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Legal Eagles: Intellectual property and media project 

New resource available to help League members understand intellectual property challenges

by Robert A. Monath

Most League members probably would not think of themselves as media companies. However, municipal governing boards increasingly are presented with many of the same intellectual property ownership and licensing issues as publishers and producers.

If a city or town is preparing an informational brochure on recycling, adopting a new slogan to promote tourism, or filming a local concert for subsequent broadcast on local cable access television, these and related activities typically raise clearance and permissions issues. With the capability to disseminate these materials worldwide via the internet and social media, exercising due diligence is critical.

Several years ago, the Memphis Convention and Visitors Bureau ("MCVB") learned a hard lesson when it took a photograph it had licensed on a limited, one-time basis for an annual meeting planner’s guide, and published the image in a separate destination guide as well as on its website. Displeased that MCVB had greatly exceeded the scope of its one time license, the photographer sued MCVB for copyright infringement. After a full jury trial, MCVB was found liable for willful copyright infringement, and the photographer was awarded $54,000 in damages. Adding insult to injury, the trial court also ordered MCVB to reimburse the photographer in excess of $170,000 in attorney’s fees and costs. The MCVB case is just one of many examples illustrating the importance of obtaining necessary permissions and clearances from rightsholders and participants in municipal media projects.

In a similar fashion, League members sometimes have to acquire outright ownership and control of various work products. For example, if you are unveiling a new slogan for your city or town, it is probably best to consider protecting it as a trademark. If you are commissioning an original logo to accompany this slogan, then it will also be important to obtain an executed assignment of all rights from any outside designer (or municipal employee working outside of the scope of his or her employment). You will also want to consider registering the copyright for this logo design, and possibly applying state or federal trademark protection.

In some respects it is not too much of an over dramatization to say that every North Carolina city and town is one "right-click away" from infringing third-party rights or losing ownership and control of its own proprietary work product.

For that reason, at the request of NCLM General Counsel Kim Hibbard, I have prepared a new publication for League members entitled Intellectual Property Forms for Municipal Media Projects. As the title suggests, the forms address common situations that arise in the context of municipal media and related projects. For example, if your public information office is producing a short tourism video for posting on the city’s YouTube channel, it is critical to obtain necessary permissions for inclusion of third-party proprietary materials, such as background music, featured in the video.

The forms are organized into topical sections on producing video productions, creating print media, working with independent contractors, and posting online content. They include everything from permission to use a simple photograph to commissioning a public work of art. Please note that these forms are for general information purposes only and are not intended as a source of legal advice. They are designed to serve as a starting point, and should only be used in close consultation with your city or town attorney. They can be adapted as needed with the assistance of local counsel to address the specific facts and circumstances of the matter at hand. We hope they will be helpful to you.

Guest columnist Rob Monath is a Raleigh attorney specializing in intellectual property issues. The materials mentioned in this column will be made available to League members on the Members Only portion of the website.