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Perk Marriage of Valli Indie Film
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THE MAGAZINE OF THE LOS ANGELES COUNTY BAR ASSOCIATION
MAY 2015 / $4
EARN MCLE CREDIT
PLUS
Marriage of
Valli
Indie Film
Financing
page 25
page 32
New Media
Publicity Rights
page 10
California Tax
Residency
page 14
Lessons
of Aereo
page 40
Perk
Points
Los Angeles lawyer Jill L. Smith
reviews the noncompensatory provisions
in the entertainment contracts of actors
page 18
When obstacles stand in your way,
we help you overcome them.
Divorce
•
Support
•
Premarital Agreements
EXCLUSIVELY FAMILY LAW.
walzermelcher.com
May 2015 Issue Master.qxp
4/14/15
2:47 PM
Page 3
Entertainment Law Issue
F E AT U R E S
18 Perk Points
BY JILL L. SMITH
While agreements between studios and actors are often similar, each deal is
individually negotiated and must be carefully analyzed
25 Transmutation of Law
BY WILLIAM S. RYDEN
Family Code Section 852’s requirement of an express, unequivocal declaration
of transmutation bars enforcement of a technically insufficient writing
Plus: Earn MCLE credit. MCLE Test No. 246 appears on page 27.
32 Security and Independence
BY JOHN W. CONES
Attorneys advising independent filmmakers need to carefully analyze financing
deals in order to avoid violations of securities rules
Los Angeles Lawyer
D E PA RT M E N T S
the magazine of
the Los Angeles County
Bar Association
May 2015
Volume 38, No. 3
COVER PHOTOGRAPH:
TOM KELLER
8 On Direct
Bert Fields
38 By the Book
Clearance & Copyright
INTERVIEW BY DEBORAH KELLY
REVIEWED BY PAUL S. MARKS
9 Barristers Tips
Guidelines in bankruptcy procedure for
nonbankruptcy litigators
40 Closing Argument
Aereo shows what attorneys can do to
advise technology entrepreneurs
BY CHRISTOPHER O. RIVAS
BY OWEN J. SLOANE
10 Practice Tips
Right of publicity issues in emerging
media
39 CLE Preview
BY MATTHEW SAVARE AND JOHN WINTERMUTE
LOS ANGELES LAWYER (ISSN 0162-2900) is published monthly,
except for a combined issue in July/August, by the Los Angeles
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14 Tax Tips
Tax residency issues for filmmakers,
actors, and musicians in California
05.15
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4 Los Angeles Lawyer May 2015
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Los Angeles Lawyer May 2015 5
May 2015 Issue Master.qxp
4/14/15
3:57 PM
Page 6
T
he job of the entertainment deal lawyer is different
from that of many other types of transactional lawyers.
Entertainment projects are often complete businesses
in and of themselves, requiring lawyers to negotiate numerous intricate deals that are all separate from but dependent on
one another and that balance the interests of all the different stakeholders. Financiers,
distributors, talent, advertisers, and exhibitors all have different needs and different financial models that need to be addressed and accounted for in order to produce the project and monetize it successfully. This year’s special entertainment law
issue offers a nearly complete course on the study of film and television production.
In this special issue, we focus on the nonglamorous issues that entertainment lawyers
face every day. For example, we cover film finance, actor deals, and clearing rights.
How does the production lawyer structure the financial deals that will provide adequate financing to produce the project, minimize the client’s risk, and provide a way
for the investors to earn a return on their investment? While the garden of visual content is planted with the seeds of creative spark, those seeds will not germinate without sufficient financial backing. John Cones explains the nuts and bolts of financing
films through equity investing through traditional means and crowdfunding. He outlines the legal landscape and instructs readers on what points must be negotiated.
Besides requiring money, producing visual content requires actors—whether in
live action or giving voice to animated characters. The actor’s agent may have
negotiated compensation, but the talent lawyer has numerous problems to solve that
are not always exciting (approvals and indemnity and publicity, oh my!) but can make
or break a deal. Jill L. Smith covers the contours of negotiating the nonfinancial terms
of an actor employment agreement.
Even if a project is well financed and has stellar talent committed, content still reigns.
Does the client have a great idea to turn a famous brand into a movie franchise? Does
he have an even better idea on how to market the franchise using celebrity endorsements? No entertainment property can be made (or marketed) without carefully navigating the troubled waters of rights clearance. We have articles that address this important topic. Matthew Savare and John Wintermute, for example, discuss the complexities
of the ever-evolving right to publicity doctrine and provide advice and insights for
videogame developers, advertisers, recording artists, and the companies who distribute
their works. Our Closing Argument focuses on counseling tech companies—although
producers and their lawyers would also be wise to heed Owen J. Sloane’s advice—
on the importance of properly licensing content. Finally, we review a book—perhaps
“the” book—that addresses the manifold rights issues that filmmakers, videographers,
television producers, YouTubers, and anyone else who makes visual content needs
to know about rights clearance from initial acquisition to distribution.
We are proud to bring readers this special issue and hope it helps improve the quality of their legal analysis, advice to clients, and work product. Entertainment deal
makers may not be the focus of the attention on the red carpet, but they certainly
are a critical component in ensuring that their clients arrive there.
■
Caroline Y. Barbee is an attorney with Kilpatrick Townsend & Stockton LLP, where she focuses
her practice on all forms of intellectual property enforcement, protection, counseling, and litigation. Gary S. Raskin is the principal of Raskin Anderson Law, LLP, where his practice involves
entertainment transactions with an emphasis on motion pictures and finance. Thomas H. Vidal
is an entertainment and IP litigation partner with Abrams Garfinkel Margolis Bergson, LLP.
Barbee, Raskin, and Vidal are the coordinating editors of this special issue.
6 Los Angeles Lawyer May 2015
on direct
INTERVIEW BY DEBORAH KELLY
Bert Fields Attorney
BERT FIELDS | A veteran of the Korean War,
Bert Fields has practiced law since 1955 and
has represented virtually every major
Hollywood studio and talent agency. He is
also an author, a lecturer on Shakespeare, and
a member of the Council on Foreign Relations.
What is the perfect day? When I come into
the office and I have a lot of exciting new
cases.
What is overrated about being an entertainment attorney? I don’t think anything is
overrated about it. It’s great fun.
just brushed him. He said, “No, sir, he went
at this for at least 45 seconds.” I got up in
front of the jury, and I said, “Now, take out
your watches.” I started to stroke the jury
rail, and I stroked, and I stroked. I said,
“That’s four seconds.” I kept on stroking
and said, “What are they talking about?
This guy’s an officer of the law? One stroke
made the offense.” I said, “That’s seven seconds.” I stroked, and I stroked. By the time
we got to 20 seconds, the jury was just
rolling in laughter. They acquitted the guy.
In 2009, you were accused of hiring Anthony
Pellicano to wiretap Michael Davis Sapir of
Bold magazine. How did it feel? It was very
unpleasant. Mr. Pellicano was the best detective that I have ever hired. He did a superb job. As far as I know, he didn’t wiretap
for me. I was never charged, but the media
was all over me.
You’ve represented top performers and huge
entertainment companies. Do you have a
preference? No. It’s the issues that make the
case fun or not fun.
Which magazine do you pick up at the doctor’s office? I do not touch magazines at the
doctor’s office because I’m a hopeless neurotic about picking up diseases at the doctor’s office.
Under a pseudonym, you’ve written novels
and a biography. How is it different than
practicing law? You are given a lot more
rein for the imagination in novel writing. In
nonfiction writing, it’s similar to the law.
You do a lot of research.
What is your favorite vacation spot? I have
an old mill in the French countryside that I
love, and I also have a house in Zihuatanejo
overlooking the bay. I can’t weigh one
against the other.
What was your best job? Working in a stable
when I was a teenager.
What was your worst job? Setting pins in the
bowling alley. In the old days, it wasn’t automatic.
What characteristic did you most admire in
your mother? She was smart.
What is underrated? Lots of people feel that
the clients are difficult, that they are more
trying. I don’t find them so. My clients, over
the years, have been very nice people. Actors. I’ve been lucky. Warren Beatty, Dustin
Hoffman, Tom Cruise—each of those three
is just a delightful human being.
If you were handed $1 million tomorrow, what
would you do with it? I would probably give it
to Harvard Law School. Over the centuries, it
really has helped mold American law.
Do you have a favorite famous client? No. If
I did, I wouldn’t tell you.
Do you believe jurors obey the judicial officer’s instruction to ignore the news and social media during a trial? No.
What is your wildest court story from the
good old days? My first jury trial was a case
in which I represented a man who had been
accused of groping an undercover vice squad
officer standing at the urinal of a skid row
movie house. In the course of the trial, I suggested to the cop that maybe my client had
You graduated from Harvard Law School in
1952 and have been practicing for decades.
Have juries changed much? Society has
changed much in that people are much better educated than they were, and juries are
a part of that.
8 Los Angeles Lawyer May 2015
What scared you the most the first time you
stood in front of a jury? Losing.
What book is on your nightstand? West of
Sunset. It’s about F. Scott Fitzgerald’s last
years in Hollywood.
What is your favorite hobby? Writing.
You are 80-plus years old. Any retirement
plans? Not as of today.
What is your favorite sport as a participant?
Tennis. When I was younger, I played football. I loved it because that’s how you got
girls. I was small and slow.
How do you get your news? Television. I’m a
news junkie. I cook every night, and while I
cook, I listen to the news.
Which person in history would you like to take
out for a beer? Abraham Lincoln, because he
had a great sense of humor and a wonderful
political sense during a challenging time.
What are the three most deplorable conditions in the world? Terrorist aspects of extreme Islam and ISIS, hunger, and limited
healthcare in great parts of the world.
Who are your two favorite U.S. presidents?
Lincoln and Franklin Delano Roosevelt.
What is the one adjective you would like on
your tombstone? “He loved his life.”
barristers tips
BY CHRISTOPHER O. RIVAS
Guidelines in Bankruptcy Procedure for Nonbankruptcy Litigators
BANKRUPTCY LAW IS A HIGHLY SPECIALIZED FIELD, and although pending against a bankruptcy debtor or the debtor’s assets. Parties
it is possible to successfully dabble in bankruptcy law in the context who violate the automatic stay may be found liable for actual damof broader nonbankruptcy litigation, bankruptcy practice is riddled ages, punitive damages, and a debtor’s attorneys’ fees. If a party
with traps for the unwary. However, there are a few common areas wishes to continue pursuing actions against a debtor, the party must
first seek relief from the automatic stay in the bankruptcy court. This
that nonbankruptcy litigators will regularly experience.
The Bankruptcy Code is set forth in Title 11 of the U.S. Code and is a relatively easy process for a secured creditor seeking to foreclose
is accompanied by the Federal Rules of Bankruptcy Procedure, which its collateral, but a plaintiff seeking to assert claims against a debtor
incorporate many of the Federal Rules of Civil Procedure but which may have greater difficulty getting relief from the stay.
Ultimately, a debtor in chapter 7 or chapter 13 is seeking to disalso deviate from them in numerous material ways. The bankruptcy
court is a federal court that has been granted authority by Congress charge debts, including causes of action pending against the debtor.
to adjudicate disputes arising under, arising
in, or related to the Bankruptcy Code. As in the
U.S. district court, filings in the bankruptcy
No other aspect of the Bankruptcy Code affects nonbankruptcy
court can be retrieved in PACER, and papers
may be filed in the bankruptcy court via the
case management/electronic case files (CM/
litigators more than the automatic stay set forth in Section 362.
ECF) system. Nonbankruptcy litigators with
CM/ECF privileges in the district court must
obtain a new CM/ECF login from the bankA plaintiff asserting fraud-type claims against a debtor should immeruptcy court, which can sometimes be a time-consuming process.
The three chapters of the Bankruptcy Code that a litigator is most diately investigate whether to pursue a nondischargeability action
likely to encounter are chapters 7, 11, and 13. Chapter 7 cases are typ- against the debtor in bankruptcy court pursuant to Section 523 of the
ically filed by individuals seeking to discharge all of their prebankruptcy Bankruptcy Code. Such actions are not barred by the automatic stay,
debts. Chapter 11 cases are typically filed by entities and wealthy indi- but a claim holder only has approximately two months to file this action
viduals seeking to reorganize their debts. Chapter 13 cases are typi- or will likely lose the cause of action as part of the debtor’s discharge.
On the other hand, when a debtor is a plaintiff or potential plaincally filed by individuals seeking to retain or modify mortgaged property and to pay a portion of the debtor’s debts over a five-year period. tiff, the debtor must disclose all of the debtor’s assets, including any
No other aspect of the Bankruptcy Code affects nonbankruptcy potential claims or causes of action owned by the debtor at the time
litigators more than the automatic stay set forth in Section 362 of the of the bankruptcy since such claims may be of value to the debtor’s
Bankruptcy Code. The automatic stay is triggered the moment a creditors. In chapter 7 cases, the bankruptcy trustee takes possession
debtor files a petition for bankruptcy protection and it operates as an of the lawsuit and is solely responsible for pursuing the claims or setautomatic injunction prohibiting any party with notice of the bank- tling them. A litigator defending such claims should seek out the bankruptcy from taking any actions against the debtor or property of the ruptcy trustee to determine whether the trustee is willing to settle the
bankruptcy estate. As set forth in Section 541 of the Bankruptcy Code, debtor’s claims out from underneath the debtor.
Less scrupulous debtors may seek to hide a cause of action from
generally all of a debtor’s prebankruptcy property is part of the
bankruptcy estate, including any claims or causes of action that the bankruptcy court so that the debtor may pursue the claim for his
accrued prior to the bankruptcy. In chapter 7, a debtor’s postpetition or her own benefit. In doing so, the debtor has effectively tricked the
income is not part of the estate, but in chapters 11 and 13, a debtor’s bankruptcy court into granting the debtor a discharge by hiding
valuable assets. If a defendant is defending claims brought by a
postpetition income is part of the estate.
In practice, this means any court actions pending against the debtor, bankruptcy debtor that were not properly disclosed to the bankruptcy
as well as collection and foreclosure actions against the debtor, must court, the defendant has two tactical options: 1) a defendant may reach
cease. Litigation in which a debtor is a defendant or cross-defendant out to a chapter 7 bankruptcy trustee to settle the debtor’s claims out
should be stayed immediately. However, litigation in which a debtor from underneath the debtor, or 2) if the debtor has already obtained
is a plaintiff is not ordinarily stayed—although state courts often mis- a discharge, a defendant may seek to dismiss the debtor’s claims on
takenly stay the litigation anyway. A defendant may continue to defend judicial estoppel grounds. The equitable doctrine of judicial estoppel
in the action by pursuing demurrers, motions for summary judgment, serves to prohibit the debtor from pursuing the cause of action in these
■
and other similar filings without being impeded by the automatic stay. circumstances.
Lawyers should not take the automatic stay lightly. Even informal
notice of the bankruptcy is enough to put a party on inquiry notice Christopher O. Rivas is a senior associate with the commercial restructuring
of a bankruptcy, and the party should immediately stop any actions and bankruptcy group at Reed Smith LLP in Los Angeles.
Los Angeles Lawyer May 2015 9
practice tips
BY MATTHEW SAVARE AND JOHN WINTERMUTE
Right of Publicity Issues in Emerging Media
IN 1956, A COURT LIKENED the state of publicity law—the right to con- ent states. For example, some states have extended publicity rights
trol the commercial use of one’s identity—in the United States to a past the subject’s death, while others have not,10 the duration of this
“haystack in a hurricane.”1 Since then, courts have brought little clar- postmortem protection varies widely among the different jurisdictions,
ity to the doctrine. Indeed, recent case law in the videogame space has and some, though not all, states accord the right to celebrities and nonnot resolved the seemingly incongruous opinions amongst various celebrities alike.11 Moreover, as the doctrine has evolved over the years,
courts and has highlighted the inherent conflict between the doctrine the identity prong has morphed from its humble beginnings of proand the First Amendment.
tecting only a person’s name and picture to include virtually any indiIn January, the U.S. Court of Appeals for the Ninth Circuit cia of a person’s identity. Statutes and courts from various states have
addressed this issue in Davis v. Electronic Arts Inc.2 The videogame extended protections to, among other things, name, voice, signature,
company had already lost dual landmark cases in 2013, with the Third photograph, likeness, “look-alikes,”12 “sound-alikes,”13 catchphrases,14
and Ninth Circuits’ deciding, in Hart v. Electronic Arts Inc.3 and Keller v. Electronic Arts
Inc.,4 respectively, that Electronic Arts was
To what degree does someone’s persona need to be
not entitled to First Amendment protection
for its use of the virtual likenesses of college
football players in its popular NCAA Football
“transformed” to receive First Amendment protection?
line of games. Davis extended the ruling in
those previous cases to the professional football context and held that the “historic teams”
feature in Electronic Arts’s Madden NFL games, which allows gamers nicknames,15 screen persona,16 performance characteristics,17 and
to control avatars resembling retired players, violates those players’ biographical data.18
right of publicity because those likenesses are “central to the creation
Since its inception, the right of publicity has been a controversial
of an accurate virtual simulation of an NFL game.”5
doctrine, engendering criticism from academics, judges, and the pubThe implications of Davis, Hart, and Keller for videogame man- lic at large,19 particularly with respect to its interplay with the First
ufacturers are materially adverse. Yet the broader takeaway is the dif- Amendment. In one of the most well-known opinions regarding the
ficulty in reconciling an ever-evolving right of publicity doctrine with conflict between the right of publicity and the First Amendment,20
emerging technologies and new media. Judicial adaptation to new tech- Ninth Circuit Judge Alex Kozinski lamented in his dissent:
nology is never painless, but innovative businesses and marketers face
I can’t see how giving [Vanna] White the power to keep othunique uncertainty and risk in navigating these unpredictable waters.
ers from evoking her image in the public’s mind can be squared
As content providers, brands, advertisers, news organizations, and the
with the First Amendment. Where does White get this right to
public continue to blur the lines of art, commerce, entertainment, and
control our thoughts? The majority’s creation goes way beyond
information—particularly with respect to new technologies and
the protection given a trademark or a copyrighted work, or a
methods of distribution—an unclear and ever-expanding right of
person’s name or likeness. All those things control one particular
publicity doctrine has the capacity to chill innovation.
way of expressing an idea, one way of referring to an object
The present flood of right of publicity litigation, especially conor a person. But not allowing any means of reminding people
cerning entertainment properties, tracks the doctrine’s swift growth
of someone? That’s a speech restriction unparalleled in First
since its inception in 1953. In that year, the Second Circuit coined the
Amendment law.21
term “right of publicity” to support the idea that a “prominent perThe dangers identified by Judge Kozinski stem from the perceived
son” possessed “the right to grant exclusive privilege in publishing inconsistent and haphazard balancing of publicity rights and free
his picture” in advertisements.6 Since that holding, this limited for- speech. Indeed, no fewer than five First Amendment tests have been
mulation of the right has been expanded to include protection for non- recognized in evaluating right of publicity claims.22 The U.S. Supreme
celebrities, postmortem rights, and broad categories of identification. Court, in its only case involving the right of publicity, held that free
Today, 31 states recognize a right of publicity (19 by statute, 21 speech protections “do not immunize the media” from right of pubby common law, and 9 by a combination of the two).7 Among the states licity violations. The Court declined, however, to impose any stanthat recognize the right, it is generally comprised of three components: dard or test to resolve the tension between these competing princi1) use of the plaintiff’s identity, 2) without the plaintiff’s consent, and ples.23 The result has been chaotic, as lower courts have created
3) for commercial purposes.8 “Commercial purposes” in California,
as in many other states, includes both uses “in products, merchandise, Matthew Savare is a partner and John Wintermute is an associate at Lowenstein
Sandler LLP, where they practice intellectual property, media, entertainment,
or goods” and “for purposes of advertising or selling.”9
However, there are wide variations in the right across the differ- technology, and privacy law with a particular focus on new media.
