Legal Forum
Below are the 5 firms of legal and business experts who have offered their services to provide clear, helpful, jargon-free advice to your legal questions. Click on the links below to view their profile.
Brabners Chaffe Street
Shipley Intellectual Property Lawyers
Rights.tv
DLA Piper
Eversheds
The forum will present an opportunity for our members to make contact and build relationships with industry-specific experts. All the panel firms have offered to provide an initial offline free session individually to those members requiring more detailed advice.
The forum is intended to be a complementary service to Vision+Media’s members who may be uncertain where to access sector-specific legal or business advice. We hope that with our experts’ involvement and our membership’s enthusiastic engagement the forum will stimulate debate and shed light on commonly encountered problems.
If you have any questions which you would like answering, please email [email protected]
Questions
Below are the questions which have been submitted so far and were discussed at the launch event. Click on the questions below to view.
Q01. Underlying rights clearance and ‘favoured nations’ question
Q02. Non Disclosure Agreements question
Q03. Ex agency employee taking clients elsewhere question
Q04. Unauthorised use of IP question
Q05. Music rights clearance question
Q06. Potential for Libel question (expressing an opinion on a talent)
Q07. Revenue collection from global copyrights
Q08. Protection of Domain name and 'Domain scam email'
Q09. Protection of Music Copyright, getting the best publishing deal and music contracts
Q10. Rules of release question regarding filming and photography in public and non-public places
**Please note that the responses supplied by the panel, whilst every effort is made to make them accurate, practical and up to date, are indicative and a general statement of the legal position only. Whilst these principles are offered as useful guidance, their application to specific individual circumstances will require a full consideration of all the relevant facts. Accordingly, neither Vision+Media nor the panel members can accept any liability arising from any reliance placed upon such advice. It may be appropriate to engage one of the panel members to provide direct specific advice and each panel member has agreed to offer an initial free short consultation and to be transparent about its ratecard for services.**
“I’m negotiating to clear underlying source material (a book) for a radio dramatisation. The agent is playing hardball and insisting the writer should be paid more than the standard broadcaster rate. The broadcaster insists that all writers agree the standard rate to avoid “floodgates". I need to land this deal to land the project. The difference between the standard rate and what is being asked for is not significant. How can I get round this?”
Nik’s response:
Firstly, check that the writer’s agent is the correct person to negotiate with as opposed to the book publisher (often the publisher will have acquired radio rights rather than allow the author to retain those rights).
The writer is perfectly free to try and negotiate rates that are higher than the standard rates, he isn’t bound to accept the standard rates – it boils down to a commercial negotiation – and should be expected especially where the author has profile and experience and his work is in demand . Issue here seems to be more one of fear of setting a precedent and ‘opening floodgates’. Options are to pay the additional amount and enter into a confidentiality agreement which requires the author to keep the amount paid to him secret, or review the deal structure – ie is it possible to restructure payment terms so author accepts the lesser standard rate in return for more favourable payment terms (e.g. do a ‘front loaded’ payment so that its more attractive up front for the writer), or to review whether you need all the rights you are asking for, whether some ‘trimming’ of those rights (e.g. in respect of duration or exclusivity) might be possible in order to secure the deal at the standard rate.
“In terms of ad funded projects aimed at a broadcaster, how do you protect yourself and the idea when sharing it first with an agency which could facilitate in getting the brand on board? Do you get them to sign an NDA from the very first meeting?”
Stuart’s response:
This question applies across a range of activities concerning confidential information, trade secrets etc. The ideal scenario is to have the non disclosure agreement signed up front ie, even before your first meeting. You would be protected by common law as a fallback but this would involve the owner of the confidential information satisfying established common law rules. Also an NDA can give clarity as to what the agency is and isn’t permitted to do with the relevant confidential information ie, permit the agency to contact the brand owner to divulge the nature of the project.
“What action can you take against someone who has left the company and diverted clients away with them, even though the terms of engagement prohibited the same for 12 months?”
