Intellectual Property Law and Rights of Privacy in Relation to Home Movies

Eric J. Schwartz
Partner, Smith & Metalitz, L.L.P.
1747 Pennsylvania Ave., N.W. Suite 825
Washington, D.C. 20006

Eric Schwartz, a copyright attorney from Washington, D.C. and founding director of the National Film Preservation Foundation (, spoke about "Home Movies and Privacy: Copyright and Related Rights Issues."

The talk focused on basic practical questions pertaining to home movies by looking at U.S. copyright law from the points of view of:

(1) the copyright owner of a particular home movie;

(2) a collector or donor of film material to an archive; and

(3) a user of such material in commercial or non-commercial venues.

Primer of Copyright Law
At the outset, it was noted that this overview of copyright law was limited to the United States. Copyright law is "territorial;" this means that issues of authorship, ownership, duration, rights, permissible uses, remedies, and the like outside of the U.S. would be governed by the copyright law of each such country. So, for example, a movie that is in the public domain in the United States, may be protected in other countries; therefore its use in those countries (including the posting on a website), might be infringing if exploited (or downloaded) in such other country. As an exception to this rule, one recent case in the U.S. held that for certain foreign works exploited in the United States, the foreign law's provisions governing initial authorship are determinative for resolving conflicts about its use in the United States.

The first issue of "ownership" is actually two issues under U.S. copyright law: first, who is deemed the "author" of the film; and, second, who is the copyright owner (controlling any rights). Initial copyright ownership vests originally with the author of the work, but the rights of ownership are assignable.

The author is the party or parties who provided "creative authorship." Usually, for feature films (that are not works made for hire) that might include all of the creative artists, that is, the screenwriter, director, cinematographer (and any other camera operators), actors, and the like. If the work is a "joint work," the authors are co-owners of the work. For home movies (that are non-feature non-fiction films), the trickier question, never directly answered by the courts, is whether the only "author" is the camera operator, and/or whether the "actors" (subjects) share any co-authorship. It is unlikely that they do in most cases, absent a fictional story line with plot, character development, and the like. It is also assumed that in almost all cases of home movies, there is no screenwriter, director per se or other creative artist; but if a story-line, character development, treatment or similar prepared material existed, rights could be shared by these parties.

In the case of a work made for hire, the employer (or for the limited cases of independent contractors, the contractor) is considered the legal "author" or copyright owner of the work not the individual "creators" of the work. It is unlikely that home movies are/were works made for hire absent an employer/employee relationship or a written agreement to that effect (in the independent contractor scenario).

Copyright refers to a "bundle of rights" that IS automatically granted by federal statute, upon fixation of the work; copyright is "owned" or "authored" (individually or as a work made for hire) based on the particular circumstances or facts in each instance.

The copyright owner(s) is anyone who has authorship interests or to whom such interests were transferred by license or assignment; the latter must be in writing and signed by the conveying party. Copyright is an intangible form of property that, unlike real or personal property, is distinct from the tangible object in which it is embodied. So, the fact that a collector is the owner of physical material (film or video prints) does not make that donor the copyright owner. In fact, under current law, the transfer of physical material only imparts ownership in that physical material, absent an express transfer of the underlying intangible copyrights. That is, to get copyrights, an agreement must expressly transfer them. This was not the case for transfers under the old (pre-1978) copyright law. However, most of the cases in the "old" law were limited to transfers of fine arts, such as canvas paintings, meaning that the transfer of rights for film material without written agreements before 1978 is less clear.

Copyright provides an author/copyright owner with exclusive rights of reproduction, distribution, adaptation, public display and public performance as well as the right to authorize others to exercise these rights. Two additional rights, pertaining to circumvention controls (access and copy protection) and copyright management information were added in 1998.

Any and all of the exclusive rights can be licensed or assigned; they are entirely divisible in "time and territory." If licensed or assigned, the new owner, such as an archive, can exploit these rights and/or further license or assign them. Licensing includes commercial or non-commercial use for stock, documentary or feature film use; creation of new original material; creation of a derivative work (that is a new work based on the original one) by modification or adaptation. A license can be granted orally, but should, for evidentiary purposes, be made in writing. An assignment must be in writing and signed by the owners of the rights conveyed (i.e., the grantor).

