IP Rights for the Film Industry

 We speak to Christopher Young, Head of the Intellectual Property team at MinterEllisonRuddWatts, about the challenges his clients often face and why it is vital for IP rights to be sorted from the onset.

The film industry’s most valuable asset is Intellectual Property, which can be protected by copyrights, trademarks, patents, and the right of publicity for distribution deals. When and why does it go wrong?

As is often the case with IP, getting the IP basics right is critical, this is no more so than with film. If this is not achieved and appropriate rights are not secured it can flaw distribution and value worldwide. Fundamental considerations for IP are clear ownership and full rights to use relevant IP – these are key. Using a full range of appropriate contracts with all contributors to IP during the production phases, assessments and contracts to reduce the risk of claims and rights clearance assessments are all of significant importance. Our production work in New Zealand is usually coupled with the need to also ensure structures meet requirements for grants from the Film Commission which means contracts and structures must fit within the parameters of the New Zealand grant framework. So for us working with many international producers, this often requires changing the structure of typical contract suites used elsewhere. Other local law tensions arise with factors like goods and services tax and our local employment law, and health and safety law all impacting.

Of all the IP rights, copyright is the linchpin of the film-making enterprise. What protection should be sought after here?

The key factor is full ownership over all potential uses of copyright, and that it is not infringing 3^rd party rights, structures and contractual regimes to achieve that; reducing the likelihood of claims from contributors and third parties are also critical. While “work for hire” copyright regimes are typical in the U.S., New Zealand has a different copyright regime and contracts need to be drafted to ensure that rights are obtained and owned under local law. Again this requires a different contractual approach to that typically used in the U.S.; in New Zealand, this extends to dealing with individual’s rights under New Zealand law including moral rights and performer’s rights. This then needs to be extended by contract to ensure rights are secured in an appropriate manner worldwide. The tension between U.S. copyright requirements and New Zealand law then needs to be handled in these contracts. Then targeted postproduction rights management and enforcement is critical.

Film and video related IP concerns are not limited to copyright infringement of the released film. It is important to consider IP from the very beginning. Why is this vital?

Clearance and ensuring ownership of relevant IP is probably the most important basic to get right through the production process as without that in place correctly, exploitation and distribution, which follows later in the process, as well as protection and enforcement of the IP rights, relies on these basics being in place correctly. Clearance of rights is critical including in the context of 3^rd party conflicting rights and appropriate releases from contributors.

What design rights should creators think about?

Design rights in film are wide and cover all aspects from production, props, special effects, methods through to post production, distribution and other exploitation including character merchandising of key assets and personalities. So copyright and other aspects of the film are important including trademarks, registered designs and design patents, as well as copyright. Occasionally patents are involved too. Coordinating this worldwide or through key markets is one of the challenges. We need to think of every material involved including characters, props, post production and distribution. Confidentiality undertakings, IP ownership contracts and quitclaims from contributors are very important in the array of contracts used.

What difference can this make in the long run?

Getting these things right can make a significant difference long term as if particular ownership of the IP and 3^rd party rights are not sorted correctly, it will impact funding arrangements and distribution in the future.

About Chris

• How do you measure your success? Client satisfaction is key for me. My focus is always to try to ensure that my clients are able to achieve their business requirements in a timely, cost-effective manner. My focus is on providing pragmatic and effective commercial legal advice and strategy is central. Technical excellence is a given and sits behind this but it is how that is applied that is key. As well as clients my team are critical to our delivery of excellent service. Fostering a flexible, diverse and resilient team that help bring this success to the fore is critical. As an IP lawyer with a key focus on the IP aspects of corporate transactions, understanding the bigger deal, and its dynamics and being able to work well with other teams of corporate lawyers is also critical, and involves what is often a different approach to assessing IP risk and technical IP considerations in the context of large transactions and associated licensing.

• What has been your biggest achievement in the past 12 months? There have been many challenges and achievements in the last 12 months, but dealing with the pandemic and successfully moving a large team to work remotely with short notice of a full lockdown, and then assisting clients to deal with this period has to be central to 2020. Much of my work with clients was not strictly IP based but assisting them as a sounding board and trusted adviser, as they grappled with the rapidly changing business world, was challenging and very stimulating and satisfying

• What has been your flagship piece of work and how did you apply thought leadership to this scenario? There was a wide range of client matters that were notable last year but achieving registration for an important export client of its key brand in PRC that had been inappropriately registered some years ago by a counterfeiter was a great result for our client. It followed implementing over time a strategy we put in place to achieve this years ago, which impacted my client’s worldwide IP strategy, with numerous steps in the intervening years, including a number of appeals through the PRC trademark registration system. Regaining its key brand in China was the end result of this strategy.

Christopher Young      

Partner

T +64 9 353 9910

christopher.young@minterellison.co.nz

MinterEllisonRuddWatts

minterellison.co.nz

Chris Young heads the Intellectual Property team at MinterEllisonRuddWatts in New Zealand. He is a specialist intellectual property lawyer and well recognised commercial IP and brand strategist. His work spans a wide range of areas and includes a subspecialty in media, film and television production handling local legal work for a wide range of productions typically from US producers, ranging from long term TV series including Spartacus, Ash v Evil Dead and Power Rangers, through to films including the Avengers, Thor and Thor Ragnarok. Other key areas of Chris’ practice include IP commercialisation, branding, trademarks, licensing, marketing, sponsorship, commercial agreements, handling all the IP aspects of commercial/corporate transactions, IP aspects of TMT, privacy, IP audits. He also advises on IP and other regulatory aspects in the pharmaceutical / medical/ medical device industries and other regulatory work.

Chris has an extensive international practice both for New Zealand based export clients and also handling for international clients inbound work into New Zealand and Australia, with wide networks including through the IBA ( International Bar Association) and INTA (International Trademark Association where he has previously chaired the Asia Pacific Famous And Well Known Marks subcommittee, and he currently chairs the Bulletin subcommittee for Asia Pacific ).