10 Los Angeles Lawyer May 2015
their own ad hoc balancing tests borrowed
from copyright, trademark, and other areas
of the law. Such a process has engendered
seemingly conflicting rulings, doctrinal inconsistencies, and uncertainties for plaintiffs and
defendants.
In Keller, Electronic Arts proffered First
Amendment defenses based on the following
four tests: 1) the transformative use test, 2) the
Rogers test, 3) the public interest test, and 4)
the public affairs exemption.24 The Ninth
Circuit dismissed the latter three defenses as
inapt and rejected Electronic Arts’s contention
that its use was transformative.25 The Court
held that the “realistic” nature of the players’
depictions in the game rendered Electronic
Arts’s use of their likenesses nontransformative, and hence subject to the players’ publicity rights.26
Keller’s “realistic use” holding, along with
Hart’s nearly identical analysis, is troubling
for content creators and a potential boon for
athletes and celebrities. Realism, many critics
of these decisions argue, is an entirely acceptable creative aim and one that judges do not
have the authority or the artistic wherewithal
to condemn.27 Given the Supreme Court’s
recognition that videogames are entitled to the
same degree of First Amendment protection
as other forms of creative works, such as
books and movies,28 the Ninth Circuit’s holding seems inconsistent with controlling case
law and begs several important questions.
Why are docudramas like The Social Network,
which are based on real people and a certain
degree of verisimilitude, shielded from right of
publicity claims by the First Amendment while
realistic videogames are not? How is a videogame, which has been held by numerous
courts to be expressive speech, considered a
commercial use? To what degree does someone’s persona need to be “transformed” to
receive First Amendment protection? Can
such transformation result in a different cause
of action, such as a defamation claim?29 At a
time when technology is enabling photorealistic renderings of individuals (both living
and deceased) for entertainment content, First
Amendment advocates argue that the vagaries
and uncertainties of the transformative use test
make it ill-equipped to balance the right of
publicity doctrine with the right to free speech.
In Davis, Electronic Arts also argued that
the First Amendment protected the use of
former NFL players’ likenesses because they
appeared in only a single feature of the game,
amounting to an “incidental use” of their
images.30 The Ninth Circuit rejected this
defense, citing a number of factors, including
“the unique value” of the use “and [its] contribution to the commercial value of Madden
NFL,” Electronic Arts’s advertising of the
“historic teams” feature, the prominence of
the former players’ likeness, and their relation
“to the main purpose and subject” of creating “an accurate virtual simulation of an
NFL game.”31 In essence, the court held there
to be a misappropriation of the players’ publicity rights because “[a]ccurate depictions
of the players” was “central” to an accurate
virtual experience.32
But Davis, too, arguably fails to accord
traditional First Amendment protections to
new media. This seeming incongruity is illustrated when Davis is read in conjunction
with Dryer v. National Football League,33
which was decided by a district court in Minnesota only three months earlier. In that case,
former NFL players had sued the league itself,
claiming that its use of the players’ likenesses
and historical video footage in various NFL
Films productions was unauthorized and a
violation of their publicity rights.34 The Dryer
court rejected the suit’s merits, finding for
the NFL on all of its various arguments, including that the films qualified for full First
Amendment protection as noncommercial
speech and were protected under the “newsworthiness” doctrine.35 Given the similar
fact patterns of the two cases, the contradictory dispositions of Davis and Dryer are
striking.
In fact, the Dryer court addressed and
accepted the same incidental use argument
that the Ninth Circuit rejected in Davis:
The NFL is capitalizing not on the
likenesses of individual players but on
the drama of the game itself, something that the NFL is certainly entitled
to do. Plaintiffs do not explain how the
NFL could create a visual recounting
of a significant football game or the
season of a particular football team
without the use of footage of NFL
players playing in those games. While
the NFL certainly reaps monetary benefits from the sale and broadcast of
these productions, the use of any individual player’s likeness—the productions’ display of footage of plays involving an individual player—is not for
commercial advantage but because the
game cannot be described visually any
other way.36
Conversely, Davis viewed the necessity
of the players’ likenesses for achieving a realistic virtual simulation as inculpatory, not
exculpatory, evidence.37 That raises the question as to why Electronic Arts is not entitled
to exploit its license with the NFL to create
accurate virtual simulations of games (including the reenactment of historical games), just
as the NFL is entitled to create traditional,
visual accounts of historical games? Why is
Electronic Arts’s pursuit of realism any less
valid than the NFL’s? One can reconcile the
Davis and Dryer holdings by pointing out that
the courts are different and the Minnesota dis-
trict court is not bound by the holdings of the
Ninth Circuit. Such a response ignores the
fundamental problem—namely, that the right
of publicity doctrine is convoluted and contradictory, particularly with respect to emerging media and technologies.38
This has led to more, not fewer, lawsuits.
In addition to the Hart, Keller, and Davis
cases against Electronic Arts, right of publicity
lawsuits emanating from videogames have
been filed recently by Manuel Noriega, 39
Lindsay Lohan,40 No Doubt,41 and the estate
of General George Patton.42 Hart and Keller,
in fact, relied upon No Doubt v. Activision
Publishing, Inc., in finding that celebrity
depictions in a video game were not protected unless they somehow “transformed”
the subject.43 This trend shows no signs of
slowing. The mutable doctrine and ad hoc
application of various First Amendment tests
creates an unhealthy environment for all
parties involved. Content creators are faced
with uncertainty as to what rights need to be
cleared, undue threats of litigation, and a
potential chilling of arguably protectable
speech. The persons depicted in the content
have to invest the time, money, and risks
associated with formal legal action. If the
law were clearer on this subject, the likelihood
that there would be a meeting of the minds
between the parties would presumably increase and the chances of litigation would
almost certainly diminish.
These problems are compounded as innovative companies and emerging technologies
blend artistic, commercial, and informational
messages in hybrid speech. Existing right of
publicity and First Amendment jurisprudence,
which compel content to be judged as either
commercial or noncommercial, fails to appreciate that speech is not always binary and
often cannot be placed in these neat, notional
buckets. The emergence of hybrid speech,
such as advertorials and native advertising, and
the advent of social media and its functionalities, such as “likes” and “retweets,” have
further complicated matters for brands and
content creators and increased their opportunities to run afoul of right of publicity laws.
Take, for instance, the dispute between
Katherine Heigl and Duane Reade in the
summer of 2014, over a tweet sent out by
the drugstore chain. The disputed post captioned a paparazzi photo of Heigl exiting a
Duane Reade store with the message “Don’t
you just love a quick #DuaneReade run? Even
Katherine Heigl can’t resist shopping at
#NYC’s most convenient drugstore!” Alleging
that those 19 words had violated her right of
publicity, Heigl sued the company for $6 million.44 The parties quickly settled for an undisclosed sum, but questions abound. To what
extent does the First Amendment protect a
company’s truthful social media statements disLos Angeles Lawyer May 2015 11
cussing a celebrity’s use of its product or service? Does it matter that Duane Reade included its hashtag in the tweet and would it
have been safer to simply retweet the photograph without any additional messaging?
On this set of facts, existing case law
seems to lean in Heigl’s favor. But would
more indirect messaging be acceptable? For
example, companies often provide free swag
at celebrity functions, such as the Oscars.
Can these companies, which pay to get their
products freely distributed to celebrities, post
pictures of these celebrities (with no captions
or other verbiage) with these products without their permission? Here, the answer appears less clear than in the Heigl case, and
likely depends, among other things such as the
choice of law, on which definition of commercial speech the applicable court employs.
In Central Hudson Gas & Electric Corporation v. Public Service Commission,45 the
U.S. Supreme Court defined commercial
speech as “expression related solely to the
economic interests of the speaker and its audience.” However, just three years later in Bolger
v. Youngs Drug Products Corporation,46 the
high court defined commercial speech as
“speech which does ‘no more than propose a
commercial transaction.’” More recently in
Kasky v. Nike, Inc., the California Supreme
Court concluded that certain speech was
“commercial” because “the messages in question were directed by a commercial speaker to
a commercial audience, and because they
made representations of fact about the speaker’s own business operations for the purpose
of promoting sales of its products....”47
Retweeting a picture of a celebrity carrying a company’s products, without including
any messaging, still seems to be commercial
speech and problematic from a right of publicity perspective under Central Hudson and
Kasky, but possibly not under Bolger. What
if the facts are changed and the company
posting the message is truthfully reporting on
a celebrity’s philanthropic involvement with
a charity that the company sponsors? Although there is no definitive answer, what is
clear is that a 140 character message can
expose companies—even ones that are doing
more than simply proposing a commercial
transaction—to a Page Six headline and a
multimillion dollar lawsuit.
In light of our culture’s fascination with
celebrities and sports figures, incorporating
some elements of their personas into our
messaging—be it a tweet, a Facebook post, a
virtual reality simulation, a videogame, or a
60-second spot—will continue unabated.
Likewise, because stars often earn more
money licensing their name, image, voice, or
likeness and go to great lengths to cultivate
their image, their professional representatives will continue to enforce their publicity
12 Los Angeles Lawyer May 2015
rights vigorously.
With all of the aforementioned doctrinal
uncertainties and with the likes of Lindsay
Lohan invoking her right of publicity against
everyone from E-Trade48 to the makers of
Grand Theft Auto,49 to Pitbull,50 businesses
and their advertising agencies must assume
that simply evoking someone’s persona, even
in the most tangential way, will result in a
demand letter and ultimately litigation.
Despite Supreme Court precedent to the contrary, lower courts are simply not affording
certain types of entertainment speech, especially videogames, the same robust First
Amendment protections it gives other expressive content. In light of this environment,
any commercial venture should carefully evaluate whether using—or simply evoking—the
persona of an individual (celebrity or noncelebrity) without permission in any messaging (unless unequivocally noncommercial) is worth the risk. Until Congress or the
Supreme Court acts to clarify and reconcile
the various discrepancies concerning the scope
of publicity rights, the definition of commercial speech, and the bounds of First
Amendment protection, the haystack will
keep blowing.
■
1 Ettore v. Philco Television Broad. Corp., 229 F. 2d
481 (3d Cir. 1956).
2 Davis v. Electronic Arts Inc., No. 12-15737 (9th
Cir. Jan. 6, 2015), available at http://cdn.ca9.uscourts
.gov/datastore/opinions/2015/01/06/12-15737.pdf.
3 Hart v. Electronic Arts Inc., 717 F. 3d 141 (3d Cir.
2013).
4 Keller v. Electronic Arts Inc.,724 F. 3d 1268 (9th Cir.
2013).
5 Davis, No. 12-15737 at 16.
6 Haelan Labs., Inc. v. Topps Chewing Gum, Inc.,
202 F. 2d 866, 868 (2d Cir. 1953).
7 The states with statutory sources of publicity rights
are California (CIV. CODE §3344-3344.1), Florida
(FLA. STAT. ANN. §540.08), Illinois (765 ILL. COMP.
STAT. 1075/1), Indiana (IND. CODE ANN. §32-36-1-1),
Kentucky (KY. REV. STAT. ANN. §391.170), Massachusetts (MASS. GEN. LAWS. ANN. ch. 214, §3A),
Nebraska (NEB. REV. STAT. §20-201), Nevada (NEV.
REV. STAT. ANN. §597.7700), New York (N.Y. CIV.
RIGHTS LAW §§50, 51), Ohio (OHIO REV. CODE ANN.
§2741.01), Oklahoma (OKLA. STAT. ANN. tit. 21,
§839.1), Pennsylvania (42 PA. CONS. STAT. ANN.
§8316), Rhode Island (R.I. GEN. LAWS §9-1-28.1),
Tennessee (TENN. CODE ANN. §§47-25-1101-1108),
Texas (TEX. PROP. CODE ANN. §26.001-15), Utah
(UTAH CODE ANN. §45-3-1), Virginia (VA. CODE ANN.
§8.01-40), Washington (WASH . R EV . C ODE A NN .
§63.60.010), and Wisconsin (W IS . S TAT . A NN .
§895.50). The states that recognize a common law
right of publicity are Alabama, Arizona, California,
Connecticut, Florida, Georgia, Hawaii, Illinois,
Kentucky, Michigan, Minnesota, Missouri, New
Hampshire, New Jersey, Ohio, Pennsylvania, South
Carolina, Texas, Utah, West Virginia, and Wisconsin.
The states that recognize both a statutory and common
law right of publicity are California, Florida, Illinois,
Kentucky, Ohio, Pennsylvania, Texas, Utah, and
Wisconsin.
8 1 J. THOMAS MCCARTHY, THE RIGHTS OF PUBLICITY
AND PRIVACY §6.1 (2d ed. 2014). Courts have struggled
mightily to differentiate between commercial and entertainment speech. For more information, see Matthew
Savare, Where Madison Avenue Meets Hollywood
and Vine: The Business, Legal, and Creative
Ramifications of Product Placements, 11 UCLA ENT.
L. REV. 331 (2004).
9 CIV. CODE §3344.
10 See, e.g., CIV. CODE at §3344.1.
11 See, e.g., Fraley v. Facebook, Inc., 830 F. Supp. 2d
785 (N.D. Cal. 2011).
12 See, e.g., Ali v. Playgirl, Inc., 447 F. Supp. 723 (S.D.
N.Y. 1978); White v. Samsung Elecs. Amer., Inc., 989
F. 2d 1512 (9th Cir. 1993).
13 See, e.g., Waits v. Frito-Lay, Inc., 978 F. 2d 1093 (9th
Cir. 1992); Midler v. Ford Motor Co., 849 F. 2d 460
(9th Cir. 1988).
14 See, e.g., Carson v. Here’s Johnny Portable Toilets,
Inc., 698 F. 2d 831 (6th Cir. 1983).
15 See, e.g., Lombardo v. Doyle, Dane, & Bernbach,
Inc., 396 N.Y.S. 2d 661 (App. Div. 1977); Hirsch v.
S.C. Johnson & Son, Inc., 280 N.W. 2d 129 (Wis.
1979).
16 See, e.g., McFarland v. Miller, 14 F. 3d 912 (3d Cir.
1994).
17 See, e.g., Apple Corps Ltd. v. Leber, 229 U.S.P.Q.
1015 (Cal. Sup. Ct. 1986).
18 See, e.g., Prima v. Darden Rests., Inc., 78 F. Supp.
2d 337 (D.N.J. 2000).
19 See, e.g., Joshua Waller, The Right of Publicity:
Preventing the Exploitation of a Celebrity’s Identity or
Promoting the Exploitation of the First Amendment?,
9 UCLA ENT. L. REV. 59 (2001); Diane Leenheer
Zimmerman, Who Put the Right in the Right of
Publicity?, 9 DEPAUL-LCA J. ART & ENT. L. & POL’Y 35,
52 (1998); Mark A. Lemley & Eugene Volokh, Freedom
of Speech and Injunctions in Intellectual Property Cases,
48 DUKE L.J. 147, 227 (1998); Michael Madow, Private
Ownership of Public Image: Popular Culture and
Publicity Rights, 81 CAL. L. REV. 127, 191 (1993).
20 White v. Samsung Elecs. Am., Inc., 989 F. 2d 1512
(9th Cir. 1993) (Kozinski, J., dissenting). The case
involved a Samsung advertisement for its consumer electronics equipment, which depicted various Samsung
products with various humorous predictions. The commercial was to illustrate that Samsung’s products
would still be used 20 years in the future. The image
in question in this case involved a robot dressed to look
like Vanna White beside a game board reminiscent of
that of Wheel of Fortune, with the caption “Longest
running game show. 2012 A.D.” The U.S. Court of
Appeals for the Ninth Circuit reversed the district
court’s rejection of White’s summary judgment motion
for a common law right of publicity claim, stating
that it “declines Samsung and Deutch’s invitation to permit the evisceration of the common law right of publicity through means as facile as those in this case.”
21 Id. at 1519.
22 These tests include: 1) the transformative use test
employed by the California Supreme Court in Comedy
III Prods., Inc. v. Saderup, Inc., 25 Cal. 4th 387 (2001);
2) the Rogers test, from Rogers v. Grimaldi, 875 F. 2d
994 (2d Cir. 1989); 3) the standard from the RESTATEMENT (THIRD) OF UNFAIR COMPETITION, which was
used by the Sixth Circuit in ETW Corp. v. Jireh Publ’g,
Inc., 332 F. 3d 915 (6th Cir. 2003); 4) the predominant
use test utilized by the Missouri Supreme Court in
Doe v. TCI Cablevision, Inc., 110 S.W. 3d 363 (Mo.