The exclusive rights allow an author/copyright owner to prevent the reproduction of her work into electronic form (i.e., "scanning," "uploading" or "downloading") without authorization except in very limited circumstances (i.e., "fair use") regardless of whether the original work is in the form of printed material, graphics, drawings, photographs, moving images, dramatic plays, musical compositions/recordings or computer programs. Also, these rights are not mutually exclusive so the scanning and dissemination of a work on the Internet might invoke the owner's rights of reproduction and distribution, as well as the rights of public display, performance and/or adaptation depending on the nature of the activity or work. In foreign territories, a so-called "right of communication to the public" which, for interactive activities includes "the right of making available" covers the rights of distribution or transmission, including electronic transmissions. Such rights are covered under U.S. law by the panoply of rights incorporated in the reproduction, distribution and public performance and/or display rights.

Copyright in any particular work subsists for limited duration beginning (for post-1977 works) from the moment of fixation and lasting for the life of the author plus 70 years after death (or for fixed terms of 95 years for published and 120 years for unpublished works if originally vested in a legal entity such as a corporation under "work for hire" provisions). Special provisions apply for works created by joint authors, and for anonymous and pseudonymous works.

Works published before January 1, 1978 were/are subject to a complex set of rules of duration dependent on compliance with so-called "formalities" requiring first publication with copyright notice ("c" in a circle, "date" and "name") and to extend the term beyond an original 28 year period, proper and timely registration/renewal with the U.S. Copyright Office. Although past compliance with formalities and the possibility of divestiture of copyright applied to domestic and foreign works, changes in U.S. copyright law effective in most cases in 1996, restored copyright protection for certain foreign works (that did not comply with formalities, for example).

In October 1998, Congress extended by 20 years the term of all copyrights then under protection. Special provisions were added to allow public libraries (and archives) to exploit films in the final 20 year period if they are not otherwise being exploited by or available from the copyright owner after a reasonable search (see the provisions in the law at section 108(h) for the full details).

Like copyright notice (the "c" in a circle with a date plus the owner's name), copyright registration is no longer as important as it was in the protection of (or in the case of renewal, extending) copyright, since protection is now automatic upon fixation. But it was especially important for works created before 1978, and to a lesser degree prior to March 1, 1989.

Copyright registration with the Copyright Office is done for administrative and some legal benefit, but it does not grant copyright protection, and is not necessary for that purpose. Unlike patent law, copyright law grants federal statutory copyright protection automatically to authors without the necessity of making a copyright registration with the Copyright Office. Registration with the Copyright Office is generally permissive and made for legal, mostly evidentiary, and certain commercial purposes.

Collectors and Donors of Film Materials to Archives

Mr. Schwartz and Scott Martin of Paramount Pictures created a document in August 1994 that addresses many of the legal issues facing donors, archives, and users of film material. The document is a "checklist" of issues intended to spur donations to archives and to be used as a self-help catalog of legal and practical issues related to such donations.

The document is available online, entitled Depositing Films with Archives: A Guide to the Legal Issues.


Users of Home Movies

The Copyright Office indexes and maintains records of deposits, registrations, and recordations (recorded documents such as licenses, assignments) relating to copyright registration.

These databases can be researched online at

Currently searches can be made for post January 1, 1978 material on the Internet, for registration and recordation information, but registrations cannot be secured on-line.

Although the fundamental exclusive rights of copyright owners are broad, there are numerous exceptions and limitations to these exclusive rights. The limited duration of the term of copyright is one such exception. Other exceptions permit copying, adaptation, distribution and public performance/display of the work without the permission of or remuneration to the copyright owner in certain limited instances or in some way limit the exclusive rights of copyright owners. The most widely known exception to a copyright owner's exclusive rights is the doctrine of fair use.

