EXPLORER+&TOKEN=38256299+&TARGET=VIEW

If anyone thinks that an individual can’t sue for an unauthorized use of his or her likeness in a motion picture, then that skeptic should read that statute and the cases decided under it. California (Civil Code Section 3344) and most other American states have law similar to New York’s Civil Rights Law 50/51, on the books.

http://codes.lp.findlaw.com/cacode/CIV/5/d4/1/2/2/3/s3344

“50/51” and “3344”, are the bread and butter of entertainment lawyers. A private person usually sues a film or TV company on this type of likeness claim, under his or her “right of privacy”, whereas a celebrity usually sues the motion picture company on this type of likeness claim under his or her “right of publicity”. And the best way to evaluate a life-story rights claim is to navigate through a morass of prior case law, or else, better yet, have your entertainment lawyer do it for you.

It’s rough out there. One should obtain signed written rights clearances from those whose names, likenesses, or life-stories recognizably appear in one’s motion picture or TV production. Even a location-depiction claim could tie up a film or television shoot in a worst-case scenario, including that familiar case that many entertainment lawyers have dealt with on an incoming cell phone call when the location-landlord shows up on set 15 minutes before cameras roll and demands more money. When that happens, count your blessings, though. After all, the film likeness rights claimant or life-story rights claimant often doesn’t approach the production company until after the film is in theatrical release, when it is too late to cut the film’s negative.

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My practice as a film lawyer and entertainment attorney includes film and television rights, life-story rights, clearances, location agreements, licensing matters, and other aspects of motion picture development, production, exhibition, and distribution. If you have questions about legal issues which affect your career, and require representation, please contact me:

Law Office of John J. Tormey III, Esq.

John J. Tormey III, PLLC

1324 Lexington Avenue, PMB 188

New York, NY 10128 USA

(212) 410-4142 (phone)

(212) 410-2380 (fax)

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Clearances For Motion Pictures

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Sunday, December 30, 2012

LLC’s, Corporations, And Other Business Structures - Part II: Written By New York Entertainment Attorney And LLC Counsel John J. Tormey III, Esq.

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Law Office of John J. Tormey III, Esq. – Entertainment Lawyer, Entertainment Attorney

John J. Tormey III, PLLC
1324 Lexington Avenue, PMB 188
New York, NY 10128 USA
(212) 410-4142 (phone)
(212) 410-2380 (fax)
brightline@att.net
http://www.tormey.org

LLC’s, Corporations, And Other Business Structures - Part II: Written By New York Entertainment Attorney And LLC Counsel John J. Tormey III, Esq.

Part I of this article discussed the process of selecting a new name for a business, typically a limited liability company (LLC) or a corporation in this day and age. Many people choose to incorporate or form an LLC, so as to minimize their personal liability for the debts, liabilities, and obligations of their business. There is cost to forming an entity, but the cost is often worth it. What follows is a brief discussion of “personal liability”, and the types of entities that may be available. These types of issues regarding corporations and limited liability companies (LLC’s) are often brought to an entertainment attorney such as myself in the context of new entertainment venture start-up companies and otherwise, but are in fact universal concerns across manifold sectors and industries besides entertainment.

2. Choosing an Entity.

A full description of all the differences between an S-corporation (S-corp), a C-corporation (C-corp), and a limited liability company (LLC) would be beyond the scope of this article. Besides, the distinctions are often altered - some would say “blurred” - by changes in the Internal Revenue Code and state laws. Even by the time you read this article, further changes to relevant tax laws and state laws may be made, further affecting your entity choice as between a limited liability company (LLC), a corporation, or other available form of entity such as a partnership or trust. The bottom line is that a choice of entity should be made upon current information only, with the assistance of a lawyer and an accountant. To do it any other way is to risk making a bad choice that one will later regret, especially when the first or successive tax returns relating to the LLC or corporation are filed. Though in this day and age an entertainment attorney will typically be asked to form and file a limited liability company (LLC) rather than an alternate form of entity in the context of a new media or entertainment business start-up, the choice of entity should still be carefully examined by the entertainment attorney and the business-owner at the outset – just as it should be carefully examined in any other sector or industry.

The distinctions between an S-corp, C-corp, and limited liability company (LLC) make sense when taken in the historical perspective. Look at them as the product of a kind of Darwinian evolution. In that vein, the S-corp and C-corp may someday become but extinct historical artifacts, while the LLC could become the only entity “fittest” to survive. The LLC may be the best choice of entity - if affordable, and if one is not otherwise precluded from forming it by virtue of one’s own tax profile or one’s home state’s current restrictions on LLC’s.