2003); and 5) the knowingly false standard, a concept
from libel law adopted in some right of publicity cases,
including Hoffman v. Capital Cities/ABC, Inc., 255 F.
3d 1180 (9th 2001).
23 Zacchini v. Scripps-Howard Broad. Co., 433 U.S.
562 (1977). The Zacchini case demonstrates that the
doctrine is not confined to commercial speech. In
Zacchini, the Supreme Court concluded that a television station had to compensate a performer when it
May 2015 Issue Master.qxp
4/14/15
2:05 PM
Page 13
aired his entire act without his consent during its 11
o’clock news program. Although the unauthorized use
concerned a seemingly newsworthy event, the court held
that the First Amendment did not immunize the station.
Although commentators have construed the decision
narrowly to apply only to misappropriations of a
plaintiff’s entire act, its holding illustrates that even
newsworthy speech is not beyond the reach of the
doctrine.
24 Keller v. Electronic Arts Inc.,724 F. 3d 1268, 1273
(9th Cir. 2013).
25 Id. at 1274-84.
26 Id. at 1283-84.
27 See, e.g., Tyler Ochoa, Rationalizing (?) the Hart and
Keller v. EA Sports Publicity Rights Rulings, Guest Blog
Post, Tech. & Mktg. Law Blog (Aug. 5, 2013), http://blog
.ericgoldman.org/archives/2013/08/a_futile_attemp
.htm.
28 Brown v. Entertainment Merchs. Ass’n, 131 S. Ct.
2729 (2011).
29 Matthew Savare, Falsity, Fault, and Fiction: A New
Standard for Defamation in Fiction, 12 UCLA ENT. L.
REV. 129 (2004).
30 Davis v. Electronic Arts Inc., Case No. 12-15737, 12 (9th
Cir. Jan. 6, 2015), available at http://cdn.ca9.uscourts
.gov/datastore/opinions/2015/01/06/12-15737.pdf.12.
31 Id. at 14-16.
32 Id. at 16.
33 Civil Case No. 09-2182 (D. Minn. Oct. 10, 2014), available at http://www.loeb.com/~/media/Files/Publication
/2014/10/Dryer%20v%20NFL.pdf.
34 Id. at 1.
35 Id. at 39.
36 Id. at 15.
37 Davis, Case No. 12-15737 at 16.
38 Aside from the interplay between the First Amendment and the right of publicity, other challenges exist
with respect to the right of publicity, including choice
of law and forum shopping due to the wide variations
in the law, the variations with respect to postmortem
protection, and the different definitions and tests
employed to determine whether the speech at issue is
commercial. Based on these and other factors, numerous commentators have called for the U.S. Supreme
Court to clarify the doctrine or for the passage of a federal right of publicity law.
39 Noriega v. Activision/Blizzard, Inc., No. BC 551747
(Cal. Sup. Ct. Oct. 27, 2014).
40 Lohan v. Take-Two, Case No. 156443/2014.
41 No Doubt v. Activision Publ’g, Inc. 192 Cal. App.
4th 1018 (2011).
42 CMG Worldwide Inc. v. Maximum Family Games,
LLC et al., Case No. 3:14-cv-05124 (N.D. Cal. Nov. 19,
2014) available at http://cdn.arstechnica.net/wp-content
/uploads/2014/12/pattonsuit.pdf.
43 See Keller v. Electronic Arts Inc.,724 F. 3d 1268,
1278-79 (9th Cir. 2013). (“Like the majority in Hart,
we rely substantially on No Doubt, and believe we are
correct to do so.”).
44 Katherine Heigl v. Duane Reade, Inc., Case No.
1:14CV02502 (S.D. N.Y. Apr. 9, 2014).
45 Central Hudson Gas & Elec. Corp. v. Public Serv.
Comm’n, 447 U.S. 557 (1980).
46 Bolger v. Youngs Drug Prods. Corp., 463 U.S. 60,
66 (1983) (quoting Virginia State Bd. of Pharm. v.
Va. Citizens Consumer Council, Inc., 425 U.S 748, 762
(1976)).
47 Kasky, v. Nike, Inc., 27 Cal. 4th 939, 946 (2002).
48 Lohan v. E*Trade Secs. LLC, Case No. 10-004579,
filed in the Supreme Court of the State of New York,
County of Nassau.
49 Lohan v. Take-Two, Case No. 156443/2014, filed
in the Supreme Court of the State of New York, County
of New York.
50 Lohan v. Perez, Case No. 2:11-CV-05413 (E.D.
N.Y. Feb. 21, 2013).
Los Angeles Lawyer May 2015 13
tax tips
BY BRADFORD S. COHEN, WALTER R. CALVERT, AND MICHAEL A. BLOOM
RICHARD EWING
Tax Residency Issues for Filmmakers, Actors, and Musicians in California
MOVIES ARE FILMED IN FOREIGN LOCATIONS; musicians go on
tour; actors, writers, producers, and directors come to Los Angeles.
As a result of all this moving around, people working in entertainment may find themselves treated as California residents for income
tax purposes even if they do not intend to live here permanently.
Certain tax planning techniques may be available, however, to mitigate the impact of being treated as a California resident, particularly
in connection with the sale of substantially appreciated intangible property, for example musical copyrights.
Nevertheless, the consequences of being caught in a state’s tax net
are significant. A person who is treated as a resident of a state is typically subject to income tax on all income, even if it was earned elsewhere. Further, each state has its own residency test, each of which
may be satisfied in multiple ways. An individual may be treated as a
resident of two states at the same time.
To illustrate, a New York actor coming to work on a television series
in Los Angeles may be treated as a New York income tax resident under
New York’s income tax laws because he or she intends to return to New
York upon completion of the project and as a California income tax
resident under California’s income tax laws if the work on the television project is for an indefinite duration. In this scenario, both states
may seek to tax the actor’s worldwide income earned during the period
of dual residency. The scenario is not completely dire because relief from
double taxation is typically granted in the form of an “other state tax
credit” or OSTC. However, this relief may not be complete.1
In California, persons who are classified as residents are subject
to California income tax on all their income, regardless of where it
was earned.2 Consequently, if a New York actor is treated as a
California income tax resident as a result of being present in California
while working on a television show in Los Angeles, he or she would
become taxed in California on any income received while a California
resident. This may include fixed fees, profit participations, and
deferred compensation earned from earlier New York projects, as well
as passive income such as dividends, interest, rents, and royalties. In
contrast, nonresidents of California are only subject to California
income tax on income that is derived from California sources. 3 If the
New York actor can avoid being treated as a California resident, he
or she can limit liability for California income tax to the taxes owed
on income from the L.A. television show.
The tax statute for determining who is a California resident or nonresident is Section 17014 of the California Revenue and Taxation
Code, which defines a resident as including both 1) “[e]very individual
who is in this state for other than a temporary or transitory purpose”4
and 2) “[e]very individual domiciled in this state who is outside the
state for a temporary or transitory purpose.” 5 A nonresident is
any person who does not meet either of these tests.6 Not all states apply
the same residency test. In fact, California’s test is a bit of an outlier.
Many states apply a bright-line, 183-day presence test in lieu of an
“other than a temporary or transitory purpose” test. There is no brightline test for determining when a person is considered to be present
14 Los Angeles Lawyer May 2015
in California for other than a temporary or transitory purpose. The
evaluation is made on a case-by-case basis.
California’s Franchise Tax Board Publication 1013 explains that all
relevant facts and circumstances are considered in residency determinations. The goal of the facts-and-circumstances test is to determine “the
place where [the taxpayer] has the closest connections.”7 In this respect,
the “other than a temporary or transitory purpose” test is similar to
the “center of vital interest” test that applies under the tie-breaker residency provisions in U.S. income tax treaties with foreign countries.
Publication 1013 lists 13 nonexclusive factors commonly considered
when making this determination. They are 1) the amount of time one
spends in California versus the amount outside California, 2) the location of one’s spouse or registered domestic partner and children, 3) the
location of one’s principal residence, 4) the state that issued one’s driver’s license, 5) the state where one’s vehicles are registered, 6) the state
in which one maintains one’s professional licenses, 7) the state in
which one is registered to vote, 8) the location of the banks where one
maintains accounts, 9) the origination point of one’s financial transactions, 10) the location of one’s medical professionals and other
healthcare providers, accountants, and attorneys, 11) the location of
one’s social ties, such as one’s place of worship, professional associations, or social and country clubs of which one is a member, 12) the
location of one’s real property and investments, and 13) the permanence
of one’s work assignments in California.8
This facts-and-circumstances test offers little guidance to taxpayers seeking certainty. However, certain rules and presumptions apply
Bradford S. Cohen is a partner at Venable LLP in Los Angeles whose practice
focuses on business and tax matters for clients in the entertainment and sports
industries. Walter R. Calvert is a Venable partner in Baltimore who focuses
his practice on state and local tax planning and controversy matters. Michael
A. Bloom is an associate in the firm’s New York office who provides tax planning services to many prominent entertainers and professional athletes.
under California law to assist in its application. First, there is a rebuttable presumption
that every individual who spends in the aggregate more than nine months of the taxable
year in California is a California resident. 9
This presumption may be overcome by satisfactory evidence that the individual is in the
state for a temporary or transitory purpose.
Note that the converse is not true—spending
less than nine months of the taxable year in
California does not necessarily avoid California residency. Affidavits or testimony of an
individual and of employers or business associates that the individual was in the state to
complete a specific business transaction will
usually be sufficient to overcome a presumption of residency.10
Second, Section 17014 of the California
Code of Regulations provides that presence
in California for other than a temporary or
transitory purpose includes “employment in
California that may last permanently or indefinitely.”11 This rule may cause differing tax
treatment of film actors versus television
actors. Film actors can probably satisfy this
test because principal photography lasts for
a finite duration. However, television actors
may not be able to satisfy this test because
television series run for an indefinite duration
and, while being made, often represent the
actor’s primary source of employment.
Third, in apparent acknowledgment of
the difficulty in applying this “temporary or
transitory purpose” test, the California Legislature created a safe harbor under Revenue
and Taxation Code Section 17014(d), which
provides:
For any taxable year beginning on or
after January 1, 1994, any individual
domiciled in this state who is absent
from the state for an uninterrupted
period of at least 546 consecutive days
under an employment-related contract
shall be considered outside this state for
other than a temporary or transitory
purpose.12
For purposes of this safe harbor, returns
to California totaling, in the aggregate, not
more than 45 days during the taxable year are
disregarded. However, the safe harbor does
not apply if 1) the taxpayer has income from
stocks, bonds, notes, or intangible personal
property in excess of $200,000 in any taxable
year in which the employment-related contract is in effect, or 2) the principal purpose
of the individual’s absence from the state is
to avoid California income tax.13 This safe
harbor is attractive to entertainers because it
allows them to escape the California tax net
while retaining domicile in California.
While some may qualify as residents for
being in California for other than a temporary or transitory purpose, others may be
treated as income tax residents by being domi-
ciled here. The term “domicile” has a special
legal definition that is not the same as “residence.” While many states consider the terms
to be the same, California views them as two
separate concepts, even though they may overlap. As discussed in Publication 1013, “[d]omicile is defined for tax purposes as the place
where you voluntarily establish yourself and
your family, not merely for a special or limited purpose, but with a present intention of
making it your true, fixed, permanent home
and principal establishment.”14 Stated differently, “it is the place where, whenever you are
absent, you intend to return.”15
Although a taxpayer can be an income tax
resident of several states simultaneously, a
taxpayer can generally only have one place of
domicile. Consequently, once a person has
established California as his or her place of
domicile, the only way that such person can
no longer be treated as a California resident
is to be outside of California for “other than
a temporary or transitory purpose.” Entertainers that come to work in California on a film
or television project often intend to leave
California upon completion of the project.
They usually do not intend to make California
their “true, fixed, permanent home and principal establishment” and, therefore, should not
satisfy the domicile test for California residency. Once a person establishes California as
a place of domicile, it is difficult to change it.
To do so, a person must not only leave California but also affirmatively establish a new
domicile in a different jurisdiction.
California residency opinions issued by the
California State Board of Equalization are not
easily reconcilable. The only common thread
is that taxpayers seem to lose. One rationale
often given in these opinions is that a taxpayer
is a resident if he or she receives the benefits and
protections of California’s laws and government
over an extended period of time. Therefore, the
more time a taxpayer spends in California, the
greater the likelihood that he or she will receive
these benefits and protections, and be deemed
a California resident.
If a person is not a California resident,
only income from California sources is subject to California income tax. California’s
sourcing rules are set forth under Revenue and
Taxation Code Sections 17951 and 17952. Income from California sources includes, without limitation, 1) income from real or tangible property located within California, 2)
compensation for services performed within
California, and 3) intangible income that has
a business situs in California.16
These sourcing rules are also important for
California income tax residents. This is because California allows its residents a credit
against their California income liability for
taxes paid to another state on income that is
sourced to that state. 17 No credit is allowed
for income taxes paid to cities or to foreign
countries. The credit is allowed only if the
other state does not allow a credit for California taxes paid on the same income. This
rule prevents credits from being applied in
both states. California, like most other states,
limits the amount of the OSTC to the amount
of California tax owed on the double-taxed
income.
This tax crediting mechanism is unlikely to
provide complete relief for any California
income tax paid for two reasons. The first
reason is that California currently has the
highest state income tax rate in the United
States (13.3 percent). Therefore, the OSTC
allowed in California will almost never equal
or exceed the California taxes owed on the
same income. Similarly, with respect to California nonresidents, the OSTC allowed in
their state of residency will be unlikely to
equal or exceed the California income taxes
owed on any California source income because
California’s income tax rate is almost certain
to be higher.
The second reason that this crediting regime may not provide complete relief is that
certain types of income do not have a state of
source (e.g., passive investment income such
as interest and dividends) and therefore may
end up being double taxed in the event the
taxpayer is treated as a resident of two states
simultaneously. Therefore, one cannot assume
that reliance on OSTCs is an adequate substitute for sound tax planning.
Changing Domicile
California domiciliaries looking to reduce
their state tax burden may consider a domicile shift—that is, leaving California and
establishing a domicile in a state with a lower
income tax rate, such as Texas or Florida. This
is easier said than done. It requires: 1) abandoning the California domicile, 2) physically
moving to and residing in a new locality, and
3) demonstrating by actions an intent to
remain in the new locality permanently or
indefinitely.18 Taxpayers generally must sell or
lease their current California home, take their
children out of California schools, move bank
accounts, and change driver’s licenses, vehicle registrations, and voting registrations.
Because of the difficulty in accomplishing
a domicile shift, the safe harbor alternative
under Revenue and Taxation Code Section
17014(d) can be attractive. As discussed above,
this safe harbor alternative provides that any
person domiciled in California who is absent
from the state for an uninterrupted period of
at least 546 consecutive days under an employment-related contract shall be treated as a
California nonresident (subject to the $200,000
intangible income limitation). This safe harbor
provision, therefore, allows a California domiciliary to drop out of the California tax net
Los Angeles Lawyer May 2015 15
while retaining his or her California domicile
so long as the foreign state activity occurs
pursuant to an employment contract. Two
examples of how this may be feasible are 1) an
actor does back-to-back movies outside of
California or 2) a musician goes on an extended
non-California concert tour or is conducting
extended non-California recording activities.
If the taxpayer qualifies for this rule, it
may allow him or her to avoid paying California income tax on his non-California source
income, which is paid or accrued while outside
of California. This would include compensation for personal services rendered outside of
California during the period of nonresidency.
Less clear, however, is whether it would apply
to profit participations and other forms of
contingent compensation earned in connection
with the performance of the non-California services because not all events may have occurred
to generate the income during this period of
nonresidency—e.g., the determination of the
amount of the contingent compensation
payable to the taxpayer from future sales.19
Stated differently, such amounts would not
have become fixed and determinable during the
period of nonresidency.
Taxpayers with significant profit participations and residuals should still be able to take
advantage of this safe harbor. Profit participations and residuals are properly character-
16 Los Angeles Lawyer May 2015
ized as service income and therefore should not
count toward the $200,000 intangible income
limitation noted above. However, the $200,00
intangible income limitation would include
“portfolio” income, such as interest and dividends, and may include any royalties received
from film or record profits if the individual
owns all or part of the underlying rights.
A planning opportunity may exist when a
California resident anticipates selling a highly
valuable intangible asset, such as a music catalog. This type of planning is similar to the
planning often done for individuals who anticipate selling substantially appreciated closely
held business stock. The rationale of these
strategies is the same: intangible assets (whether
closely held stock or a music catalog) are generally sourced to the state of a taxpayer’s
domicile under the principle of mobilia sequuntur personam (chattels follow the person).
Thus, by changing one’s domicile, one can
often change the state of sourcing of income
realized from the sale of intangible property.
Changing one’s domicile away from California to reduce the state income taxes owed
on the sale of the intangible property is subject to two notable caveats. The first caveat
is that the intangible asset cannot have a
business situs in California; otherwise, gain
from the sale of the intangible will continue
to be sourced to California notwithstanding
the domicile change.
Under Section 17952(c) of the California
Code of Regulations, intangible personal
property has a business situs in [California]
if it is “employed as capital in this State or the
possession and control of the property has
been localized in connection with a business,
trade or profession in this State so that its substantial use and value attach to and become
an asset of the business, trade or profession
in this State.”20 This regulation also provides
that if intangible personal property of a nonresident has acquired a California business
situs, “the entire income from the property
including gains from the sale thereof, regardless of where the sale is consummated, is
income from sources within this State, taxable
to the nonresident.”21 Little guidance exists
on the issue of what it takes for a copyright
to acquire a “business situs” in California.
In Holly Sugar Corporation v. McColgan,22
the California Board of Equalization held
that “[b]usiness situs arises from the act of the
owner of the intangibles in employing the
wealth represented thereby, as an integral
portion of the business activity of the particular place, so that it becomes identified with
the economic structure of that place….”23
Applying the foregoing standard, the California Franchise Tax Board held in Ruling
No. 145 that copyrights relating to course
materials did not acquire a “business situs”
in California as a result of their being licensed
into the state by a California nonresident for
use by an unrelated individual in California.