Fair use is a defense to a claim of copyright infringement that allows for the use of a copyrighted work, without permission, for purposes "such as criticism, comment, news reporting, teaching...scholarship, or research..." The defense of fair use requires the consideration of at least four enumerated factors on a case-by-case basis. These factors include the purpose and character of the use (that is, the transformative nature of the use), the nature of the copyrighted work, the amount and substantiality of the use, and -- most importantly -- the effect of the use upon the potential market for or value of the copyrighted work. Although it may affect the issue of fair use, a "private copying" exemption is generally not a per se part of U.S. copyright.

In addition to the fair use exemption, there are special provisions for library copying and distribution of copies of certain works in limited circumstances to library patrons. This includes certain interlibrary loan activities. These provisions generally apply to public libraries and archives (defined in the law). Also, there is a special reference (in the 1976 House of Representatives report on the 1976 Copyright Act) that notes that archiving film by public libraries/archives, that is, copying entire films by transferring nitrate to acetate film is "fair use." It refers to these activities pertaining only to "pre-1942" films; that reference is probably an error since nitrate was widely used until 1952.

A copyright owner has numerous remedies available if any of his/her exclusive rights of copyright are infringed. These include: preliminary and permanent injunctions against future infringements; impoundment and destruction of infringing works; statutory damages (if timely registration has been made); actual damages and lost profits; and, attorneys' fees (if timely registration has been made).

Users may infringe copyright either by their direct or indirect action; the latter is referred to as "third party" liability.

A "direct infringer" generally is anyone who actually engages in an activity -- reproduction, distribution, adaptation, public performance or display -- exclusively reserved to copyright owners under the Copyright Act.

Third party liability takes two forms: vicarious or contributory infringement. Vicarious liability exists "[w]hen the right and ability to supervise [the infringing activity] coalesce with an obvious and direct financial interest in the exploitation of copyrights materials--even in the absence of actual knowledge that the copyright monopoly is being impaired...[citation omitted]." Thus for vicarious liability some degree of control and financial interest is required, but culpable knowledge is not.

The other type of third-party liability is contributory infringement, which takes either one of two forms: (a) personal conduct that forms part of or furthers the infringement; or (b) the contribution of machinery or goods that provide the means to infringe. To find contributory infringement on the basis of conduct requires a party to know about the infringing activity and to either fail to stop it or to further encourage it.

Publicity and Privacy Issues

In addition to copyright issues, which are governed almost exclusively by federal law, some state law rights, including contract, publicity, and privacy rights also impact the use of film materials.

The right of privacy developed from state (common) law doctrine, and therefore varies from state to state. It is a "personal right" that is, for the most part, a non-commercial right relating to the feelings and reputation of the individual and thus is weighed by the mental distress or harm to one's dignity or esteem. This means it is also non-transferable and ordinarily dies with the individual. According to the legal treatises (e.g., McCarthy on Trademarks and Unfair Competition), the "right of privacy" is generally understood to include "privileges" (such as doctor: patient or attorney: client relations), "embarrassing facts" (that is "false light" claims or intrusion into private affairs) and, for home movies, the more relevant "right of publicity." The latter began to be recognized in case law in the early 1950s.

The right of publicity is an unauthorized commercial use of one's name or likeness (or other element of one's persona) according to McCarthy. Because it is a property right (not a personal right) it is generally descendible and transferable in the states that recognize this right. Celebrity is not a precondition to protection. Rather, as McCarthy notes, "the medium not the message is the key" - so for example, the unauthorized use in commercial products (t-shirts, coffee mugs), or in advertising will be more likely violative of the right, than the use in information (including 'entertainment' media such as biographies or novels) media. The courts by application of the First Amendment also often carefully counterbalance the right, especially if the use of the material has an important news component (for example, use in a documentary film).

Last, there are two other areas of rights protection that deserve note. The first is "unfair competition" where a consumer might be deceived as to the source of goods or services; the second are the rights of trademark/trade name where there is consumer confusion or dilution of commercial rights.

© 2001 Eric J. Schwartz