Sian’s response:
Before taking any action, you need to check that you have a ‘restricted covenant’ clause in your contract with that person and that it is enforceable (properly drafted). You need to protect the business but these clauses also have to be reasonable. If enforceable, then a ‘letter before action’ would be the first step where you would claim breach of contract. Sometimes individuals are unfamiliar with their contract terms and a letter of this sort can just clarify matters for them. If you are seriously concerned about impact on business/confidentiality, you can seek an injunction – for example an emergency injunction to stop breach of confidentiality. This can be expensive.
“We tendered for a large project to be the lead digital agency for a three year period for one of our clients that was taking a new product to market and we were shortlisted alongside two other agencies. At our final review meeting following the submission of creative work, ideas around consumer engagement mechanisms and suggestions on interactive content, we were told that all three agencies had come up with very different ideas. However, the website launched earlier this year and the creative content is exactly the same as the work we submitted (but of lower quality in our view!). How do we address the issue without sabotaging future relationships? What are the legalities surrounding intellectual property rights and how difficult is it to prove?”
Andrew’s response:
Two issues here – firstly to preserve relationship, secondly – to protect rights.
Ideas are not always protected. Copyright exists in the ‘expression’ of ideas rather than in an idea itself. You can argue that your idea was copied, to protect the idea you need to be able to prove ownership. Keep records – was it developed in house? How developed was it? Sub contracted to freelancers? Was there a copyright symbol on the project when submitted? Check your chain of title.
Next step would be to prove infringement of copyright. Check if there are any contractual barriers to claiming infringement in the invitation to tender, ie in tendering were you granting further rights in the idea regardless of winning the pitch? Check that you haven’t signed anything that waived any claim to materials used in the pitch as any such waiver could stop you from making a claim.
On a practical level, bring the issue to their attention, seek feedback on why it went elsewhere, use this as leverage as the company may then feel they ‘owe you one’ for the future.
“If you have an unseen piece of footage by a major music artist, what are the steps in getting it protected and licensed for commercial use?” [music producer]
* assuming the band is signed to a label with an exclusive record contract, and that the client made the recording themselves of a live performance of that artist.
With music, and video, there are a number of different copyrights E.g; copyright in the composition,the sound recording,and the film. As the musical and performance works are likely not yours, The ownership of the copyright in the music, unless assigned to a label or some other third party, will belong to the artist.
The video will attract its own copyright which will be owned by the videographer. (But to use this for any other reason than personal use, all clearances must be obtained!)
Consents are needed for the recording to avoid violation of the performers rights.
So, first port of call should be to contact the record label who will be able to direct you to who the rights holder is. (the rights to the particular recordings may have been assigned to the venue). Once the rights holder has been identified, you may look to enter negotiations with a view to agreeing a licence. If agreed to, this will likely be for in return of royalty payments.
* If the client has come into possession of a recorded piece, e.g. by working in the archives somewhere. Although our final advice, above, would remain unchanged, the potential for punitive damages, to be awarded against you is less if you had believed that consent had been given for the recording and no infringement had taken place.
* A final circumstance is where consent has been given by both artist and label, we would urge our client to ensure that the recording is documented and dated as the recording itself, whether film or sound, may qualify for its own copyright protection.
The following 2 questions were answered by the whole panel....
“We are producing a tv documentary about the UK obsession with the celebrity ‘culture’ and its corrosive influence on television. As part of it we are doing a series of vox pop interviews on the streets of Manchester. On one take we had a very bright and engaging lad give a really eloquent and interesting take on the subject but he did a bit of a rant about a particular celebrity and referred to her as ‘an attention seeking talentless slapper’. Is it OK for people to express opinions about others even if they are quite derogatory or will be exposing ourselves to claims for libel? This guy’s contribution really adds something to the material and we don’t really want to it edit it down...please advise.”
Replies from Andy Smith, DLA Piper:
This type of statement could lead to exposure to a claim for libel. Although there would be a number of defences available, and a claim may not be successful, this doesn’t stop the claim being threatened or brought, potentially involving you in a long winded and expensive process of defending your inclusion. A claim could be issued against the broadcaster, the producer and also the person who made the statement.
Nik, Brabners Chaffe Street
Yes, down to the sensitivities/approach of the individual involved. Some talents are known for seeking to take action in these circumstances.
