How Many Pieces Of Flair Do You Have? Obtaining Merchandising Rights From Actors

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A recent decision from the US federal courts offers a timely reminder of the importance for producers of specifically spelling out that they are obtaining “merchandising” rights from all actors performing in their film or TV project – including from their “non-star” cast.

Eriq Gardner, reporting at THR, Esq. (‘Office Space’ Actor Loses Lawsuit Over ‘Flair’), describes the factual background to the recent decision in Duffey v Twentieth Century Fox Film Corporation (the full decision is available here):

Todd Duffey, who portrayed the minor character of “Chotchkie’s Waiter” in Office Space, sued 20th Century Fox Film over a licensing deal that ushered in an odd piece of merchandise — a box set called the Office Space Box of Flair, which included a 32-page book and 15 “flair” buttons. … Duffey was upset that the company … had used his face on both the book’s cover and one of the buttons.

Though he occupies relatively little screen time in it, fans of the movie Office Space should remember Duffey’s appearances in the movie – Duffey’s character earns Jennifer Aniston’s character’s ire because he wears thirty-seven pieces of “flair” (well in excess of the minimum fifteen required by the restaurant where the two characters work). As can be seen from the images for the “Box of Flair” at the Barnes & Noble website, Duffey’s image appears fairly prominently on the outside of the Box, and his image occupies the entirety of one of the buttons contained in the Box.

Duffey was a “day player” in Office Space – an actor whose role was not a “lead” role and who likely only rendered a few days of services in connection with the film. He signed a “Day Player Agreement” with the production company which produced the film, an agreement which in all likelihood was not the subject of much, if any, negotiation. Critically, for purposes of this lawsuit, Duffey’s Day Player Agreement contained the following language, which granted to the production company:

“all rights throughout the universe in and/or to all results and proceeds of [Duffey’s] services rendered [in connection with the film] … including, but not limited to, the rights to … exploit, in any manner … whatsoever now known or hereafter devised in perpetuity, any pictures, likeness or representations made hereunder, of [Duffey], including but not limited to his … poses … performances and appearances … together with the right to use and display [Duffey’s] … likeness for commercial … purposes in connection therewith.”

On the basis of that language, the court dismissed Duffey’s claim, concluding that the “terms admit of only one reasonable interpretation: that Duffey granted [the production company] the right to use images of his performance on Office Space merchandise”. (For my money, I would have been even more satisfied if the agreement specifically mentioned “merchandise” or “merchandising”, but you get to the same place in either event.)

The case is a useful reminder that, in the absence of express language which grants the right to use an actor’s image in merchandising, there might be a cognizable claim on the part of the actor if their image is used – and as Duffey’s situation shows, it can be difficult, if not impossible, to predict ahead of time which actors a producer will want to use in merchandising (I’m happy to wager that no one, at the time of shooting the movie, would have guessed that a day player who probably had less than ten lines of dialogue in the film would end up on a piece of merchandise created nearly a decade after the film’s original theatrical release).

For Canadian producers, the matter is of even more acute importance: unlike the SAG/AFTRA collective bargaining agreements, which contain explicit language granting to producers certain rights in the performances rendered by SAG actors (e.g., Section 36 of the SAG Theatrical Agreement), the collective bargaining agreements for actors in English Canada (whether ACTRA or UBCP) are completely silent on the nature and scope of rights which actors grant to producers. In short, without a written agreement (for “day players”, the agreement is often attached as a “rider” to their ACTRA standard form agreement), the producer is functionally in danger of not having acquired any rights to use the performer’s image or the copyright in their performance. Various arguments might be constructed that the performer granted some kind of an implied license to the producer, but everyone’s life is going to be simpler if there’s a written agreement that everyone can point to – a written agreement which includes the right to make use of the actor’s image and likeness not only in the film/TV project itself (and advertising related to it), but also in merchandising based on it.

Topics:  Copyright, Infringement, Merchandising Rights, Public Performance Rights

Published In: Art, Entertainment & Sports Updates, Intellectual Property Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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