According to the Franchise Tax Board, “there
must be further ‘localization’ of the intangible asset” before the intangible acquired business situs in California.
Based on the forgoing guidance, it would
seem that merely licensing a song catalog into
California for use in television commercials
and movie trailers would not give rise to “business situs” in California because it would not
arise from the act of the owner thereof (the
songwriter) using the musical copyright as part
of an integral portion of its business activity in
California.
The second caveat to this type of planning
is that the property sold must represent an
intangible (e.g., a musical copyright) as opposed to a form of deferred compensation.
The label given to the property is not determinative, and the contract giving rise to such
rights must be carefully analyzed in making this
determination. The relevant analysis is illustrated by California and federal income tax
authorities.
For example, in its Ruling Number 345,
the California Franchise Tax Board ruled
that amounts titled “royalties” received by an
author from a New York publishing company
for textbooks written in California were actually compensation for services because they
were earned “under a continuing contract
with the publisher.”24 In IRS Program Manager Technical Assistance Memorandum
2007-0007, IRS counsel advised that payments made in respect of a “writer’s share”
interest in a musical copyright were royalty
income (not compensation income) because
the music publishing contract under which the
songs were made: 1) did not obligate the taxpayer to write any music and 2) granted the
music publisher only a limited copyright in the
music—i.e., the right to use the songs in U.S.
markets. In Revenue Ruling 74-555, the IRS
held that amounts received by a foreign
author under a contract granting a U.S. company the U.S. serial rights in his exclusive
output of both long and short stories were
royalty income because the contract “did not
prescribe in any manner what the taxpayer
was to write or when it was to be written.”25
As these authorities illustrate, making the
determination between compensation and
income derived from the ownership of an
intangible requires a careful analysis of the
contract giving rise to such income.
In general, if the income is paid under a
contract to provide services, pursuant to
which the service provider did not retain any
interest in the copyright produced from the
engagement, such income should be treated
as deferred compensation. In contrast, if the
income relates to a “publishing” contract
without any specific output requirements,
the income payable to the service provider
thereunder will likely be treated as royalty
income as opposed to deferred compensation. In the latter scenario, if the taxpayer
anticipates selling this income stream, the
taxpayer could consider undertaking a domicile shift to a lower tax jurisdiction to minimize the state income taxes owed on the gain
from the sale of this “intangible.” As discussed above, accomplishing a domicile shift
requires 1) abandoning your California domicile, 2) physically moving to and residing in
a new locality, and 3) intending to remain in
the new locality permanently or indefinitely.
In conclusion, it is worthwhile for individuals working in the entertainment industry
to pay attention to California’s rules regarding
residency and domicile. With awareness of
these rules, one can structure one’s affairs as
best as possible to avoid being treated as a
California resident altogether. However, even
if this cannot be done, steps can be taken to
mitigate the negative effects of being treated
as a California resident (e.g., acceleration or
deferral of income). Thus, for those who
enter, all is not lost.
■
1 States are not bound by and generally do not follow
U.S. tax treaties insofar as residency determinations are
concerned. Therefore, it is possible for an individual
to be considered a nonresident for U.S. federal income
tax purposes (either under U.S. law or under the relevant foreign income tax treaty) but a resident of
California.
2 REV. & TAX. CODE §17041(a)(1).
3 REV. & TAX. CODE §17014(b).
4 REV. & TAX. CODE §17014(a)(1).
5 REV. & TAX. CODE §17014(a)(2).
6 REV. & TAX. CODE §17015.
7 California Franchise Tax Board, Guidelines for Determining Resident Status—2011, at 4, available at
https://www.ftb.ca.gov.
8 Id.
9 REV. & TAX. CODE §17016.
10 CAL. CODE REGS. §17014(d).
11 CAL. CODE REGS. §17014(b).
12 REV. & TAX. CODE §17014(d).
13 CAL. CODE REGS. §17014(d)(1)-(4).
14 California Franchise Tax Board, Guidelines for
Determining Resident Status—2011, at 7.
15 Id.
16 CAL. CODE REGS. §17951-2.
17 See REV. & TAX. CODE §175951(a).
18 CAL. CODE REGS. §17014.
19 See R EV . & T AX . C ODE §17554; see also Cal.
Franchise Tax Board Legal Ruling No. 132 (June 23,
1958) and Cal. Franchise Tax Board Legal Ruling
No. 340 (Oct. 5, 1970).
20 CAL. CODE REGS. §17952(c).
21 Id.
22 Holly Sugar Corp. v. McColgan, 115 P. 2d 8 (Cal.
1941).
23 Id. at 11.
24 Cal. Franchise Tax Board Legal Ruling No. 345
(Sept. 15, 1970).
25 Rev. Rul. 74-555, 1974-2 C.B. 202 (1974).
Los Angeles Lawyer May 2015 17
E
ntertainment law issue
by JILL L. SMITH
PERK POINTS
Publicity services, approval rights, exclusivity,
and approvals are often key elements of a deal
A CONTRACT IS an “agreement, upon sufficient consideration, to do or not to do a particular thing.”1 In the entertainment field, an
attorney often is brought into a contract
negotiation on behalf of an actor client after
an agent has discussed and potentially resolved some of the material deal points—
most likely the fee and credit. The attorney
is likely to handle the remaining noncompensation provisions that are essential to the
deal. While actors just starting their careers
often have little leverage or desire to haggle
over much beyond a standard deal, seasoned
or breakout performers may be able to negotiate for better nonfinancial terms. The provisions that can make or break a deal are
largely dependent on the type of deal at issue.
18 Los Angeles Lawyer May 2015
For theatrical motion pictures or longform television motion pictures, settling on the
fee payable to the actor can often raise more
questions. The first question is likely to be,
“What services are covered by the fee?” For
day and weekly player agreements, which
are the standard for newcomers and unknown
performers, the answer is usually simple. A
day rate covers a day of services; a weekly rate
covers a week. But the answer is not as obvious in a “flat fee” deal, which is the norm for
talent of greater stature and for roles requiring services longer than a few days or weeks.
One issue is likely to be exclusivity, which
is generally not a contentious issue in movie
deals. The presumption is that the actor’s services will be exclusive to the production com-
pany during production periods and subject to
professional availability during periods not
consecutive to the production period. Both
parties must agree upon the extent to which the
flat fee covers these services.
Actors are typically required to render
services for preproduction (rehearsal, costume fittings, etc.), production (i.e., principal
photography), postproduction (which may
include special effects work, dubbing, and
reshoots), and publicity for the film. It is not
unusual for an actor’s deal to be based on a
set amount of services, broken down into a
specific number of days for consecutive excluJill L. Smith is an entertainment attorney at
Kleinberg Lange Cuddy & Carlo LLP in Los Angeles.
MICHAEL CALLAWAY
between actors and studios
sive preproduction services, a specified number of weeks for shooting, and a maximum
number of days for postproduction services.
The actor may be required to render services
beyond those specified, for which the production company pays additional sums
known as overages.
Parties will often agree to a “run of show”
deal in which the fee is intended to cover the
services for the entire length of production.
However, there can be differing interpretations
of what that means. A production company
may expect that a “run of show” deal means
that there is no chance for overages and that
no matter how long the shoot lasts, the flat
fee covers all production services. The talent,
on the other hand, may interpret a “run of
show” deal to mean that the fee covers the
period of shooting based on the scheduled
period as of the start of the shoot. In that case,
the expectation might be that if the shoot
goes overschedule, the actor will be entitled
to overages. Notwithstanding the efforts of
both parties to negotiate each material deal
term prior to papering a deal, these issues of
interpretation may not become apparent until
both sides attempt to document their differing understanding of the deal.
Similar discussions are required concerning the number of days included in the flat fee
for preproduction and postproduction services. In addition, there may be limitations on
the type of postproduction eligible to be
included in the flat fee. For instance, are
reshoots to be considered postproduction services covered by the flat fee or additional
photography services that could give rise to
overages? The more attention given to these
issues during negotiation, the less likely disagreements will arise during the documentation phase.
Publicity Services and Credit
The requirement to render publicity services
is another area for debate. Studios often consider an actor’s promotional and publicity
services essential to the deal. Some studios will
attempt to make it a requirement that the
actor be present at certain promotional events
(e.g., the picture’s premiere). While seemingly reasonable, this requirement may affect
the actor’s ability to take on other work, as
the new job may conflict with the deal picture’s publicity schedule.
Another issue involving required promotional services could arise in the case of an
actor who is taking less money to work on a
movie or is not receiving any contingent compensation. In that situation, actors may believe
that they should not be obligated to render
publicity services. A well-known actor appearing in a cameo role may feel that it is not
appropriate to publicize the picture, given
the small role, for example.
20 Los Angeles Lawyer May 2015
In addition to compensation, another
deal point that is usually raised early is credit.
Discussions will involve the order of the
actor’s credit in relation to other actors as
well as other details such as size and placement. While the movie-watching public may
pay scant attention to the placement of credits before or after the title of the movie or in
big bold letters in a poster, talent and production attorneys tasked with working out
these complexities are typically quite concerned with whether the credit to actor A or
B will appear first, or at the same time, or
with one on the upper right side and one on
the lower left. While the usual focus is on getting the biggest and best credit, there are
instances in which no credit is permitted.
For example, a high-stature actor appearing
in a cameo may insist on not being accorded
any credit. The intricacies of credit negotiation at times will also involve discussions
about the use of an actor’s image in advertising for a movie. A contract might address
not only when the likeness can, or must, be
used, but also the size of the actor’s image in
relation to other likenesses appearing in the
same advertisement.
Approval Rights
Some actors have sufficient clout to be
accorded certain creative approval rights.
Typical areas of such creative input are in
respect of the selection of the director, the final
screenplay, and other principal cast members. But not all approval rights are the same.
Most approval rights afforded talent will
provide that, in the event of a disagreement,
the studio’s decision will prevail. An absolute
approval right, however, provides the actor
with the ability to walk away from the picture if the actor does not approve a certain element. Such an approval right can put an
entire movie in jeopardy, a potentially untenable position from the perspective of a studio
that may have already invested millions of
dollars in development and preproduction.
Similarly, an actor of a certain stature may
find it wholly unacceptable to work on a
film that he or she does not completely support. A typical compromise would provide for
a true approval right to convert into a consultation right at some point prior to the
start of shooting; but even that concept will
require the parties’ agreement as to when
that conversion occurs.
Other common approval rights concern
the actor’s photograph, nonphotographic
likeness, and biography as well as behind-thescenes materials including the actor and
footage recorded for, but not used in, the
picture. It is not unusual for an actor to have
input on some or all of these areas. The
degree of that input will depend on the parties involved.
Another key area of negotiation in respect
of motion picture talent deals is the use of the
artist’s name, likeness, and voice. No one
disputes the studio’s ability to use the actor’s
recorded performance in the movie itself, but
the breadth to which that performance may
be used beyond the movie and publicity, promotion, and advertising for the movie can
result in extensive conversations prior to
agreement. The request in a talent deal to a
“one picture license” is commonly understood to mean that the results and proceeds
of the actor’s services may only be used in the
picture itself and in advertising, promotion,
and publicity for the picture. The biggest
hurdles to overcome in that regard concern
the right to use the talent’s name, likeness, and
voice in connection with merchandising and
soundtrack albums.
The request for a one-picture license is no
longer as innocuous as it was in the past. A
successful movie can lead not only to a line
of board games, toys, books, and music videos
but also to mobile applications, computer
wallpapers, video and computer games, theme
park rides, and ice arena shows. In this
instance, the determinative factor is less likely
to be about the performer’s stature and more
likely to be about what studio is involved, as
Disney and Universal have theme parks. At
times a studio will insist on the ability to use
an actor’s name or likeness in connection
with merchandising. Short of the actor’s ending negotiations (which can happen), the
next best step is to ensure that the actor is
appropriately compensated for this use.
Merchandising tends to be an all-or-nothing proposition. Most pictures have little or
no merchandising, but when a movie’s merchandising campaign hits, it can hit big. It is
incumbent on the talent attorney to ensure
that the royalty provisions are adequately
and clearly negotiated. But even under the best
of circumstances with heavily negotiated provisions, an actor may not feel that he or she
is getting what was promised.2
The use of someone else to dub an actor’s
voice in their native language can be embarrassing from the actor’s perspective—or necessary from the studio’s. While not at all the
only instance, Andie MacDowell’s entire performance in 1984’s Greystoke: The Legend
of Tarzan, Lord of the Apes was famously
overdubbed by Glenn Close.3 Limiting the circumstances under which the voices of actors
can be dubbed and providing actors with the
first opportunity to dub in their native language are customary compromises.
Consideration also needs to be given to the
studio’s ability to re-create an actor’s likeness. Use of technology to fabricate an actor’s
image means that the use of a double is no
longer the only way to do so. An attorney representing an actor will want to give consid-
eration to these issues in order to ensure the
integrity of the actor’s work.
Nudity
Another area often addressed in talent deals
is the extent to which an actor may appear in
nude, semi-nude, and sex scenes. For most
roles, this topic is a nonissue; there will be no
nudity or sex scenes. For others, this issue
can result in heated discussions between the
production attorney and the talent attorney.
The SAG-AFTRA Agreement states: “The appearance of a performer in a nude or sex scene
or the doubling of a performer in such a scene
shall be conditioned upon his or her prior
written consent.”4 Separate consent is typically
contained in a nudity rider, which “must
include a general description as to the extent
of the nudity and the type of physical contact
required in the scene.”5 Indeed, the nudity
rider more typically addresses, in painstaking
detail, the specific permitted and nonpermitted filming areas of the actor’s body as well as
the use of the materials. If an actor agrees to
perform in nude scenes and then reneges on the
agreement, the usual recourse for the production company is that a body double will be
hired. The engagement of a body double in
those circumstances is permitted by SAGAFTRA.6 However, there has been a recent
counter-suit filing by the company that produces Femme Fatales for Cinemax against an
actress, Anne Greene, for allegedly breaching
the applicable nudity rider by retracting consent.7 Time will tell if that reaction proves
credible.
Perquisites and Options
The final area of nonboilerplate, noncompensation terms in respect to an actor’s motion
picture deal concerns perks. This area, like the
others, comes with a wide range of possibilities. The A-lister commanding a private jet
and a full entourage including an on-set
pilates teacher, masseuse, and chef is far from
routine. Nonetheless, negotiations between
the studio and the actor’s attorney may go into
the finest details. The particulars concerning
the type and size of dressing room and the
amenities to be included in it, the hotel, room
type, quality of ground transportation (for
both self-drive and with a driver) and, of
course, the class and number of roundtrip air
transportations to be provided, are all likely
to be discussed.
Although a television or internet/streaming series may begin as a pilot (or even just a
test in which an actor auditions for a pilot),
the specifics are customarily entirely negotiated
before the actor says a single line on camera.
Series deals differ from theatrical or MOW
motion picture deals primarily because they
have the potential for continuing for so many
years. Accordingly, while some of the non-
compensation issues raised in talent deals for
motion pictures are the same in series deal
negotiations, there are significant distinctions.
Deals and fees for a series regular are generally structured as a per-episode payment.
But even that resolved issue brings its own set
of questions and negotiations. It is not unusual
for a series to include episodes in which a regular cast member does not appear. The question of whether or not that actor is nonetheless paid for that episode depends on how his
deal was negotiated.
The gold standard in such respects is for
an actor to be paid his or her episodic rate
on an “all episodes produced” basis. The
actor would then be compensated for all
episodes even if he or she appears in less
than all. Even then there will be a discussion
as to whether there is a minimum number of
episodes guaranteed per season. Particularly
in light of the long production schedule and
burdensome exclusivity requirements, there
are strong justifications for an actor to be
guaranteed payment for a certain number of
episodes each season.
Although some series regular actor deals
are intended for one season only, the traditional series deal will grant the studio options
for additional seasons. Accordingly, another
threshold issue in a series deal will be the
number of options granted to the studio. It
is typical in these instances for the studio to
want options totaling seven seasons (or
seven and a half if the show initially airs in
the spring). The number of options results in
a long-term commitment from the actor and
impacts the inevitable renegotiation of a series
deal which occurs once a series becomes a
success; that is, the shorter the commitment,
the more leverage the actor has if a series
becomes a hit.
Exclusivity and Relocation
A main component of a television series deal
is exclusivity. The requirements of exclusivity flow in two directions—what other services
the actor is permitted to render and when
those services may be rendered. Unlike feature
motion pictures, which customarily have a
straightforward beginning and end of production schedule requiring an actor’s exclusive services and after which the actor is
released, a television series by its nature is in
a relatively constant state of production and
postproduction during which there will be
stretches of time when an actor’s services are
not needed. As a result, a series actor is not
usually barred from rendering outside services
Los Angeles Lawyer May 2015 21
during production periods, albeit in second
position to the series. The bigger issue in
series deals is the other aspect of exclusivity—
the nature of permitted outside services.
As a starting point, studios want the actors
on their shows to be relatively exclusive to the
show, at least in respect of television and,
more recently, internet programming. So,
even when the agreement permits an actor to
render outside services, there is a practical
limit to his or her ability to do so. Since the
actor may only have periods of a few consecutive days off, other than during true hiatus periods (traditionally during May and
June), from the beginning of production of a
season to the season’s production wrap, it will
be nearly impossible for an actor to schedule
work on a feature. And, whereas it may be
more realistic to coordinate production schedules for an appearance on another series, the
actor’s deal may preclude that. While there
may be some exceptions to television exclusivity in episodic deals (a limited number of
guest spots, appearance in foreign commercials and services in nonidentified voice-over
commercials are commonly permitted), in
general, an actor signed to a series role has
made a significant commitment.
Another distinction between series deals
and movie deals concerns location services.
For a movie, the actor may need to be on location for several months. For a television series,
if the show is successful, there is a possibility that the actor will be at the production
location more than at his or her preseries
residence.
An actor may be provided with traditional travel and expenses for pilot services.
However, most series actor deals will provide
that if the series is produced on location the
actor will receive a one-time relocation fee in
lieu of accommodations and per diem. For
some individuals, the possibility of such
uproot can result in the death of a deal.
Publicity
An actor’s publicity commitment is also significant in a series deal. Like motion picture
talent deals, most publicity services are subject to the actor’s professional availability.