At some point in history it was realized that persons involved in businesses could be thereby putting their own personal assets at risk as a result. That principle still applies, by the way. If one runs an unincorporated or non-LLC business out of one’s house, that business owner may risk later losing that same house, not to mention cars, bank accounts, and other assets, to the debts, liabilities and obligations of one’s business. This is what “personal liability” is all about. A business owner wants to avoid personal liability, at all costs. The owner wants to shield his or her assets - like a house, cars, and personal bank accounts - from the risks engendered by the business. For these reasons, understandable and common to all humanity, the concept of a corporation was first formulated, many years ago. Rights deals in the context of film, music, television, and publishing, particularly, tend to be liability-evocative, and so it is not uncommon for an entertainment attorney to first focus on the structure of the business vehicle through which the deal is intended to run, before looking at the proposed deal itself.

The traditional and old-fashioned form of corporation in the U.S. still exists as of this writing - in the form of the C-corporation, named after a “Subchapter-C” in the Internal Revenue Code. When properly filed and maintained, the C-corp shields the business-owner/principal from personal liability. For example, if there is US$10,000 in the C-corp’s corporate bank account, then, in theory, only that US$10,000 amount can be used to satisfy a civil (court) judgment against the corporation - even if the President and sole shareholder of the corporation has an additional $50,000 in his/her personal bank account. A “wall”, “shield”, or “veil” is put up between the two sets of assets.

But the C-corp posed historical problems, principally that of so-called “double taxation”. Those C-corp owners filed corporate tax returns as well as individual tax returns. The unsuspecting were thereupon often disheartened to find out that they were subjected to an extra tax hit. The C-corp would be taxed on corporate earnings. In addition, the shareholders could also be taxed personally on monies withdrawn from the corporation by way of dividends. The net effect wasn’t always necessarily a 100% increase in otherwise-prevailing tax (as the somewhat-misleading phrase “double taxation” might otherwise suggest). But, on the other hand, the monies generated by the C-corp were required to filter through two “layers” of taxation as opposed to one.

In this regard, a number of business owners, including some in the entertainment business, realized that they would have oddly been better off from a tax perspective if not incorporated - a bizarre result if there ever was one. Why should the tax code and state corporation law encourage you to take unacceptable personal risk, after all? Some persons thereupon decided to simply not incorporate (or “un-incorporate”, dissolving a pre-existing corporation), and thereupon take the oft-significant risk of individual liability so as to minimize taxes. If continued, one would expect the rate of commercial litigations and personal bankruptcies to rise as result, an event which in no way would be in the public interest. Other persons instead opted out of corporate and business ownership entirely. As an entertainment attorney practicing in New York, I still encounter many companies who have yet to incorporate or form a limited liability company (LLC) – they are typically either sole proprietorships or de factopartnerships, the risks of which their principals are still assuming personal liability whether aware of it or not.

The next installment of this article will address how society responded to the growing dissatisfaction with the C-corp - namely, the creation of the S-corp and the limited liability company (LLC) thereafter.

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My entertainment law practice includes incorporations and the formation of limited liability companies (LLC’s). If you have questions about legal issues which affect your career, and require representation, please contact me:

Law Office of John J. Tormey III, Esq.

John J. Tormey III, PLLC
1324 Lexington Avenue, PMB 188
New York, NY 10128 USA
(212) 410-4142 (phone)
(212) 410-2380 (fax)
brightline@att.net
http://www.tormey.org

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Independent Contractors vs. Employees - Part I: Written By New York Entertainment Lawyer And Employment Attorney John J. Tormey III, Esq.

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Law Office of John J. Tormey III, Esq. – Entertainment Lawyer, Entertainment Attorney

John J. Tormey III, PLLC

1324 Lexington Avenue, PMB 188

New York, NY 10128 USA

(212) 410-4142 (phone)

(212) 410-2380 (fax)

Independent Contractors vs. Employees - Part I: Written By New York Entertainment Lawyer And Employment Attorney John J. Tormey III, Esq.

As an entertainment attorney practicing in New York, I see people and companies struggling to address the definition of independent contractor vs. employee, frequently. Anyone who hires workers or is thinking of doing so, in New York or elsewhere in the United States, should be aware of the following. Before hiring anyone, it is critical that one carefully determines with one’s accountant and entertainment attorney or other counsel whether the new hire is to be an “employee”; or, alternatively, an “independent contractor”. The terms have legal and financial import; they are mutually exclusive; and one should never use them interchangeably.

The distinction between the two types of workers is important because, among other things, it is usually more expensive and more administratively inconvenient to hire and pay “employees” as opposed to “independent contractors”. On the other hand, few persons or companies that hire workers are truly willing to relinquish control over their hires, to a sufficient degree to allow those workers to accurately be characterized as “independent contractors” as opposed to employees. As an entertainment attorney, I frequently encounter business projects of short duration such as a single film shoot, a single album recording, or a single pilot shoot. The question of “independent contractor vs. employee” therefore arises most often in the context of media and entertainment projects of multi-week or multi-month duration. Though the two constructs, “independent contractor” and “employee”, are not necessarily self-defining, the word “independent” is used for a reason, and truly translates to “loss of hiring-party control”. I’ll explain below.