Andrew, Rights TV:
Absolutely agree with all Andy has said. Also, sometimes depends on the broadcaster’s attitude to the piece (compliance dept). One broadcaster may wish it taken out, another may feel it could make the programme more lively. If the latter, important to have the broadcaster confirm that it will assume liability for the inclusion, to protect the producer and the individual.
We didn’t get to this question, but several of the firms managed to speak to and advise the producer who asked the question, as he attended the networking drinks afterwards. Subsequently, DLA provided the following advice:
There is no single answer, because the tax treatment depends on the nature of the owner (e.g. company or individual), tax residence (UK or overseas) and the method of exploitation (is it by way of royalty or sale of rights for a lump sum). However, for UK residents the gap between the projected top rates of corporation tax (intended to fall from 28% to 24% by 2014) compared to the top rate of income tax (50% for incomes in excess of £150,000) means that a corporate vehicle is likely to become popular in the UK.
However, on ultimate sale of the assets holding within a company can trigger a double charge (at company and shareholder level) on capital gains, unless the company itself is sold. Some taxpayers, in particular companies with widely-held shares and non-residents, or persons intending to re-locate abroad can consider transferring copyright to a low tax area. Certain countries (such as Ireland) have the benefit of both low rates of corporation tax (12.5%), a policy to attract intellectual property and membership of the EU and a tax treaty network (which other tax havens do not have).
However, great care is required in this sort of planning because UK anti-avoidance legislation can cause income arising on assets transferred offshore to be taxed in the UK even if not distributed back to the UK. The rules for individuals (now in section 720 and 727 of the Income Tax Act 2007 and previously in sections 739 and 740 of the Income and Corporation Taxes Act 1988) are wide-ranging, as are the controlled foreign company ("CFC") rules, which apply a similar test for companies holding assets through companies located offshore. The CFC rules are also the subject of a review at HMRC, but are likely to continue to target avoidance in connection with intellectual property. Taxpayers also need to take care in relation withholding tax that may apply to payments of copyright royalties from overseas.
Timely application for relief under double taxation treaties can prevent these charges arising, but careful consideration of the treaty is required.
Email received: "A formal application here dated on Sep 2, 2010 from Hanshin company requested "msconcepts" as their internet keyword and China (CN) domain names. But after checking it, we find this name conflict with your company name or trademark. In order to deal with this matter better, it's necessary to send email to you and confirm whether this company is your distributor or business partner in China?"
Mark, Shipley Solicitor's Response:
This is almost certainly a scam designed to generate business by the Chinese domain name registration company. It is reasonably common. The scammer’s services ostensibly revolve round helping foreign companies with any matters relating to Chinese domain names, whereas they actually try to scare companies into paying them to register domain names at an inflated price (if they register them at all).
As regards the registration of an “internet keyword”, as you’re probably aware, they’re a simplified way of reaching a website by entering in a word rather than the address into a web browser (if it supports that function). So, for example, entering “??” or “mobile phone” might take you to <nokia.com>.
If you consider that any “.cn” or “.hk” domains or particular keywords are/will be valuable to your client, the client can seek to register them itself. We would be happy to assist in this regard. I’ve done an availability search for <mushroomconcepts.cn> and it is available for registration. We’ve used Asia Registry in the past for Asia/Pacific domain registrations and they are reasonably priced.
Andrew, Rights.TV's Response:
This is an email that a number of my clients have also received, and you are not the only one to have some concern about this. Unfortunately, on the evidence available, it seems as if this is not a genuine inquiry - the sole purpose of this email appears to be to solicit companies to buy the domain names in question (or potentially to just take your money irrespective of the registrations!).
However, the email does raise a legitimate issue - what do you do about domain name registrations and the protection of your brand outside the UK? The key issue for you is whether this is a country where you are likely to undertake a considerable volume of work or generate significant revenues? If not, then it is unlikely that a domain registration in itself would cause you any concerns. Most companies go as far as registration of their domains in the UK and USA as these are likely to be the most relevant and the .com in particular is the most valuable international domain, however very few companies have the resources or the need to register their domains in every country of the world - and in every language variant and dialect.