However, most studios also obligate the actor
to be present at certain events (e.g., the Television Critics Association Press Tour occurring in January and July, and the annual upfront presentations and related activities
occurring in May), further affecting an actor’s
ability to take outside work.
The other nonfinancial deal terms that
may be addressed in a talent agreement for a
series are for the most part comparable to
those of a feature deal. Those provisions will
assuredly include credit as well as approvals
and restrictions in respect of the use of the
actor’s name, voice, likeness and biography.
22 Los Angeles Lawyer May 2015
Another venue for an actor to render services is in connection with product or service
commercials or endorsements. By nature,
endorsements focus on the use of an actor’s
name, likeness, voice, and persona. The value
of an actor’s name and likeness in connection
with supporting a particular product or service is evidenced by the number of lawsuits
by an actor or actor’s estate in which a likeness was used without consent.8 Accordingly,
issues relating to such usage are of paramount importance in these deals.
A starting point for the question of permitted usage will be the type of services
required. The range of possible services includes on-camera work, voice-over services,
live appearances, still photography sessions,
or any combination of these. The services
rendered pursuant to these types of deals are
usually more limited and may result in more
flexible scheduling for the actor.
Once the nature of the required services is
determined, the manner in which the services
can be used is the overriding issue requiring
resolution. For instance, a deal requiring one
day of on-camera services can result in a multitude of commercials in various lengths as well
as still photographs that can be used in print
ads or the like. The details of the allowable
usage will address territory, term, and media.
These negotiations can be a critical aspect of
the deal for actors with existing deals (e.g., for
a series) that impose limitations on their ability to appear in commercials.
An infrequently used but potent provision in this type of deal is a liquidated damages provision. Such a clause would obligate
the contracting party (often the advertising
agency rather than the product manufacturer) to pay the actor for each individual
breach of the agreement. The amounts are
usually very high (six or seven figures per
breach), which creates a strong incentive to
comply with the terms of the deal.
Another area of significance in an endorsement-type agreement is exclusivity. The exclusivity at issue does not relate to the actor’s ability to do other work but rather to what
products the actor may be prohibited from
also endorsing during the term of the deal at
issue. Is an actor appearing in a beer commercial to be prohibited from promoting
another beer, any other alcoholic beverage, any
refrigerated beverage, or any beverage at all?
The actor will want the scope of exclusivity
to be as narrowly defined as possible while the
company whose product the actor is endorsing may want to broaden the scope to both
protect the brand and to have the actor’s
endorsement be that much more meaningful.
Approvals and Liability
Approval rights in these types of deals may
also be significant. An actor may require
approval of the director of the commercial as
well as the storyboard prior to committing to
rendering services. While the company will
be reluctant to give an actor approval rights
that could significantly affect the company’s
right to use materials already created (and
paid for), certain deals will nevertheless provide an actor with additional approval rights
over the finished products. In light of the
Federal Trade Commission’s truth-in-advertising requirements, including that “[e]ndorsements must reflect the honest opinions...or
experiences of the endorser,”9 approvals can
protect endorsers as well as sponsors. For example, Octavia Spencer was awarded almost
$1 million in damages in a default judgment
against Sensa, a weight loss company, for
wrongful termination of her endorsement
contract based on her appropriate social
media postings that reflected that she was a
paid sponsor.10
One issue unique to these types of deals is
the nature of protection afforded the actor
arising out of a third party’s use of the product endorsed. An injured party will often
seek relief against anyone affiliated with a
product causing the injury that could include
the actor who has been promoting the product. While the actor may ultimately be
released from the claim or otherwise determined to be not responsible, the burden of
defending himself from a frivolous claim
should not fall on the actor. Accordingly, the
issues of liability insurance and indemnification provisions are of particular importance in these types of deals.
Notwithstanding the many similarities
among all talent deals, the differences between
them require a talent attorney to evaluate,
analyze, and negotiate each deal individually
and at some point make a determination about
whether a deal is in place. When all goes
smoothly, as it does more often than not, that
determination will not be subject to scrutiny.
But, when something goes wrong, a threshold
question may be whether or not there was a
contract. The most famous, or perhaps infamous, situation regarding that issue reached
involved the motion picture Boxing Helena
and a lawsuit by the producers against Kim
Basinger after she backed out of portraying the
lead role. While the producers were initially victorious against Basinger in the 1993 jury trial,11
the verdict was ultimately overthrown and
the case settled.12
A diametrically opposite lawsuit was the
topic of another notable case filed in 2001
by Sharon Stone in which Stone alleged that
her deal to reprise her star-turning role from
Basic Instinct was in place.13 Stone’s suit
against the producers of Basic Instinct 2
was initiated when the production was canceled. That case eventually settled,14 and,
ultimately resulted in the completion and
Los Angeles Lawyer May 2015 23
ROSS MEDIATION SERVICES
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release of the sequel starring Stone. As the
suits involving Basinger and Stone reveal,
it is not always comprehensible to both sides
whether or not an agreement is reached.
The bottom line is that the attorney tasked
with closing an actor’s deal needs to carefully
consider all issues particular to, and the
individual circumstances of, that deal. Not
one of these issues by itself is usually insurmountable; rather, it is the totality of
the deal (which certainly includes the compensation) that gets evaluated and results in
either mutual agreement on all material
issues or an endnote in an article about
deals gone awry.
■
1
See http://thelawdictionary.org/contract.
See, e.g., Scott Zamost, ‘Happy Days’ actors settle lawsuit with CBS, CNN (July 7, 2012), at http://www.cnn
.com/2012/07/06/showbiz/happy-days-lawsuit-settled;
Dominic Patten, Fox Hit With $250M ‘Simpsons’ Lawsuit by ‘Goodfellas’ Actor, Deadline (Oct. 21, 2014), at http:
//deadline.com/2014/10/simpsons-lawsuit-goodfellas
-character-rip-off-fox-857282.
3 See, e.g., Andie Macdowell at http://www.tcm.com
/tcmdb/person/118671%7C0/Andie-Macdowell; Mark
Iveson, 10 actors who got dubbed out of their movies
(Mar. 16 2011), at http://www.shadowlocked.com
/201103161613/lists/10-actors-who-got-dubbed-out
-of-their-movies.html.
4 SAG-AFTRA Agreement, Art. 43.D, available at http:
//www.sagaftra.org/files/sag/2005theatricalagreement
.pdf.
5 Id.
6 “If a performer has agreed to appear in such scenes
and then withdraws his or her consent, Producer shall
have the right to double, but consent may not be withdrawn as to film already photographed.” Id.
7 Eriq Gardner, Producers Allowed to Sue Actress for
Refusing to Film Nude Sex Scene, The Hollywood Reporter (Oct. 20 2014), at http://www.hollywoodreporter
.com/thr-esq/producers-allowed-sue-actress-refusing
-742081.
8 See, e.g., Nate Raymond, Katherine Heigl, Duane Reade
end lawsuit over actress’ photo, Reuters.com (Aug. 27,
2014), at http://www.reuters.com/article/2014/08/27
/us-people-katherineheigl-idUSKBN0GR2BD20140827.
9 Guides Concerning the Use of Endorsements and
Testimonials in Advertising, 16 C.F.R. §255.1(a).
10 See, e.g., Eriq Gardner, Octavia Spencer’s Tweets
at Center of Endorsement Lawsuit (Exclusive), The
Hollywood Reporter (Aug. 28 2013), at http://www
.hollywoodreporter.com/thr-esq/octavia-spencers-tweets
-at-center-616596; Daniel Taylor, Octavia Spencer
Wins Wrongful Termination Lawsuit Involving Tweets,
FindLaw (Dec. 24, 2014), at http://blogs.findlaw
.com/celebrity_justice/2014/12/octavia-spencer-wins
-wrongful-termination-lawsuit-involving-tweets.html.
11 Robert W. Welkos, Basinger Ordered to Pay $8.9
Million for Jilting Film, LOS ANGELES TIMES (Mar. 25,
1993), available at http://articles.latimes.com/1993
-03-25/news/mn-14793_1_kim-basinger.
12 Judy Brennan and Edward J. Boyer, Damages Against
Kim Basinger in Film Suit Voided, LOS ANGELES TIMES
(Sept. 23, 1994), available at http://articles.latimes
.com/1994-09-23/local/me-42074_1_boxing-helena.
13 Stone’s Basic Instinct: Sue the producers, The Guardian
(June 7 2001), at http://www.theguardian.com/film
/2001/jun/07/news.
14 Robert W. Welkos, Settlement Near in Suit Over
‘Basic Instinct 2,’ LOS ANGELES TIMES (July 14, 2004),
available at http://articles.latimes.com/2004/jul/14
/business/fi-stone14.
2
NotSoBIGLAW.com
copyright • trademark
NOT SO BIGLAW® is a service mark of Paul D. Supnik
24 Los Angeles Lawyer May 2015
MCLE ARTICLE AND SELF-ASSESSMENT TEST
By reading this article and answering the accompanying test questions, you can earn one MCLE credit.
To apply for credit, please follow the instructions on the test answer sheet on page 27.
by WILLIAM S. RYDEN
TRANSMUTATION
OF LAW
Under Marriage of Valli, third-party transactions are
not exempt from transmutation rules
WHEN the California Supreme Court issues
an opinion that addresses a community property issue, family law practitioners take note.1
In the recent In re Marriage of Valli decision,2 the court held that a $3.75 million
whole life insurance policy that singer Frankie
Valli purchased from a third-party insurance
company, naming his wife as sole owner and
sole beneficiary, should be characterized as a
community property asset. The Valli decision also involves the issues of transmutation and the application of Evidence Code
Section 662. Although straightforward in its
holding, Valli is a departure from prior transmutation cases and has possible consequences
that could affect estate planning and creditor
rights.
In Valli, the key distinction from prior
cases holding that insurance policies purchased with community funds are community
property was the fact that Valli had named his
spouse both as legal owner of the policy and
the sole beneficiary of the cash proceeds upon
his death. It was clear from the terms of
the policy that Valli had divested himself
of ownership and control, apparently for
estate planning purposes. The court of appeal
had unanimously determined that because
ownership stood in Mrs. Valli’s name with Mr.
Valli’s knowledge and consent, the policy was
presumed to be her separate property. The
supreme court, in reaching its result, expanded the law of transmutation to include not
only transactions between spouses but also
between a spouse and a third party.
Valli also limits what role Evidence Code
Section 662 may have on characterization
of property in a dissolution. The supreme
court considered whether the policy should be
characterized as community property or separate property under Section 662, which
states: “The owner of the legal title to property is presumed to be the owner of the full
beneficial title. This presumption may be re-
butted only by clear and convincing proof.”
In Valli, the supreme court held that “We
need not…decide here whether Evidence
Code section 662’s form of title presumption…applies.…Assuming for the sake of
argument that [it] may sometimes apply, it
does not apply when it conflicts with the
transmutation statutes.”3
The basic facts in Valli were not in dispute.
During the marriage, Mr. Valli acquired the
policy on his life and named his wife as its sole
owner and sole beneficiary. The trial record
indicated that Mrs. Valli did not participate
in the transaction. She did not suggest that she
be the owner nor the amount of insurance
that should be acquired. Mr. Valli had the
assistance of professionals (his business manWilliam S. Ryden is a certified family law specialist and a partner with Jaffe and Clemens in Beverly
Hills. He was lead counsel for Mrs. Valli at trial and
through the appeal.
Los Angeles Lawyer May 2015 25
ager and life insurance agent) in making his
decision to acquire and title the policy. He
paid the life insurance premiums with community property funds. There is no question
that he relinquished all indicia of legal ownership, beneficial ownership, and management and control of the policy.
Clearly, Valli did not have any expectation
of sharing in the economic benefits, since the
death benefit would be payable upon his
death. This is not an uncommon occurrence.
For estate planning purposes, couples often
take out life insurance policies and place title
or ownership in one spouse’s name to keep the
proceeds out of the insured’s estate in order
to avoid or reduce estate taxes. In certain
instances couples do not consult with attorneys before acquiring policies, nor are they
likely to discuss the possible legal and economic consequences that will flow from their
choices if there is a later divorce.
Prior to Valli, no family law case had
extended the Family Code’s transmutation
statutes to apply to transactions between a
spouse and a third party. No family law case
prior to Valli eliminated application of
Evidence Code Section 662 to characterization issues.4 The facts of Valli provided the
court with an opportunity to carve out an
exception for situations in which the conduct of a party or the writings signed by a
party demonstrate that the party intended
to relinquish all ownership interest in an
asset, or alternatively, to carve out an exception applicable to life insurance policies.
Considering prior applicable decisions,
the court interpreted Family Code Sections
850 to 852, which concern transmutations,
to apply to transactions involving third parties if one spouse claims as separate property
an asset acquired during marriage and paid
for with community funds that is titled in that
spouse’s name. The fact that Valli did not
expressly state in writing that he intended to
give up a community interest or change the
character of an asset meant that the requirements of Family Code Section 852 had not
been met, making the life insurance policy
community property. In order to appreciate
the context of this new rule, one must understand why transmutation rules were created.
In 1984, the legislature enacted what are
now Family Code Sections 850, 851, and
852.5 Those statutes provide the requirements for how one spouse could change the
character of an asset from community property to separate property, or separate property
to community property, or the separate property of one spouse to separate property of the
other. This change of character is a transmutation, and for it to be valid, it must be
made in writing by an express declaration that
is made, joined in, consented to, or accepted
by the spouse whose interest in the property
26 Los Angeles Lawyer May 2015
is adversely affected.6 The purpose of the
transmutation legislation was to eliminate
the ability of spouses to claim that the character of property changed based on an alleged
oral agreement or a party’s conduct.
Transmutation in MacDonald
Estate of MacDonald7 was the first significant
case to address the transmutation issue. In this
case, the court exposed a defective attempt to
create a transmutation. MacDonald was an
action by the children of a decedent wife to
establish her community property interest in
the value of the husband’s IRA accounts. The
evidence relating to the alleged transmutation
was uncontroverted. Prior to her death from
cancer, the wife and her husband intended and
attempted to divide the community estate so
that her children by a prior marriage would
receive her share of the community property
and his children from a former marriage
would receive his share. The trial court found
that in signing a consent to certain agreements in connection with the husband’s IRA
accounts, the wife intended to transmute her
community property interest in those funds
to the husband’s separate property.
The California Supreme Court reversed
the appellate court on grounds that the documents purportedly transmuting the IRA
interest did not meet the writing requirements of Civil Code Section 5110.730 (which
is now Family Code Section 852). The court
expressly disregarded the intent of the parties,
interpreting what is now Family Code Section
852 as an absolute bar to enforcement of a
technically insufficient writing. The court
found: “We must therefore determine whether
Margery’s actions, whether or not they were
intended to transfer her interest in the pension
funds, were effective under Section 5110
.730(a) to transmute those funds from community property to Robert’s separate property.
We are of the opinion that they were not.”8
The court also noted: “There is no question
that the Legislature intended by enacting
Section 5110.730(a) to invalidate all solely
oral transmutations.”9 “In our view,” the
court continued, “[T]he Legislature cannot
have intended that any signed writing whatsoever by the adversely affected spouse would
suffice to meet the requirements of Section
5110.730(a). First, to so construe that statute
would render mere surplusage all the language following the words ‘unless made in
writing,’ including the phrase ‘an express
declaration.’ A construction rendering some
word surplusage is to be avoided.”10
In MacDonald, the disputed writing was
the written consent given by the wife to her
husband’s designation of beneficiaries other
than her to his IRA accounts. The court
explained that consenting to the designation
of other beneficiaries was insufficient to con-
stitute a transmutation because the consent
paragraphs did not expressly state that the
consent constituted a transfer of her community interest in the funds to her husband.
MacDonald fashioned two requirements. A
sufficient writing under Section 852 must
contain 1) language of transfer and 2) an
express statement that characterizes the title
of the property after transfer. An important
point to note is that the court would not
allow extrinsic evidence to further interpret the
actual writing. If the writing is ambiguous as
to the intention to change the character of
property, the writing fails, and the transmutation will be denied. Unwritten intent to create a transmutation will not be allowed to be
shown through extrinsic evidence. It is also
worth noting that the MacDonald decision
favors a finding in favor of the community.11
In 1995, in In re Marriage of Haines,12 the
court of appeal determined that transmutations can be completed by way of a quitclaim deed. Taking the analysis a step further,
the court determined that interspousal transactions must comply with the rules controlling actions of persons occupying confidential
relations with each other. Transmutations
are subject to the fiduciary rules governing
spouses and the spouse benefitting from the
transaction has the burden of overcoming
the presumption that an advantage was
gained by the exercise of undue influence. In
Haines, one spouse obtained a quitclaim deed
from the other by telling her that he would
not cosign for her automobile loan unless
she signed the deed. The court held that the
deed was not signed voluntarily and freely
with full knowledge of the legal consequences.13
The next important case to address a complicated transmutation fact pattern was In re
Marriage of Barneson.14 In that case, the
husband provided written instructions to his
investment managers to “transfer” his Marina
Oil stock into his wife’s name or to “journal”
stock in his Schwab account into her account.
The appellate court rejected the wife’s argument that her husband had failed to rebut the
statutory presumption created by Evidence
Code Section 662 that she held full beneficial
title to the stock placed in her name. The
court ruled that the term “transfer” might or
might not refer to a change of ownership. This
demonstrated an ambiguity in the husband’s
written directions. In referring to the title
provisions embodied in Section 662, however,
the court did not state that the title presumption could never apply in family law
situations.15
In 2005, the court decided In re Marriage
of Starkman,16 which concerned whether an
estate plan satisfied the requirements of the
transmutation statutes. In that case, the husband, heir to the UPS fortune, married in
MCLE Test No. 246
The Los Angeles County Bar Association certifies that this activity has been approved for Minimum
Continuing Legal Education credit by the State Bar of California in the amount of 1 hour.
MCLE Answer Sheet #246
TRANSMUTATION OF LAW
Name
Law Firm/Organization
1. In determining whether a transmutation will be
effective, courts primarily look to the intent of the parties.
True.
False.
2. A key fact in Marriage of Valli that makes it different from prior cases involving insurance policies purchased with community funds is that Mr. Valli, on his
own, named Mrs. Valli as owner and beneficiary.
