Media 2.0: Understanding the Legal Risks of New Digital Technologies in Media & Entertainment

Presented by:Presented by:

Kathleen A. KirbyKathleen A. Kirby

William B. BakerWilliam B. Baker

Jennifer L. ElginJennifer L. Elgin

Daniel B. HassettDaniel B. Hassett

Bruce G. JosephBruce G. Joseph

July 9, 2009July 9, 2009

These slides are accompanied by an oral presentation and should not be relied upon as legal advice

What You Need to Know About Licensing Intellectual Property

Jennifer L. ElginJennifer L. ElginOf Counsel, Intellectual PropertyOf Counsel, Intellectual Property

Distinguishing Some Types of IP

• Patents - original inventionsPatents - original inventions

• Copyrights - original expression of ideasCopyrights - original expression of ideas

• Trademarks – anything (words, phrases, Trademarks – anything (words, phrases, symbols, colors, smells, sounds) that identifies symbols, colors, smells, sounds) that identifies the source of goods or servicesthe source of goods or services

• Rights of Publicity/Privacy - right of people to Rights of Publicity/Privacy - right of people to profit from their personalityprofit from their personality

Distinguishing Some Types of IP (cont’d)

Patent &Trademark

Trademark &Copyright

Copyright &ROP

Insert dummy website

The Golden Rule of Licensing Content:

IF YOU CREATED IT, IF YOU CREATED IT, YOU OWN IT.YOU OWN IT.

IF YOU DID NOT, YOU MUST IF YOU DID NOT, YOU MUST ACQUIRE THE RIGHT TO USE IT.ACQUIRE THE RIGHT TO USE IT.

Make Sure “You” Created It: Work Made for Hire Agreements

• Work must be “specially ordered or commissioned”Work must be “specially ordered or commissioned”

• Prior to commencement of work, parties agree in writing Prior to commencement of work, parties agree in writing work will be “made for hire”work will be “made for hire”

• Work falls into one of 9 narrow categories, such as: a Work falls into one of 9 narrow categories, such as: a translation, a contribution to an audio-visual work, a translation, a contribution to an audio-visual work, a contribution to a collective workcontribution to a collective work

• Because the test is somewhat uncertain – good practice is Because the test is somewhat uncertain – good practice is also to get an assignmentalso to get an assignment

Content License AgreementKey Provisions

• Does Licensor own all rights?Does Licensor own all rights?

• Scope of use – time, territory, method of delivery: Scope of use – time, territory, method of delivery:

““All media now known or hereafter devised”All media now known or hereafter devised”

• Scope of rights granted Scope of rights granted

• ExclusivityExclusivity

• Representations, warranties, indemnificationsRepresentations, warranties, indemnifications

• Termination rights Termination rights

• Sub-license rightsSub-license rights

• Choice of lawChoice of law

• Approval rightsApproval rights

User-Generated Content

• Did not create content, not a work made for hireDid not create content, not a work made for hire

• Get sufficient licensed rights or assignment in Get sufficient licensed rights or assignment in Terms of UseTerms of Use

• Liability for unlawful third party contentLiability for unlawful third party content

• DMCA Registration – Copyright Act §512(c)DMCA Registration – Copyright Act §512(c)– Copyright PolicyCopyright Policy

– Appoint agent & notify Copyright OfficeAppoint agent & notify Copyright Office

– Termination of repeat offendersTermination of repeat offenders

Bio & Contact Information

Jennifer L. Elgin is a member of the Intellectual Property Group of Wiley Rein LLP. She handles trademark, copyright, domain name and unfair competition litigation, as well as intellectual property prosecution, licensing and counseling. In addition, she advises clients on right of publicity and privacy compliance, internet/new media related issues, licensing, work-for-hire and other rights-related agreements.

202.719.7453 | jelgin@wileyrein.com