The basic rules are :-
a) for domain names, if you do not register this yourself, then unless you have a trade mark in the particular territory (or can rely on your reputation of having built up a brand identity locally), then anyone is free to register the domain.
b) for copyright, this is automatically protected internationally by various treaties and agreements - putting the (c) symbol and the date on your material ensures you are protected outside the UK in countries where they have signed up to the relevant treaties. However, enforcement of copyright internationally is unlikely to be simple or inexpensive.;
c) for trade marks, a UK registration can in certain circumstances be of benefit in obtaining a trade mark in other countries, however, normally unless you are trading in that country or can show a local awareness of your brand, then you would need a local registration to enforce your trade mark rights.
Unless there is an overriding commercial reason why you feel you need to protect your trade mark locally, then it is unlikely that this is ever going to be something that you need to consider. The cost of international registration and enforcement is significant - and unless you have a large international brand then it normally makes sense to focus on protecting your IP where it is commercially sensible for you to do so.
My advice on this is therefore to ignore the email, but to use it as a prompt to look at what protection you already have in place for your brands, and whether this covers the markets and territories most valuable to you. If not, then look at the costs and weigh up whether domain and trade mark registrations in the relevant countries are economical.
Ben, Shipley Solicitor's Response:
Copyright - Sending demos has to be viewed by the artist as a balance of risk v reward. We could draft an appropriate confidentiality agreement which sets out your rights, but we have known recipients of these to simply throw the demo in the bin rather than listen to it. To even get your demo heard is an achievement and one which you do not want to put barriers up in front of. Copyright in your music arises automatically. The best thing you can do is to keep evidence of when you created it, and log who and when you sent out the tracks to. If you find that a label has copied your songs in the future, each case would be decided on an evidential basis.
Publishing - Before we launch into the detail of what publishers do, it is important to realise that the music business has an ever changing horizon; where money was traditionally made shifting plastic cases, this has moved this to digital and live performances. This is reflected in the way ‘deals’ are structured, and we shall go into a couple of examples below. First, we shall look at the basic differences between publishing companies and the record companies
The Companies - Record companies make money by selling the records. Simple. This is a high risk business where 9/10 releases will make no profit. The record company will pay for recording sessions, manufacturing and distribution, marketing and advertising, and provide accounting. Record companies have historically been known to hand artists large advances, to be recouped from future royalties. These advances are generally used for tours, videos, equipment and other band essentials. Record companies will pay two royalties; the first to the performing artists and the second, a mechanical royalty to the composer/publisher. A mechanical royalty is so called as it was paid wherever a mechanical device copied the track.
Publishing companies are generally in charge of song registration, licensing, and royalty collection. Different types of royalty exist; a mechanical royalty is to be paid on each reproduction by ‘mechanical’ method (including those royalties paid by the record company), and a public performance royalty is due wherever the song is broadcast to the public, for instance on the radio. Traditionally, a publisher will own the copyright in the songs, but this position is not set in stone, as shown below.
The Deals - The most commonly talked about deal of recent years is the 360 deal. It is known as such because the deal covers every aspect of the artists career such as recording, publishing, merchandising, touring, and the artist as a brand; it is essentially a ‘net profits’ deal. Often a lot of money will be seen by the artist upfront, but the compromise will likely be the artist has to forgo some control over its creative career.
A similar deal is that of the 270 deal. This is much like the 360 deal, above, but with the publishing rights carved out. It is then up to the artist to decide how to deal with these.If you do go down the latter route, and retain the rights over your publishing, various types of deal may be available. Examples include:
- Co-publishing Deal: This is a certain type of publishing deal where the publisher and the songwriter each own 50 percent of the copyright.
- Administration Deal: Without a share of the copyright, the publisher agrees to service the writer by collecting all sources of income and handling all aspects of administration on a commission basis.