True.
False.
3. Evidence Code Section 662 provides that the owner
of legal title to property is presumed to be the owner
of beneficial title.
True.
False.
4. For a transmutation to be effective, it must be made
in writing by an express declaration that is made,
joined in, consented to, or accepted by the spouse
whose interest in the property is adversely affected.
True.
False.
5. In order to be sufficient to effectuate a valid transmutation, a writing need only include language of
transfer.
True.
False.
6. The presumption set forth in Evidence Code Section
662 can only be rebutted by clear and convincing evidence.
True.
False.
7. While one spouse can transmute his or her separate
property to community property, a spouse cannot transmute his or her separate property to the other spouse
as separate property.
True.
False.
8. In order to be sufficient to effectuate a valid transmutation, a writing must include the word “transmutation.”
True.
False.
9. Mr. Valli, in naming his wife as both owner and
beneficiary, confirmed that he intended to relinquish
his community property interest in the policy.
True.
False.
10. One purpose in enacting the transmutation statutes
was to eliminate claims that the character of property
(either as community property or separate property) had
changed based on an alleged oral agreement between
the spouses.
True.
False.
11. The transmutation rules never apply to an acquisition by one spouse from a third party.
True.
False.
Address
City
State/Zip
12. Execution of a quitclaim deed can be sufficient to
effectuate a transmutation.
True.
False.
E-mail
13. Spouses engaging in interspousal transmutations
are not subject to fiduciary obligations.
True.
False.
INSTRUCTIONS FOR OBTAINING MCLE CREDITS
1. Study the MCLE article in this issue.
14. If an alleged transmutation writing is ambiguous,
the spouse asserting that a transmutation of property
has occurred may introduce parol evidence to remove
the ambiguity.
True.
False.
15. Instructions to an investment manager to “transfer” or “journal” stock into a spouse’s name is sufficient
to cause a change in the character of the stock.
True.
False.
16. It is legally permissible for spouses to enter into conditional transmutations that only change the character of separate property to community property in the
event of one spouse’s death.
True.
False.
17. One way to avoid application of the transmutation
statutes is to provide in estate planning documents that
the transmutation agreement is automatically terminated upon the filing of a petition for dissolution of marriage.
True.
False.
18. The holding in In re Marriage of Brooks and
Robinson is no longer applicable.
True.
False.
19. For estate planning purposes, if the intention of the
parties is to keep life insurance proceeds out of the
estate of the insured spouse, premium payments
should be paid from a separate property source.
True.
False.
20. Community property is liable for a debt incurred by
either spouse before or during marriage.
True.
False.
Phone
State Bar #
2. Answer the test questions opposite by marking
the appropriate boxes below. Each question
has only one answer. Photocopies of this
answer sheet may be submitted; however, this
form should not be enlarged or reduced.
3. Mail the answer sheet and the $20 testing fee
($25 for non-LACBA members) to:
Los Angeles Lawyer
MCLE Test
P.O. Box 55020
Los Angeles, CA 90055
Make checks payable to Los Angeles Lawyer.
4. Within six weeks, Los Angeles Lawyer will
return your test with the correct answers, a
rationale for the correct answers, and a
certificate verifying the MCLE credit you earned
through this self-assessment activity.
5. For future reference, please retain the MCLE
test materials returned to you.
ANSWERS
Mark your answers to the test by checking the
appropriate boxes below. Each question has only
one answer.
1.
■ True
■ False
2.
■ True
■ False
3.
■ True
■ False
4.
■ True
■ False
5.
■ True
■ False
6.
■ True
■ False
7.
■ True
■ False
8.
■ True
■ False
9.
■ True
■ False
10.
■ True
■ False
11.
■ True
■ False
12.
■ True
■ False
13.
■ True
■ False
14.
■ True
■ False
15.
■ True
■ False
16.
■ True
■ False
17.
■ True
■ False
18.
■ True
■ False
19.
■ True
■ False
20.
■ True
■ False
Los Angeles Lawyer May 2015 27
1990. In 1996, he employed an attorney to
prepare an estate plan. Contemporaneously
with execution of the trust, the husband and
wife executed a general assignment to convey
“any asset, whether real, personal, or mixed”
that they owned or would own to the trust.
The general assignment did not specifically
identify any property as the husband’s separate property. One month after the execution
of the trust and general assignment, the attorney sent the parties copies of the estate plan
instruments. The cover letter advised that
the trust provided a presumption that all the
trust assets were “your community property
unless you clearly specify otherwise. Therefore, it is very important that separate property be clearly identified as such.”17
The husband later executed various stock
brokerage transfer forms to convey specific
assets into the trust. Each form designated the
assets to be held by the husband and wife as
trustees. The forms did not describe the assets
as either community property or separate
property. During dissolution, the wife contended that the assets that her husband had
conveyed to the trust by the stock brokerage
forms had been transmuted into community
property. The trial court disagreed and ruled
that he did not transmute his separate property assets by conveying them to the trust. The
wife appealed.
The question presented to the appellate
court was whether the trust, general assignment, and stock brokerage forms taken
together established an express intent on the
husband’s part to change the character of
his separate property to community property. The court reasoned that a writing signed
by the adversely affected spouse is not an
“express declaration” for the purposes of
Family Code Section 852(a) unless it contains language that expressly states that the
characterization or ownership of the property
is being changed.18 The court also held that
an “express declaration” does not require
use of the terms “transmutation,” “community property,” “separate property,” or a particular locution. Although the court held that
those terms were not required, “The express
declaration must unambiguously indicate a
change in character or ownership of property.
A party does not “slip into a transmutation
by accident.”19 Moreover, the court held that
“In deciding whether a transmutation has
occurred, we interpret the written instruments independently, without resort to extrinsic evidence.”20
The court found that neither the trust’s
terms nor the conveyance to the trust effected
by the general assignment was sufficient to
establish unambiguously that the husband
was effecting a change of ownership in the
entirety of his significant separate estate. Had
there been an intent to effectuate a change of
28 Los Angeles Lawyer May 2015
ownership, the parties might have stated that
any property transferred to the trust by either
of them “becomes” or “is changed into” the
community property of the parties. The trust’s
stated purposes could have stated (but did
not) that one purpose was for the husband to
transmute the entirety of his separate estate
to community property. Reasonable inferences from other trust provisions regarding
separate property supported the court’s conclusion. The court also found that a letter
from the husband’s attorney to be inadmissible extrinsic evidence21 and that the estate
plan instruments and stock brokerage transfer forms did not establish a transmutation of
the husband’s separate property into community property.22
In 2008, Marriage of Holtemann was
decided, and another legal concept came into
play.23 Effective transmutation agreements
cannot be conditional. Although executed
for purposes of estate planning, the characterization as community property is not limited only for estate planning. Once a valid
transmutation occurs, it is valid and enforceable, regardless of the purposes for which it
was done. In Holtemann, the husband and
wife married in 2003 and separated in 2006.
During marriage, the parties retained an
attorney to prepare estate planning documents. The attorney prepared a written transmutation agreement and trust, which the
parties executed in 2005. An introductory
provision in the transmutation agreement
stated that “[t]he parties are entering into
this agreement in order to specify the character of their property interests pursuant to
the applicable provisions of the California
Family Code. This agreement is not made in
contemplation of a separation or marital dissolution and is made solely for the purpose
of interpreting how property shall be disposed of on the deaths of the parties.” The
parties also acknowledged that their attorney
had explained the “legal consequences” of the
agreement, and that they had decided not to
retain separate counsel after being advised of
the advantages of doing so.24
The transmutation agreement stated that
the husband agreed that the property described in “Exhibit A (including any future
rents, issues, profits, and proceeds of that
property) is hereby transmuted from his separate property to the community property
of both parties.”25 As noted in the decision,
the agreement’s statement of intent provided:
“‘This is a joint trust established by the settlors in order to hold community property of
the settlors, which community property was
created by the transmutation of separate
property of settlor Frank G. Holtemann concurrently with the execution of this trust
instrument.’”26
At the bifurcated trial on the validity of
transmutation agreement, the trial court
found that under express terms of the agreement, the husband had transmuted his separate property to community property. The
husband appealed. The question before the
appellate court was whether the transmutation agreement and the trust were sufficient
to establish the husband’s express intent to
transmute his separate property to community property, as contemplated by Section
852, given the fact that language in both
documents indicated that they were executed
solely for estate planning purposes. The court
observed: “‘In deciding whether a transmutation has occurred, we interpret the written
instruments independently, without resort to
extrinsic evidence.’”27
The court found that the transmutation
was valid. The agreement unambiguously
stated that “Husband agrees that the character of the property described in Exhibit
A…is hereby transmuted from his separate
property to the community property of both
parties.” The trust similarly provided that it
was created “in order to hold community
property of the settlors.” That community
property “was created by the transmutation
of separate property of settlor Frank G.
Holtemann concurrently with the execution
of this trust instrument. As the trial court
aptly noted, ‘[a] clearer statement of a transmutation is difficult to imagine.’”28
The Holtemann court distinguished this
fact scenario from the one presented in
Starkman. Unlike Starkman, in which the
word “transmutation” was never mentioned,
in Holtemann the word is stated repeatedly.
There can be no doubt that, with the advice
of counsel, the parties chose that specific
term of art.29 Regardless of the motivations
underlying the documents, the documents
contained the requisite express, unequivocal
declarations of a present transmutation.
Moreover, the documents reflected that the
husband was fully informed of the legal consequences of his actions.30
In 2009, another transmutation scenario
added a new wrinkle. In In re Marriage of
Lund,31 a husband and wife executed a document titled Agreement to Establish Interest
in Property in 2002, two years before dissolution. The agreement was executed concurrently with other estate planning documents,
including wills, which stated that all of the documents were integrated. The attorney who
drafted the agreement represented both parties. The recitals stated that at the date of
marriage, the husband owned property of
substantial value, the wife had assets of de
minimis value, and that the husband “for
estate planning purposes desires to convert said
separate property into community property.”32
One section of the agreement stated: “All
property, real and personal, of the parties
hereto, whether title thereto is held in the
names of one or the other of the parties or
both of the parties as joint tenants or otherwise, is the community property of the parties hereto, each having a present, existing,
and equal interest therein.” Another section
stated: “All of the property, real and personal, held in the name of Husband having
its origin in his separate property no matter
how received and/or earned, is hereby con-
that the motivations underlying the documents were irrelevant. The agreement made
it clear that all the property previously held
as the husband’s separate property was transmuted to community property on December
2002. The court stated: “It simply does not
matter that the agreement, the trust, and the
wills were all executed together as part of a
single ‘estate planning’ strategy.”35
The court’s key holding was that the ter-
deed. Application of Section 662 had not
been disapproved in prior family law cases.
After Valli, a spouse’s ability to rely on Section
662 to argue that property acquired during
marriage in one spouse’s name is presumptively that person’s separate property is in
doubt. The third way the decision impacted
family law is to confirm that Marriage of
Lucas38 is no longer good law on that portion
of its holding in which a motorhome acquired
In a dissolution, the spouse who has irrevocably
relinquished interest in the insurance policy now may
get a second bite at the apple if transmutation rules
have not been satisfied.
verted to community property of Husband
and Wife, and shall thereafter be the community property of the parties for estate planning hereto, each having a present, existing,
and equal interest therein.” Section E of the
agreement indicated that it was executed for
“estate planning purposes.”33
Concurrently with execution of the agreement, a trust that had been established by
the husband 12 years earlier was amended
and restated to add the wife as an additional
trustee and settlor as of the date of establishment of the trust. Three of the real properties at issue had been transferred to the husband, as trustee of the trust, prior to 2002, and
in 2002 one of the properties was transferred
to the husband and wife, as trustees of the
trust.
Finally, the trust provided: “Upon the filing of a petition for the dissolution of the marriage and/or separation by either Settlor, this
Agreement is automatically terminated without further notice to third parties and either
Trustee shall return to each Settlor the separate property they contributed to this Agreement not previously disposed of, together
with each Settlor’s share of the Trust Estate
which is community property. Upon the automatic termination, all dispositive provisions
of this Trust Agreement shall be null and
void other than returning the assets to the
rightful owners.…”34
The trial court held that the agreement was
ambiguous because of language in the recitals
and in section E of the agreement indicating
the agreement was executed for “estate planning” purposes as well as by the simultaneous execution of other “estate planning”
documents (the trust and the wills). The wife
appealed. The issue before the appellate court
was whether the husband transmuted his
separate real properties into community property by way of the 2002 agreement, which
was part of his estate plan. In interpreting the
transmutation statutes, the court determined
mination provision in the trust, which purported to automatically retransmute the property upon the filing of a dissolution petition.36
According to the appellate court, the husband made an express declaration in writing
of his unambiguous intention to transmute
all of his separate property to community
property as of the date he executed the 2002
agreement, notwithstanding its termination
provision.
The Effect of Valli on Community
Property
There are three ways in which the Valli decision has affected community property concepts. The first is that third-party transactions
are not exempt from the transmutation rules.
Although prior cases had referred to transmutation as interspousal transactions, no
case had specifically stated that third-party
transactions would be exempt. Valli addressed
that specific issue. Third-party transactions are
not exempt, at least in situations in which an
asset is acquired during marriage, titled in one
spouse’s name at the time of acquisition, and
paid for with community property.
The second way Valli has affected family
law is the application of Evidence Code
Section 662. In 2008, in In re Marriage of
Brooks and Robinson, the court relied on
Section 662 to find that a piece of real property acquired and titled in a wife’s name was
her separate property based on the title presumption contained in Section 662.37 The
issue arose in connection with a joined third
party who purchased the property from the
wife over her husband’s objections. The dispute was between the husband and the thirdparty buyer. The court, relying on prior family law cases, determined that the sale was not
an interspousal transaction, so transmutation rules did not apply. The court further
relied on the Evidence Code Section 662 presumption to support the view that the thirdparty purchaser was entitled to rely on the
during marriage and titled in wife’s name
was confirmed as her separate property based
on her husband’s failure to object.
It is noteworthy that the transmutation
statutes, the Family Code statutory community property joint title presumptions, and
statutory rights for reimbursement all arose
out of response to Lucas. Although the court
has neutralized the applicability of the Evidence Code title presumption, it has not necessarily eliminated the title presumption for
all purposes, although the concurring opinion advocated for doing so. The supreme
court has now defined a rule that transactions
between a spouse and a third party may be
subject to the transmutation rules.
The most obvious consequence of this
rule is how it might affect estate planning. In
Valli, the designation by the husband naming
his wife as both owner and beneficiary of a
policy on his life could be viewed as part of
an estate plan to keep proceeds from being
treated as part of his estate for estate tax
purposes. By characterizing the property as
community property and giving no consideration to title and ownership, the intended
purpose for obtaining the life insurance policy would be nullified.
Even in the narrow instance in which one
spouse intentionally and irrevocably relinquishes ownership to minimize taxes, transmutation may come into play if there is a dissolution. In a dissolution, the spouse who
has irrevocably relinquished interest in the
insurance policy now may get a second bite
at the apple if transmutation rules have not
been satisfied. These are difficult issues because in many cases, individuals or spouses
enter into an estate plan without considering
the consequences of divorce. Also, while one
of the stated reasons for adopting the transmutation rules was to eliminate the ability of
individuals to fabricate stories concerning
oral transmutation or to establish characterization of property by oral testimony or conLos Angeles Lawyer May 2015 29
duct, strict adherence to the transmutation
rules allows one party to possibly avoid
expressing his or her real intentions by deciding to remain silent and let the transmutation
rules govern.
There is another aspect to the Valli case
that affects estate planning. It was acknowledged in Valli that the premium payments
were paid with community property funds.
Although not addressed by the court in Valli,
the fact that the parties used community
funds to pay the premiums could have had the
effect of causing, in a situation like that of
Valli, a portion of the life insurance proceeds
to be included in a husband’s estate when he
dies even though he intentionally relinquished
ownership and control over the policy. This
is a potential pitfall. Better practice would be
to ensure that if parties intend to keep a life
insurance policy separate property, in addition to satisfying transmutation rules, the
parties must ensure that premium payments
are made from separate sources.
There now seems to be an inconsistency
in how title to property applies in family law
cases under the family law statutes. On the
one hand, if property is acquired in joint
forms, certain family law statutory rules
apply. Under Family Code Section 2581, the
property is presumed to be community property unless there is a signed writing to the con-
30 Los Angeles Lawyer May 2015
trary. However, pursuant to Family Code
Section 2640, to the extent separate property
is used to acquire or improve the property, the
person whose separate property is used is
entitled to dollar-for-dollar reimbursement
of his or her separate property without interest or adjustment for appreciation. On the
other hand, there is no comparable family law
statute addressing a situation where title
stands in one spouse’s name. In such a situation, the general presumption applies as a
starting point. In future cases in which similar situations arise, one argument might be
to consider a community’s right to reimbursement for funds expended as a remedy in
cases where property titled in one spouse’s
name during marriage is found to be separate
property.
Considerations for Estate Planners
The Valli case has many implications. With
regard to life insurance policies, designating
one spouse as an owner will not necessarily
establish the policy as that spouse’s separate
property. In order to confirm such property
as separate property, a written transmutation agreement would be required. Further, if
premium payments are being made, those
premium payments should be paid from separate property sources not community property sources. Otherwise, portions of the life
insurance proceeds may be included in the
decedent’s estate.39
Given the fact that Evidence Code Section
662 may have limited application, if any, in
the characterization of property in a family
law proceeding, creditors may now have
access to more property to collect community
debt. Property titled in one spouse’s name
does not necessarily mean that said property
is that person’s separate property. Until the
Valli decision, property titled in one spouse’s
name logically could be presumed to be that
spouse’s separate property. As a general rule,
community property is liable for a debt
incurred by either spouse before or during
marriage, regardless of which spouse has the
management and control of the property and
regardless of whether the one or both spouses
are parties to the debt or to a judgment for
the debt.40 So, it is possible that property
that married persons believe is separate property because of title will have possible creditor exposure for collection of community
debt. The holding may have an impact in
bankruptcy cases. At least one bankruptcy
case has cited Valli to support a finding that
a claim identified as an asset should be considered community property in the bankruptcy proceeding even if not specifically
identified as community property by the
debtor.41
The Valli case has extended the transmutation rules to more than just interspousal
transactions. One difficulty in this decision is
how it will affect expectations. In most situations, married individuals probably do not
consult with divorce attorneys before entering into property transactions. In its departure from prior transmutation cases, Valli
could affect estate planning and creditor
rights in future dissolution cases, and family
law practitioners should advise clients of
these implications.