The U.S. Internal Revenue Service in (former) “IRS Publication 937” identified 20 “checklist” factors that it considered when determining whether or not an individual worker is an “independent contractor” as opposed to an “employee”. The litmus test has apparently since evolved somewhat. See, e.g.:

http://www.irs.gov/businesses/small/article/0,,id=99921,00.html

The hiring party should review the most updated version of the IRS criteria prior to any hires, and it is probably more important to do so with one’s payroll company and tax accountant, than one’s entertainment attorney. The hiring party should also be aware that the IRS is not the only institution with whom to be concerned regarding the all-important “independent contractor vs. employee” determination. Other governmental agencies have a stake in preventing mischaracterization of workers as independent contractors, too.

For example, the state Department of Labor (state “DOL”) in one’s own home state may apply its own checklist of criteria to distinguish independent contractors vs. employees. One needs to be aware that there is a federal [US] Department of Labor as well as a state Department of Labor. A hiring party needs to comply with the requirements of both. In a perfect world, there should be consistency between the respective “checklists” of the IRS and the applicable DOL, as well as consistency between each agency’s interpretation of those checklists. However, your entertainment attorney and tax accountant will opine to you that the world isn’t perfect, and those interpretations could differ as to what constitutes an independent contractor versus an employee. Therefore, one should be aware as to how a local state DOL characterizes the two different types of workers, too - if different than the IRS characterization. Additionally, from an enforcement perspective, the DOL could challenge a hiring business’ characterization of its workers as “independent contractors” vs. employees, without the IRS joining in on the contest. The IRS and the DOL are separate agencies, although there is a suggestion that they will more thoroughly share electronic data with each other on field data and this issue in the near future.

The “independent contractor” determination can be the proverbial unstable apple cart, easily tipped. An employer, as most know, should withhold taxes from an employee’s pay, and make unemployment contributions with respect to those employees, among other things. Hiring companies in the entertainment field, for example, even if they already have an entertainment attorney and a tax accountant, still often wisely use a “payroll company” to administrate payment obligations to workers, so as not to transgress. The cost of a hiring party mischaracterizing an employee as an independent contractor instead, could be high. If ever in doubt, payroll companies and accountants should skew cautious and conservative when making the distinction for their clients in favor of employees – and the entertainment attorney will usually tell the client to listen to his or her payroll company and tax accountant.

However, let’s say that a hypothetical music recording studio, or film production company, for that matter, hires 20 workers, characterizes them all (in reasonably good faith) as “independent contractors”, but uses no payroll company, tax accountant, or entertainment attorney initially. Let’s further assume that the film production or music studio pays no unemployment insurance or workers compensation contributions with respect to any of the hires, and does not withhold taxes from their paychecks. Then, one independent contractor worker is terminated, and vindictively files with the local state DOL for unemployment compensation, claiming to be a fired “employee” instead. Even after phoning the entertainment attorney and tax accountant to enlist their retroactive help, it may now be too late. The recording studio or film production could now find itself faced with a state DOL that characterizes not just the one claimant-worker - but all 20 workers - as “employees” as opposed to “independent contractors”. The apple cart tips. The camel’s nose is now in the tent.

The recording studio or film company may be required to litigate administrative hearings on the independent contractor v. employee question, and may thereupon be assessed retroactive unemployment insurance contributions, interest, and penalties with respect to the workers that “should have been paid as employees”. Other actions may also follow, such as a workers compensation audit, and perhaps even findings by the IRS and local tax authorities with respect to claimed monies that “should have been withheld” from the “employees” pay. The argument of, “But I told them they were independent contractors” may be considered a mere ipse dixit proposition and might not wash with the government. The entertainment attorney or the business owner can state the case to the authorities that short-term hires are the bread-and-butter of the local entertainment economy in the jurisdiction and so should be rewarded and not punished, but the adjudicating authorities may not accept that distinction between entertainment and non-entertainment sectors. Their only care may be to decrease the overall number of independent contractors and increase the total number of employees across all industries and sectors.

Could this nightmare have been avoided by the recording studio or film production company, through documentation, prospective use of its entertainment attorney, or otherwise? The answer is “Maybe yes, maybe no”. Please see Part II of this article for a further discussion.

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My entertainment law practice includes state and federal employment law matters relating to independent contractors and employees and other human resource matters as they arise in the fields of film, music, television, publishing, Internet, and other media and industries. If you have questions about legal issues which affect your career, and require representation, please contact me:

Law Office of John J. Tormey III, Esq.

John J. Tormey III, PLLC

1324 Lexington Avenue, PMB 188

New York, NY 10128 USA

(212) 410-4142 (phone)

(212) 410-2380 (fax)