Sample Contract - No two deals are the same. A commonly made mistake is to go into negotiations arguing is believe to be a ‘standard’ term. Terms and royalty rates, now more than ever, are changeable and will vary from deal to deal, much like the move away from the traditional rigid view of publishing and recording. We suggest that if a contract is sent your way, you sit down with a lawyer, and explain your aspirations and hopes of what you would like from the recording contract, as well as what you may have been told the contract will contain. If that was us, once we understand the deal, we could review the terms and explain the affect of the contract, as well as suggesting additional terms and negotiate the deal for you.
What are the legal rules with regard location and appearance releases? If we are filming an advert in a real life location, there will invariably be members of the public in the background, do we have to get their permission?"
David's response:
As a general rule, there is no obligation to seek agreement from members of the public when filming in public locations, when the appearance of the individuals shown is incidental and they are clearly random and anonymous. However, in consideration of the Data Protection Act 1998, advertising standards codes and in the absence of a codified law in the United Kingdom as regards privacy and its fluctuating nature, the scope by which an individual can prevent use of their image is ever increasing. It is therefore good practice to obtain written permission from individuals featured in photographs or film prior to distribution to the public.
Filming in Public Places - As discussed above, when the appearance of individuals shown is incidental and they are clearly random and anonymous there is generally no obligation to seek agreement to feature the individual and there is no inherent right for the individual to prevent publication of photographs or film in this regard.
Courts have held publication would only be prevented if photographs were obviously private or would provide substantial offence to a person of ordinary sensibilities placed in similar circumstances to that individual. It is also worth noting that consideration will be given to any accompanying text alongside a photograph or film when determining the extent to which it may invade upon an individual's privacy.
However, in certain instances the courts have taken a more expansive view and held that photographs taken of persons in public places, even if they are merely walking down the street or on public transport, could in certain circumstances infringe privacy, by way of example, extensive coverage of an individual or if the individual photographed is with a child, since children should be protected from intrusive media attention. The requirement to obtain consent is therefore dependent to a large degree on the relevant circumstances.
Filming in Non-Public Places - When the appearance of individuals shown is taken on private property other than the home (which would be deemed confidential or private), by way of example, a restaurant, hotel or department store, the law is less clear.
To a large extent, the requirement for consent will depend on whether the photograph or film is of private acts, or alternatively, whether there were any signs or other security measures which would have suggested that photography was not permitted or the location was deemed a "…secluded place…", by way of example, a remote holiday destination.
Data Protection Act 1998 - The Data Protection Act 1998 confers broad rights on private individuals (and celebrities) to prevent publication of photographs or film of them, where such film or photographs constitute personal data, i.e. a living individual can be identified either from the photograph or film alone (or with other information in the data controller's possession) and the portrayal affects the individual's privacy, by way of example, the photograph or film "…relates to…" the individual in his or her personal or family life, business or profession. A photograph or film will also "…relate to…" an individual if it can be used to influence or inform actions or decisions affecting that individual.
This area of law is unclear, but the circumstances in which an individual may object to their portrayal on the grounds that it affects their privacy seem to cover any photograph of an individual on their own or in a small group.
In consideration of the ambiguity in this area, it would be best practice to assume that any clearly identifiable person would constitute personal data in relation to them and to obtain consent prior to using the photograph or film for advertising or commercial purposes.
Advertising Standard Codes - The advertising standard codes also contain specific guidance as regards the use of images of individuals where they have been portrayed or referred to in advertisements without permission.
The United Kingdom Code of Non-Broadcast Advertising ("CAP Code") applies to non-broadcast advertisements, by way of example, video commercials and online advertising. The CAP Code includes specific provisions dealing with the protection of privacy and provides that marketers should not unfairly portray or refer to other people in an adverse or offensive way and recommends obtaining permission before: referring to or portraying members of the public or their identifiable possessions (however, the use of crowd scenes without permission may be acceptable); referring to people with a public profile; and/or implying any personal approval of an advertisement.
The BCAP Advertising Standards Code ("BCAP Code") regulates television and radio advertising in the United Kingdom. As a general rule, the BCAP Code provides that "…living people must not be portrayed, caricatured or referred to in advertisements without their permission…". The exceptions include where the appearance is brief and incidental, by way of example, crowd scenes.