■
1
See, e.g., In re Marriage of Benson, 36 Cal. 4th 1096
(2005); In re Marriage of Sonne, 48 Cal. 4th 118
(2010); In re Marriage of Green, 56 Cal. 4th 1130
(2013).
2 In re Marriage of Valli, 58 Cal. 4th 1396 (2014).
3 Id. at 1406 (citing In re Marriage of Barneson, 69 Cal.
App. 4th 583, 593 (1999)).
4 See In re Marriage of Weaver, 224 Cal. App. 3d 478
(1990) (Title presumption can only be rebutted by
clear and convincing evidence.). See also In re Marriage
of Brooks and Robinson, 169 Cal. App. 4th 176, 189
(2008).
5 See Recommendation Relating to Marital Property
Presumptions and Transmutations, 17 C AL . LAW
REVISION COM. REP., at 213 (1984).
6 FAM. CODE §852.
7 Estate of MacDonald, 51 Cal. 3d 262, 267 (1990).
8 Id.
9 Id. at 269-270.
10 Id. (citing People v. Black, 32 Cal. 3d 1, 5 (1982);
Watkins v. Real Estate Comm’r, 182 Cal. App. 2d
397, 400 (1960)).
11 MacDonald, 51 Cal. 3d 262.
12 In re Marriage of Haines, 33 Cal. App. 4th 277, 293301 (1995).
13 Id.
14 In re Marriage of Barneson, 69 Cal. App. 4th 583
(1999).
15 Id.
16 In re Marriage of Starkman, 129 Cal. App. 4th 659,
662 (2005).
17 Id. at 662.
18 Id. at 664.
19 Id.
20 Id.
21 Id. at 665.
C
22 Id. at 664.
M
23 In re Marriage of Holtemann, 166 Cal. App. 4th
1166 (2008).
Y
24 Id. at 1170.
25 Id.
CM
26 Id. at 1170-71.
MY
27 Id. at 1172 (quoting In re Marriage of Starkman, 129
Cal. App. 4th 659 (2005)).
CY
28 Marriage of Holtemann, 166 Cal. App. 4th at 1173.
CMY
29 Id.
30 Id.
K
31 In re Marriage of Lund, 174 Cal. App. 4th 40
(2009).
32 Id.
33 Id. at 52.
34 Id. at 48.
35 Id. at 52.
36 Id. at 54.
37 In re Marriage of Brooks and Robinson, 169 Cal.
App. 4th 176 (2008).
38 In re Marriage of Lucas, 27 Cal. 3d 808 (1980).
39 See 26 C.F.R. §20.2041-1 (proceeds of life insurance).
40 FAM. CODE §910.
41 In re Lewis, 515 B.R. 591 (2014). See also 11
U.S.C.A. §363(i).
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ntertainment law issue
by JOHN W. CONES
SECURITY AND
INDEPENDENCE
The SEC’s Regulation D offers independent
filmmakers a means to raise funds, provided
antifraud and disclosure rules are observed
32 Los Angeles Lawyer May 2015
eign presales all rely on established industry
entities or entertainment banks to provide
financing. Investor financing generally relies
on individuals outside the film industry to put
up the financing (sometimes referred to as
alternative financing). In other words, if a film
industry entity gets involved in financing a feature film, it does not typically do so as an
investor. The people who do invest in independent films generally do not work in, or
have much knowledge or experience of, the
film industry.
On the other hand, it is not uncommon for
indie filmmakers to claim they know one or
more wealthy individuals who can invest the
entire amount of the budget required for
their film. Unfortunately, that rarely hap-
pens. Not to say it cannot happen or that it
will not happen in a particular practice, but
it is quite rare.
There are also several practical problems
with a single investor, or even a small group
of two or three investors, that an attorney will
want to discuss with indie filmmaker clients.
First, people who put up all or most of the
financing for a risky investment like a featurelength independent film tend to want something for their money. For example, they may
John W. Cones is a securities/entertainment attorney who practiced in Los Angeles for 23 years
advising independent feature film producers and
others on matters relating to investor financing of
feature film and other entertainment projects.
HADI FARAHANI
OFTEN, when independent filmmakers seek
to finance the development,1 production
and/or distribution of their films, by raising
money from investors—sometimes referred
to as equity financing—they are not aware
that they may be selling a security. Attorneys
and their indie producer clients can, however,
successfully negotiate this important area
of the law relating to investor financing,
specifically as it applies to independent film
offerings.
First, it is important to understand that
investor financing for independent films is
significantly different from traditional industry financing. The production-financing/distribution deal and the various forms of the
negative pickup transaction including for-
want a relative or personal friend to star or
appear in the picture. That may or may not
be appropriate for the filmmaker, but all of
the possible ramifications of such a decision
need to be discussed.
Secondly, single investors may want to
be actively involved in helping make many of
the important decisions associated with producing and distributing the film. If these
investors have little or no experience in filmmaking or film distribution, this could spell
disaster and may also expose active investors
to liability as well as raise tax issues.
Third, if both the filmmaker and the
investor want the investor to be actively
involved in helping to make the important
decisions associated with producing and distributing a feature film, and the investor does
not have knowledge and experience in the film
industry, the investor is really relying on the
expertise of the filmmaker and others associated with the filmmaking process. Thus,
the investor is a passive investor—not an
active investor—and the filmmaker has sold
a security, regardless of whether that was the
intention.2 Further, if the filmmaker made
no attempt to comply with the federal and
state securities laws (since the filmmaker did
not know he or she was selling a security), the
investor can, at any time along the way,
demand a full refund of the investor’s money,
and the filmmaker has no defense. That is, the
filmmaker sold the investor a security, took
the investor’s money, and made no attempt to
comply with the federal and state securities
laws. If the matter ever reaches a court, all the
investor has to do is prove these three elements of the case, and the burden then shifts
to the filmmaker to show that he or she did
comply with the federal and state securities
laws, which will be impossible to do after the
fact. This scenario also overlooks another
potential inconvenience: selling an unregistered security is a felony.3
One of the early important questions that
an attorney must ask the indie filmmaker
client, particularly when the client talks about
funding their entire film budget through one
individual or a few wealthy people, is whether
the filmmaker wants the investors to be active
or passive. If the client says he or she wants
the investor(s) to be active, the attorney will
need to discuss the legal requirements for an
active investor4 along with the other practical
problems. If the client wants the investors to
be passive—a larger group of passive investors,
typically more suited to a creative venture
like a feature film—then the attorney will
need to discuss compliance with federal and
state securities laws.
Promissory Notes
There are still a few entertainment attorneys
in Los Angeles who erroneously believe that
34 Los Angeles Lawyer May 2015
allowing the filmmaker to sell contingent
promissory notes avoids the necessity of complying with the securities laws. Whenever
repayment of the promissory note is contingent upon the film’s earning money (i.e., the
loan is to be repaid out of the revenue stream
of the film), that promissory note is in fact a
security, and the securities laws still need to
be observed.5 If not, the investor can successfully demand a full refund along with, in
some situations, attorney fees and damages.6
Filmmakers may tell their attorneys that
they have never heard that raising money
from investors involves the securities laws,
which may be true due to the fact that film
schools across the country choose not to prepare their graduates for the business side of
independent film. Nonetheless, the vast majority of these investor-financed independent
films actually do involve the sale of a security,
and it serves the interests of filmmakers to
educate themselves.
If the filmmaker-client finally admits that
he or she prefers to raise money from a group
of passive investors, because of not wanting
to deal with the problems associated with
either active investors’ telling the filmmaker
what to do or finding one or more investors
who legally qualify as active investors, the
next issue the attorney will want to raise
with the indie filmmaker client is whether
the filmmaker wants to pursue a registered
(public) offering or an exempt (private placement) offering. Once the client realizes he or
she is selling a security, the first general rule
of compliance is that the security be registered
with the SEC and with the state securities regulatory authority in each state in which the
filmmaker intends to raise money from
investors. For indie filmmakers, the general
rule of a registered offering is rarely observed
because these offerings are too complicated,
expensive, and time-consuming. Furthermore,
registered offerings for independent films
have rarely been mounted in the United States
in the last 25 years, and in each case, the
offering failed to raise the financing sought.
So, a private placement offering is the preferred approach.
Reference to an exempt offering does not
mean that the offering is exempt from all
rules. It is simply exempt from the registration requirement. However, an exempt offering must comply with a different set of rules
than those of a registered offering. The filmmaker must comply with all the conditions
and limitations imposed on the use of a given
exemption, or the filmmaker and the offering
will not qualify for the exemption, once again
leaving the filmmaker in the position of having sold an unregistered security. To make this
area of the law even more difficult, there are
a number of different exemptions at both
the federal and state levels on which to rely,
each with a different set of rules. Thus, even
though the filmmaker now recognizes that a
security is being sold, and that a registered
offering is not being conducted, if the filmmaker does not know which exemption from
registration is being used, it is quite unlikely
that such a filmmaker will come anywhere
close to complying with all of the conditions
and limitations imposed on the use of that
exemption.
Some entertainment attorneys report on
their websites that the federal intrastate
exemption7 should be considered for independent film offerings. The intrastate exemption, however, is really intended for offerings that raise, spend, and earn most of their
money in the local state. Since filmmakers typically want their films to earn money all over
the world, the intrastate exemption is generally not appropriate for a film offering.
Regulation D
Other practitioners recommend reliance on
Section 4(a)(2) of the 1933 Securities Act,8 the
original nonpublic offering exemption.
Unfortunately, there is so little detail regarding how an issuer is supposed to comply with
this exemption that it becomes a risky endeavor. That is precisely why the SEC came
up with Regulation D in 1982.9 Regulation
D is intended as a “safe harbor” for businesses
that want to safely offer securities, since it provides more detailed guidance regarding how
to comply.
Regulation D originally offered three separate exemptions, but not all of these are
that useful. For example, the general rule in
securities law compliance is that the issuer
must comply with both federal and the applicable state securities laws (dual jurisdiction).
The Rule 504 exemption10 under Regulation
D for offerings of $1 million or less might
appeal to low-budget filmmakers, but this
exemption is not recognized by the states, and
thus the filmmaker relying on Rule 504 would
have to conduct a registered offering at the
state level, which is not practical.
The Rule 505 exemption11 of Regulation
D allows the issuer to raise up to $5 million,
but the added burden of dual regulation is
still applicable. The issuer’s attorney will
have to identify the specific state level exemption being relied on in each state, and add certain legends and purchaser representations to
the private placement offering memorandum (PPM).
Rule 50612 is the single most popular federal exemption under Regulation D for small
businesses generally and independent film
offerings specifically. The Rule 506 offering
is considered a national offering, and, pursuant to the National Securities Improvement
Act of 1996,13 it preempts state jurisdiction
except for notice filing purposes.14 Thus, the
securities disclosure document—the PPM—
does not need to include the purchaser representations and legends for each state in
which the securities are to be offered.
The traditional Rule 50615 offering exemption allows issuers of securities to raise
money from an unlimited number of accredited investors16 and up to 35 nonaccredited
investors, so long as no advertising or general
solicitation occurs. Practically speaking, that
means certain persons within the issuer group
must have a preexisting relationship with
each of the prospective
investors.17
In 2012, Congress
helped to create an alternative Rule 506 offering
exemption by passing
the Jumpstart Our Business Startups Act (JOBS
Act).18 The SEC promulgated its final rules that
eliminate the prohibition
against general solicitation and general advertising in certain Rule 506
offerings that are made
to accredited investors
only, so long as the issuer
takes specific steps to
confirm the accredited
investor status of each investor.19 This new exemption is referred to as
Rule 506(c), and the traditional Rule 506 offering is now Rule 506(b).
Thus, another early discussion the attorney will
need to have with the
indie film client is to
determine whether to
raise money from both
accredited and nonaccredited investors with
whom they have a preexisting relationship or whether to conduct a
general solicitation to accredited investors
only, taking the extra steps necessary to confirm the accredited investor status of such
investors.20
This decision will also determine the level
of disclosure that is required in the PPM that
must be given to each prospective investor
before investing. The Rule 506(b) offering (if
made to nonaccredited investors) requires
what may be referred to as full disclosure, similar to that of a public (registered) offering. An
offering like that of Rule 506(c) imposes no
specific disclosure requirements because it is
only being made to the more wealthy accredited investors—emphasis on the word “specific.” This does not mean there are no disclosure requirements, merely that there are no
specific disclosure requirements. And the minimum disclosure rule21—the SEC’s antifraud
rule—applies to all securities offerings, including those to accredited investors only.
The SEC’s antifraud rule requires that all
material information regarding the offering
(i.e., everything that any prospective investor
would reasonably need to know before investing in the deal) be put in writing—disclosed
in a PPM—and given to each prospective
investor before he or she invests. Further, the
antifraud rule requires that no material infor-
mation relating to such an offering be omitted (i.e., a material omission) and that everything disclosed in the PPM be stated in a
manner that is not misleading. Significant
failure to comply with the antifraud rule may
result in a charge of securities fraud. Again,
the SEC’s antifraud rule applies to all securities offerings.22
Disclosure
As a consequence, attorneys may disagree
about how much and what specific information needs to be disclosed in such offerings to
prospective investors. In practical terms, this
level of disclosure decision comes down to
how much risk exposure the attorney and
client want to assume for themselves. As a
general rule, the more disclosure (consistent
with the antifraud rule), the less likely
investors will subsequently demand a refund
of their money or sue the attorney and client
because the client failed to disclose certain
information the investors felt was material.
The best practice is to come as close to full disclosure as possible for both Rule 506(b) and
(c) offerings. An independent film offering is
one of the riskiest of all possible investments,
thus it is important to take all necessary steps
to reduce the risk of a lawsuit. Moreover,
if the investor information is not in writing,
the task of mounting a
defense to a securities
fraud charge is much
more difficult.
Although there may
be some overlap in the
contents of such documents, a PPM is not the
same document as a
business plan or a pitch
deck. The PPM is used
to comply with the
securities laws in providing full disclosure to
prospective passive investors and is legally required in private placement situations. The
business plan may be
used to provide information to prospective
active investors (i.e., nonsecurities offerings) but
cannot legally be used
by itself without the
PPM to actually raise
investment funds from
passive investors. The
pitch deck, on the other
hand, is merely a PowerPoint presentation that
provides a quick overview of the film offering. It may be used in
making the presentation to prospective
investors but must be supported by the PPM
if offers are being made to passive investors.
Passive investors cannot legally invest in securities offerings until after they have had an
opportunity to review the PPM. The best
practice is to complete the PPM first, and if
a pitch deck or business plan is desired to supplement the PPM, take language in the PPM
that is already approved by the securities
attorney and use that in the pitch deck or business plan, so that both documents are consistent and comply with the law.
In 2013, the SEC also adopted a “badactor rule,”23 which disqualifies certain felons
and other “bad actors” from participating in
a Rule 506 offering, either (b) or (c). Thus, it
is important that the attorney representing
Los Angeles Lawyer May 2015 35
indie filmmaker clients in investor offerings
assist clients in conducting an adequate level
of due diligence with respect to the backgrounds of everyone involved in such offerings.
From a legal standpoint, financial projections are not required to accompany Rule
506 offerings under Regulation D; however,
investors tend to want to see them. So, it is
important that the attorney make filmmaker
clients aware the SEC has a policy regarding
financial projections and that, to the extent
that the filmmaker is offering a security, compliance with this SEC policy is necessary.24 In
essence, the SEC policy requires that the
assumptions25 underlying the projections be
set forth in writing and that these assumptions
be reasonable. Some of the proprietary companies that prepare film financial projections
for filmmakers for a fee tend not to want to
fully disclose their assumptions because it
allows others to understand how they calculated their projections. However, to fully
comply with SEC rules for such an offering
to passive investors, the policy needs to be
observed.
Section 181 and State Tax Incentives
As of this writing, the federal tax incentive
for certain films—Section 181 of the IRS
Code26—has not been extended by Congress
into 2015, thus it is no longer available to
serve as an incentive for investors investing
in film projects. A legislative extension was
introduced in June 2014 (H.R. 5771) and
was subsequently included in an omnibus
bill.27 That bill was signed into law by the
President—Public Law No. 113-295—on
December 16, 2014. Unfortunately, the Section 181 extension only lasted until December 31, 2014. However, 39 states and Puerto
Rico offer tax incentive programs for film production within their jurisdictions.28 These
include tax credits, exemptions, rebates, cash
grants, fee-free locations, or other perks.29 For
tax credits, a portion of income tax owed to
the state by the production company is
removed. Production companies must often
meet minimum spending requirements to
be eligible. Of the 28 states that offer tax
credits, 26 make them either transferable
or refundable. The cash rebates are paid to production companies directly by the state, usually as a percentage of the company’s qualified
expenses. Grants are distributed to production
companies by three states and the District of
Columbia. In some states, exemptions from
state sales taxes and lodging taxes are granted
to all guests staying more than 30 days. The
fee-free location incentive allows production
companies to use state-owned locations at no
charge.
Finally, concerning the issue of crowdfunding, it is important to distinguish between
donation-based crowdfunding (e.g., through
36 Los Angeles Lawyer May 2015
Kickstarter or IndieGoGo) and the investorcrowdfunding as contemplated by Congress30
but as yet not fulfilled by the SEC.31 Donation-based crowdfunding involves gifts and
does not involve investors; for most independent filmmakers, it offers a very limited
access to funding but still may be useful for
startup funds. On the other hand, Congress
has asked the SEC to develop final rules for
investor-crowdfunding, but the SEC has had
a difficult time doing that because of the conflicting interests of securities issuers and
investors, along with the significant potential
for abuse. In addition, the congressional mandate itself has placed severe limits on the
ability of the SEC to create rules that are not
overly burdensome to issuers. Investor-crowdfunding at the federal level is not yet available,
and Congress may even need to revise its
legislative approach to make it possible. Some
states, meanwhile, have gone forward with
their own versions of investor-crowdfunding that may be used on an intrastate basis.