An individual may lodge a complaint with the Advertising Standards Authority ("ASA") if an advertisement is found to breach advertising codes, the ASA will most likely seek removal of the advert or request changes be made, and further measures if there is a failure to comply with its request, by way of example, seeking that advertisers refrain from allowing the advert to be published until such ASA requirements are implemented.
Company Profiles
Brabners Chaffe Street is a leading North West based full service law firm with one of the largest specialist commercial and intellectual property (IP) teams in the region. The team works with clients ranging from start ups to sizeable corporates in the software, IT, digital, creative, media and entertainment and sectors providing a range of expertise including: general commercial and contract advice; the protection, exploitation and enforcement of IP rights; and advising upon data protection and e-commerce matters.
Nik White leads the commercial team in the Liverpool office. He is recognised as a leading individual in his areas of expertise by the main legal directories, in which he is quoted as being “approachable and professional” and “very commercial and highlights key issues well”. He is assisted by his team members, who adopt a similar approach.
http://www.brabnerschaffestreet.com
Shipley is an award winning specialist intellectual property and technology legal practice. Our expertise is in identifying, protecting, exploiting and defending your assets. Our client base includes creative, web, IT, technology and media companies.
At Shipley we understand business and the law. With our experience and knowledge we see all the angles. We take the time to know your business and your needs. This understanding, combined with our passion, provides a service which will both protect and empower you now, and work for you as you grow.
Do not mention ‘time on the clock’ to a Shipley team member. Your work and needs are properly scoped out before any work takes place, and a fixed fee will be agreed. No surprises!
http://www.shipleysolicitors.com
Andrew Baker founded Rights.tv in 2004, having previously worked at ITV Network Centre, Granada Entertainment USA (based in Los Angeles) as Senior VP for Legal and Business Affairs, and as Head of Business Affairs in various departments within ITV productions, including Granada Film, Cosgrove Hall Films, Granada Lifestyle and Granada Kids.
Rights.tv specialises in providing busines affairs and commercial advice to the media and television industry. Clients include a wide range of television production companies including Darlow Smithson Productions, October Films,Ten Alps, Blink Films, Carbon Media, Wide Eyed Entertainment, Raw Television and Fireback Films. In addition Andrew has advised BAFTA, the Commonwealth Broadcasting Association and Guinness World Records, as well as various talent agencies including Chambers Management and Screen agencies including Screen Yorkshire and Vision+Media.
Andrew's areas of expertise include development deals, underlying rights deals, production contracts, co-production agreements, broadcast agreements, online and interactive productions, talent agreements, and distribution and licensing / merchandising deals.
http://rights.tv
DLA Piper became one of the largest legal service providers in the world in 2005 through a merger of unprecedented scope in the legal sector. DLA Piper today has 3,500 lawyers in offices throughout Asia, Europe, the Middle East and the United States. We represent more clients in a broader range of geographies and practice disciplines than virtually any other law firm in the world. Our client commitment is also our brand – everything matters when it comes to the way we serve and interact with our clients. If it matters to them, it matters to us.
Our Media and Publishing Team is part of the global IP and Technology Group which is made up of specialist intellectual property, technology, telecoms, media, sport and commercial lawyers. With more than 400 dedicated lawyers our group is recognised worldwide by legal directories and industry members as one of the leading groups of its kind.
http://www.dlapiper.com/uk
At progressive international law firm Eversheds, we take an innovative approach to all aspects of multi-jurisdictional, corporate, commercial, employment, real estate and litigation legal services. We think differently and are challenging the industry norms.
As an international law firm for the 21st century, our experts apply specialist sector knowledge and commercially-focused legal advice to deliver legal solutions that facilitate our clients' successs. From mission critical mergers and acquisitions to property portfolio management and from commercial dispute resolution to energy law, we deliver a high quality, personalised service using modern techniques that deliver measurable results, cost transparency and value for money.
As a innovative international law firm, our legal specialists operating around the world in a multitude of sectors, including financial institutions, energy and natural resources, food and transport, you can be sure that Eversheds will deliver a seamless, consistent and high quality legal service wherever you need us to.
http://www.eversheds.com