However, film projects may experience some
of the same problems as they would with
the federal intrastate exemption, since such
securities cannot be offered to persons who
are not residents of the same state.32
When independent film producers seek
financing, they should always remember that
the complex rules governing securities are
most likely at play. Therefore, any prospective filmmaker would be advised to seek
counsel that has the requisite expertise. Also,
practitioners should advise producers to recognize when a security is being offered and
to comply with the appropriate federal and
state securities laws.
■
1 The development phase of an independent film may
be financed separately from the production phase, and
funds for development (to cover the expenses associated with writing the script, creating a budget, attaching elements, or clearing the chain of title) may be
raised from investors.
2 See Defining the Active Investor, http://www
.filmfinanceattorney.com.
3 Under federal securities laws, specifically the
Securities Act of 1933, the mere offer to sell a security—unless there is an effective registration statement
on file with the SEC for the offer—can be a felony subjecting the offeror to a five-year federal prison term.
See §5(c) of the Securities Act of 1933, 15 U.S.C. §77e.
In addition, sales and deliveries after sale of unregistered securities is also unlawful. See §5(a) of the
Securities Act of 1933, 15 U.S.C. §77e. See also
CORP. CODE §§25540, 25541. Most states have similar provisions.
4 See “Defining the Active Investor” in the “Articles”
section of filmfinanceattorney.com.
5 John W. Cones, Hard Money—Legal Liabilities May
Arise for Independent Film Producers Who Rely on
Contingent Promissory Notes, LOS ANGELES LAWYER,
May 2010, at 26. This article also discusses and cites
the relevant court cases relating to the more technical
securities definitions used by federal and state law,
although the active/passive distinction serves this purpose quite well in most situations; after all, the passive
investor is the essence of the definition even for the U.S.
Supreme Court’s classic Howey case. See SEC v. W.J.
Howey Co., 328 U.S. 293 (1946).
6 CORP. CODE §25501.5.
7 See §3(a)(11) of the Securities Act of 1933, 15 U.S.C.
§77c.
8 §4(a)(2) of the Securities Act of 1933, 15 U.S.C.
§77d.
9 17 C.F.R. §§230.500-230.508.
10 17 C.F.R. §230.504.
11 17 C.F.R. §230.505.
12 17 C.F.R. §230.506.
13 National Securities Market Improvement Act of
1996, Pub. L. No. 104–290, 110 Stat. 3416 (1996).
14 The phrase “notice filing” refers to the requirement
that a specific form be completed and sent in a timely
manner to each state securities regulator in the states
in which the security is being offered (along with the
appropriate fee), as well as to the SEC, thus providing
notice that the client intends to sell securities to citizens
in those states.
15 17 C.F.R. §230.506(b).
16 17 C.F.R. §230.501.
17 See Rule 3a4-1 of the General Rules and Regulations
promulgated under the Securities Exchange Act of
1934 (Associated Persons of an Issuer Deemed not to
be Brokers, also known as the Issuer Sales Rule).
18 Jumpstart Our Business Startups Act (JOBS Act), Pub.
L. No. 112–106, §201(a), 126 Stat. 306 (2012).
19 SEC Release No. 33-9415 (Sept. 20, 2013), 17
C.F.R. pts. 230, 239, 242, Eliminating the Prohibition
Against General Solicitation and General Advertising
in Rule 506 Offerings.
20 Id.
21 See §10b of the Securities Exchange Act of 1934, 17
C.F.R. §240.10b-5.
22 17 C.F.R. §230.500, Preliminary Note 1.
23 SEC Release No. 33-9414 (Sept. 20, 2013), 17
C.F.R. pts. 200, 230, 239, Disqualification of Felons
and Other “Bad Actors” from Rule 506 Offerings.
24 Id.
25 Assumptions are the circumstances that are assumed
to be factual for purposes of projecting the hypothetical results of the investment.
26 I.R.C. §181.
27 H.R. 5771, 113rd Cong., 135 Cong. Rec. S68986903 (2014) (enacted).
28 Connecticut, Idaho, and Oklahoma provide film
production incentives; however, incentives programs
in these states have been suspended, or funding has
not been provided. The National Conference of State
Legislatures provides a chart detailing the specifics of
film incentive programs in the 50 states. The state
names also contain links to state film offices and
commissions. For full details on eligibility and requirements, the state’s film office should be contacted.
Other online sources of information re state film tax
incentives include the Association of Film Commissioners International, Film Production Capital,
Cast and Crew Entertainment Services and Media
Services.
29 William Luther, Movie Production Incentives:
Blockbuster Support for Lackluster Policy, 173 TAX
FOUNDATION 4 (Jan. 2010), available at taxfoundation
.org.
30 JOBS Act, Pub. L. No. 112–106, §201(a), 126 Stat.
306 (2012).
31 SEC Release Nos. 33-9470; 34-70741 (Oct. 23,
2013), Proposed Rules.
32 States with intrastate crowdfunding laws include
Alabama, Colorado, Georgia, Idaho, Indiana, Kansas, Maine, Maryland, Michigan, Minnesota,
Tennessee, Texas, Washington and Wisconsin;
see http://crowdfundinglegalhub.com/2014/06/25
/state-of-the-states-list-of-current-active-and-proposed
-intrastate-exemptions/.
by the book
REVIEWED BY PAUL S. MARKS
Clearance & Copyright
The target audience for Clearance &
Copyright comprises the clearance
professionals who vet scripts, advertisements, movies, television programs,
and the like—those who police the
potential infringement of anyone else’s
intellectual property. But the book—
now in its robust new fourth edition—
offers much more to the legal industry. Clearance & Copyright is one of
those rare legal publications that combines expert knowledge and advice
with fascinating real-life illustrations
and anecdotes, spun together in an
By Michael C. Donaldson and elegant and witty writing style. If ever
a legal how-to book could be called a
Lisa Callif
Silman-James Press, 2014
page-turner, this is it.
$45.00, 557 pages
Here, for example, is how the authors, veteran entertainment lawyers
Michael Donaldson and Lisa Callif, describe the holding in Desny v.
Wilder, a seminal case in which the California Supreme Court recognized implied contractual rights—regardless of the application of
copyright law—when an author and a producer have reached an
understanding that the producer will pay compensation to use the
writer’s idea:
What a mouthful! What a case! The courts recognize that writers are not truffle pigs, sniffing out good stories and bringing
them to the attention of others, only to have the stories snatched
from them by those who would use them and grow rich.
There is nothing dry about the authors’ prose style; lighthearted
commentary and clever turns of phrase populate almost every page.
And, while the book is primarily geared toward the interests of filmmakers and other producers, the “truffle pig” quote (and others) show
that the authors have a warm place in their hearts for the rights of
authors and other content creators who deal with production companies. The narrative as a whole is well-balanced, providing practical advice to all stakeholders in the entertainment industry.
One useful aspect of this advice is the inclusion of detailed contracts, applications, and other documents that can be used as templates
by the professionals who consult the book. These supplemental
materials cover a wide range of topics, such as work-for-hire agreements, composer agreements, copyright and insurance applications,
license agreements, and more. Many of the forms offered are downloadable from government websites and other sources, while more specialized forms, including industry-standard contracts, are available
free of charge by sending an e-mail a website that the authors have
created.
In addition to understanding how to keep the reader engaged with
a lively writing style, the authors recognize that a book about the
visual arts—primarily film and television, as the book’s subtitle
38 Los Angeles Lawyer May 2015
declares—would suffer without a visual component. After all, biographies of, say, Beethoven and Mozart are necessarily incomplete and
unsatisfying if the reader lacks immediate access to the composers’
musical compositions as performed. The fourth edition of Clearance
& Copyright cures this type of shortcoming by introducing dozens
of internet links to movie and television clips that illustrate many of
the reported cases discussed in the book. The links are easy to find
and use, and the film clips themselves are presented purely, in their
original form, without taint of advertisements, pop-ups, or other extraneous matter. The links increase comprehension of the complex legal
rules governing copyright, and especially the fair use defense, while
at the same time helping to make sense of many seemingly contradictory case outcomes.
The authors teach that trademarks may need to be cleared as
well, but to a lesser extent than copyrights. The chapter on trademarks
begins with an interesting historical digression on the oldest continuously used trademarks that are still in use today (a 1366 mark for
the Belgian beer Stella Artois being the winner). As with their treatment of copyrights, the authors regale the reader with example after
example of trademark use in film and television, and the stories behind
the story. Some cases in point: the popular film Drop Dead Gorgeous,
which was originally named Dairy Queens—until the owner of the Dairy
Queen trademark sued and won an injunction, and Anheuser-Busch’s
unsuccessful efforts to squelch Denzel Washington’s abuse of Bud
Light in the film Flight.
Insurance Coverage
One example of the wide net the authors cast on the practice of clearance is the frequent reference to insurance issues. It is a legal urban
legend that intellectual property disputes can never be subject to
insurance coverage, and the authors provide specific examples of the
actions they have taken, as practicing lawyers, to ensure that their
clients have the best chance for insurance coverage in case of potential clearance disputes. They even take the reader step-by-step through
an application for an errors and omissions policy.
Some hopes for a future fifth edition of Copyright & Clearance
include an upgrade to the internet film clips, through the addition
of more detailed subtitles or other references to the issues being illustrated. And while the back of the book does contain a table of cases
with legal citations, there are no footnotes or endnotes, so the
reader needs to do some hunting and pecking to be assured of getting to the correct legal citation for the case described in the text.
Clearance & Copyright provides the novice with a superb, highly
readable introduction to copyright and trademark law, and the skilled
practitioner with valuable advice on day-to-day clearance issues,
from two experts in the field. This book will be a welcome addition
to the library of any intellectual property lawyer.
■
Paul S. Marks is a partner with the Neufeld Marks law firm in Los Angeles and
is a former chair of the Los Angeles Lawyer editorial board.
47th Annual Family Law Symposium
ON SATURDAY, MAY 2, the Family Law Section and the Los Angeles Superior Court
will host the 47th Annual Family Law Symposium. Many distinguished family law
judges and practitioners will offer a program on the important money issues that
appear in cases, including current IRS civil and criminal procedures and
enforcement regarding unreported income and assets, how to deal with complex
cash flow issues for support and postseparation accounting, how to work with
accounting experts, and a step-by-step approach to business valuations. The
program will take place at the Universal City Hilton, 555 Universal Hollywood Drive
in Los Angeles. Parking by hotel valet costs $16 and self parking costs $11. On-site
registration and breakfast will begin at 8 A.M., with the program continuing until
4:45 P.M. A reception and mixer will immediately follow in the Club Room. The
registration code number is 012375.
Free—family law judicial officers in Los Angeles County
$125—CLE+ members
$240—Family Law Section members and other family law judicial officers
$265—LACBA members
$300—all others
6.5 CLE hours, including 6.25 hours of family law legal specialization credit
Advanced Mediation
Skills Practicum
ON MAY 28, 30, AND JUNE 4, the Center
for Civic Mediation will host a program
offering extensive practice and coaching
in advanced mediation skills. Those
who attend will receive nine hours of
lecture and nine hours of role-playing,
observation, coaching, and feedback.
Lecture topics include assessing the
conflict, consensus building, problemsolving, managing multiparty agendas,
legal ethics, distributive and integrative
bargaining, and using case studies from
a range of areas of law (e.g. personal
injury, employment, contracts, real
estate, and property). The advanced
practicum aims to develop more
advanced skill sets for practitioners as
well as an understanding of key
Introductory TAP (i-TAP)
elements, principles, and strategies in
BEGINNING TUESDAY, MAY 5, Trial Advocacy and the Litigation Section will host a
program on the evenings of May 5, 7, 12, 14, 19, and 21 from 5:30 to 8:30 P.M. in one in a
series of courses offered by LACBA’s Trial Advocacy Project (TAP). Designed specifically for
attorneys who have little or no trial experience, this course provides introductory trial
advocacy instruction, mock trial performance, and constructive feedback. Participants
learn to mark exhibits, lay evidentiary foundation, deliver opening statements, conduct
witness direct and cross examinations, and deliver closing arguments. The course
instructors are seasoned trial attorneys. Successful completion of this course meets the
prerequisites for admission to LACBA’s five-week traditional TAP course taught annually
in the fall. Completion and certification from Traditional TAP qualifies participants for a
pro bono practicum with a local prosecutorial agency trying criminal cases. Written
course materials will be distributed via e-mail prior to the first class, so a correct e-mail
address at the time of registration is needed. The program will take place at the Los
Angeles County Bar Association, 1055 West 7th Street, 27th Floor, Downtown. On-site
registration and dinner will be available at 5:00 P.M. Parking is available at 1055 West 7th
Street and nearby lots. The registration code number is 012418.
$995—LACBA members
$1,195—all others
16.5 CLE hours, including 1 hour in ethics
mediation. Prior mediation training is
required for this course, which will take
place at the Los Angeles County Bar
Association, 1055 West 7th Street, 27th
floor, Downtown. Parking is available at
1055 West 7th and nearby lots. On-site
registration will begin at 8:30 A.M., with
the program continuing from 9 A.M. to 4
P.M. each day. The registration code
number is 012602.
$435—Center for Civic Mediation
associates
$465—LACBA members
$515—general price
18 CLE hours, including 3 hours of
ethics and 1 hour of elimination of bias
The Los Angeles County Bar Association is a State Bar of California MCLE approved provider. To register for the programs
listed on this page, please call the Member Service Department at (213) 896-6560 or visit the Association website at
http://calendar.lacba.org, where you will find a full listing of this month’s Association programs.
Los Angeles Lawyer May 2015 39
closing argument
BY OWEN J. SLOANE
Aereo Shows What Attorneys Can Do to Advise Technology Entrepreneurs
For example, the Digital Millennium Copyright Act (DMCA)
A TECH ENTREPRENEUR is often more concerned with his or her idea
than the business of its development. This is understandable, given provides for a safe harbor for qualifying Internet Service Providers
the excitement that a good idea and the technological challenge of (ISPs) that comply with the detailed takedown procedures provided
implementing it generate, but neglecting the business aspects can be by the act. Lawyers representing ISPs need to be fully cognizant of
a costly mistake. This is especially true if the idea and technology are these requirements. Accordingly, if there is a possibility that a vendependent upon the use of content owned by others. Owned content ture can qualify as an ISP and the safe harbor would protect it from
includes music and audiovisual programming, photos, words, graph- copyright infringement liability, this should be investigated.
These safe harbors are useful when the venture is dependent
ics, drawings, and designs. Failure to provide for the legal use of someone else’s content if that use is central to the success of the venture upon third-party, user-generated content. If the venture is using concannot only cost the venture substantial amounts of money but also tent directly, it would be unwise to rely on a technological workaround
be destructive of the entire business.
The recent Aereo case is an example. Aereo,
a supplier of over-the-air broadcast transmisThese safe harbors are useful when the venture is dependent
sions via digital devices to subscribers, was
held to infringe the copyrights owned by television producers, distributors, and broadcastupon third-party, user-generated content.
ers in the programs that Aereo streamed. The
court’s decision essentially put Aereo out of
business unless it can qualify as a “cable systo avoid the requirement of a license between the venture and the contem” entitled to a compulsory license under the Copyright Act.
Some entrepreneurs who are aware of the legal risks of not clear- tent owner. The only safe way to proceed is to secure permission from
ing content have expressed a cavalier attitude to the problem. They the content owner. Many are willing to cooperate with entrepreneurs
say that they would rather have a successful business in operation first at the startup stage by not burdening the venture with large licensand deal with the legalities with content owners later. This, however, ing fees until the venture is successful. At that point, they expect to
places a lawyer representing such an entrepreneur in a vulnerable posi- be paid a fair price. It may be worth giving up some equity to secure
tion. In addition, while the business-first, litigation-second model may the content.
Another approach can be borrowed from the film industry. When
be a risk that some entrepreneurs are willing to take, in many cases
independent filmmakers consider licensing music for their films, they
the risk is too great to justify.
For example, in the case of copyright infringement, the civil penal- do not know whether the film will be successful or even secure disties can range from up to $30,000 for each infringement and up to tribution. Consequently, it is common practice to enter into synch
$150,000 per infringement for willful infringement. In a case in which licenses that involve “step deals.” The initial rights granted are for
the entrepreneur knows he or she is infringing but proceeds anyway, festivals, usually the first step. The license fees are minimal for this
willful infringement may be relatively easy to establish. The plaintiff type of usage. However, if the film receives theatrical distribution, there
may also be entitled to recover the profits of the infringer, plus attor- is an additional payment required to keep the license in effect. If the
ney’s fees and costs and an injunction that effectively puts the startup film reaches agreed-upon gross box office receipt amounts, an addiout of business. The cost of defending a copyright infringement law- tional license fee applies at each level. This model could be adapted
suit can be in the high six figures or greater, and if the infringer has to new technologies.
In addition to clearing content for infringement purposes, there
to pay the attorney’s fees of the other party plus damages as well, the
overall cost could be in the millions. In addition to civil penalties, the are other intellectual property issues that need to be dealt with, the
Copyright Act provides for criminal penalties with fines and jail time. earlier in the process the better. For example, use of photos of peoThere is no assurance that a claim can be settled with a content ple may violate their rights to privacy or publicity. Statements made
owner if the owner’s goal is to put the venture out of business. about people and products may constitute defamation even if they are
Napster was destroyed by litigation, as were a number of other tech made by third parties and republished or broadcast by the venture.
startups. Unless investors are sufficiently experienced and are advised There are ways to avoid running afoul of these legal problems with
in writing, up front, of the risks of not clearing content, the entre- proper planning. Sweeping all of these legal land mines under the carpreneur may also face lawsuits from investors. Consequently, it is advis- pet is usually not a smart way to start a business, and it can subject
■
able to seek agreements at the startup stage with content owners whose lawyers to liability.
content is essential to the success of the venture. An attorney for an
entrepreneur should advise the client as to how to avoid infringing Owen J. Sloane practices entertainment and new media law at Eisner Jaffe in
content by using statutory provisions that provide for safe harbors. Beverly Hills.
40 Los Angeles Lawyer May 2015
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