June Issue 2001
Copyright Basics and the Visual Arts - Things Every Artist Should Know - A Beginning
by M. Jordan Denning
Introduction
What follows is a simplified overview of copyright law and its application to the visual arts, and subsequently to the visual artist. It is my hope that this information will prove informative and beneficial to visual artists of all mediums.
The nature of copyright is to encourage the creative efforts of authors, artists, and others by securing the exclusive right to reproduce work and derive income therefrom. Copyrights arise automatically once an original effort has been started and some aspect of it has been fixed in a tangible medium (including computer work--code). Notice of copyright is not even required on published copies, and registration is only required if legal action is warranted. However, giving notice and promptly registering works provides an invaluable remedial defense measure under US law. The advantages of prompt and proper registration are many, and they are explained more fully below, along with basic limits to copyright protection, the issues to be considered in transferring copyright interests, and the fundamental distinction between works which are "for hire" and those that are not.
Limits to Copyright Protection
Copyright gives the owner of a work the right to sell or distribute that work. A good example of this arises in the context of one person's drawing of another's painting. Although the drawing is most likely protected by copyright, it could not be sold without the express permission of the owner of the copyright in the original painting. Other restraints on the right to sell a work arise from various obscenity, privacy, and publicity rights with regard to the specific persons and places so depicted.
The Fair Use doctrine acts to permit partial or limited reproduction of another's work. This doctrine is usually more forgiving where the intended use of a work advances public interest, such as use in an educational setting. The parameters of copyright protection are perhaps best defined in terms of the notion that "expressions", not "ideas", are "protected". What this means, to use an easy analogy, is that the author of a book may have protection for his or her words, but not for the plot. Or, a photographer has protection from the duplication of his picture of a mountainside, but certainly not from other people taking pictures of that same mountainside. Another limitation to keep in mind is that one cannot prevent others from using industrial processes, or other recipe-like ideas, simply by writing them down. This sort of protection is best obtained under trade secret and patent law.
In the world of copyright protection, "utilitarian",
"three-dimensional works" are "excluded".
While this may be a seemingly arbitrary characteristic, in the
United States such works are specifically provided for under design
patents. To the extent that a work includes components serving
no end other than aesthetic, copyright protection will be available
for these components separately. Therefore, while copyright protection
will be refused, for instance, for most table or floor lamps,
the fact that a piece of sculpture had been turned into a lamp
will not serve to negate the protection normally appropriate for
a free-standing sculpture. Hence, works such as urns, vases, lamps,
etc., may qualify for copyright protection. As will usually be
the case, though, the best way to find out is to attempt to register
the work. If the Copyright Office okays a registration, most courts
will follow suit.
If copyright registration is denied, design patent protection
may be available in the alternative. This presents a more expensive
and extensive means of protection, but is also a prime example
of the theory that you get what you pay for. In a similar vein,
independent creation is permitted. Independent creation refers
to the scenario where a second work, identical to an earlier copyrighted
work, will not be held to infringe if it is, in fact, independently
created. This becomes a somewhat challenging defense to raise
in relation to the popularity of the first work. In comparison
to a widely recognized first work, it obviously becomes more difficult
to claim that the second work was "independently created."
Copyrights Extended
Many do not realize that no formalities are
necessary to obtain copyrights. Certain kinds of works are protected
by copyright as soon as they are fixed in a tangible medium, whether
that medium is perceptible by human senses or not. Although notice
of copyright is not required, it is certainly prudent. In the
United States, notice of copyright serves to eliminate the copier's
potential defense of having no knowledge he/she was infringing.
Other nations require such a notice, and still others require
an additional, "All Rights Reserved" statement to be
included on the work. Therefore, especially where such text does
not interfere with the artistic integrity of a work, copyright
owners should make every effort to incorporate notice into published
copies of their work. Doing so will most often also automatically
secure copyright protection, if such is even recognized, in countries
governed by international treaties.
In the United States, registration is necessary for a copyright
owner to enjoin, or to recover actual damages suffered from, the
unauthorized use of a work. Statutory damages of up to $150,000,
as well as attorneys fees, can be obtained if works are promptly
registered. In the case of an unpublished work, registration must
occur prior to the allegedly unauthorized use, whereas in the
case of a previously published work, registration should be completed
within three months of first publication.
The Mechanics of Copyright Registration
Whether one chooses to register or not, copies of most copyrighted works published in the United States must be deposited with the United States Copyright Office, Washington, D.C. 20559. There are, of course, a variety of exceptions to this deposit requirement. For instance, and perhaps most relevant to this audience, an exemption exists for "pictorial, graphic, or sculptural" works. The Copyright Office website (http://lcweb.loc.gov/copyright/) should be referred to for most questions of whether to deposit, but may be particularly useful in the context of a work which is a composite of art elements and text, or the art is distributed only in machine readable form. Regardless, sanctions for failure to deposit a work are not actually imposed until a copyright owner fails to respond to an official demand for copies of the work.
Registration itself is a relatively straightforward and inexpensive proposition, especially when compared to the time and expense needed to obtain, in comparison, patent protection. Simple forms, containing basic instructions geared to everyday people, may be quickly and easily obtained directly from the Copyright Office. Registration is then executed simply by returning the form (a "VA" form for works of visual art), along with a $30 registration fee and copies of the protected work or other materials identifying the work.
Deposit copies, as mentioned earlier, are not normally required for works of visual art, but registration does require the deposit of "identifying material." For example, and most typically, one might send a photograph of a large and unique sculpture or equally extensive lithograph. These, and other more detailed requirements, can be found on both the Copyright Office website and in Section 202.20 of Title 37 of the Code of Federal Regulations. Further, Section 203.3 of Title 37 allows a single registration of an unpublished collection to suffice to cover works that might, or could, otherwise be registered individually. Requirements for such "collective" registration include having at least one author in common or bearing a single title identifying the whole as a series or unit. Per usual, however, before taking advantage of this provision one should inquire into the position of the Copyright Office in the event some of the individual items are later separately published.
Deciding Whether to Register
Before marketing, reproduction, and sale, free-lance artists need to decide whether to register a work. Since registration is not necessary to have copyrights, prudent selection of business partners is likely to prove far more cost-effective than running the risk of potential copyright litigation. There is also the notion that many publishers, for a variety of policy reasons, prefer that works not be registered prior to publication. Changes in the law have served to limit this practice somewhat, as publishers no longer need to satisfy separate notice requirements on each story, cartoon or other free-lance contribution to a particular work.
The bulk of reasons, though, have not been
eliminated, and many of these work to the advantage of the potential
submitter. For one, if a publisher transfers copyright back to
contributors after publication and registration, one registration
will cover all. Of course, the particular policies of each publisher
should be explored in advance of making any submission.
While the typical entrepreneur-artist will reproduce and sell
his or her own works, as opposed to using an agent or other intermediary,
they too need to decide whether to register them. Although registration
costs little and copies may not be required for deposit, expenses
can quickly mount when each item is inexpensive, runs are short,
and several items cannot be registered as a unit (for the reasons
mentioned above). Given the fact that registration is really only
necessary upon actual infringement and makes it possible to enjoin
unauthorized use or to collect actual damages (lost sales, for
example), the question becomes whether the additional remedies
afforded for prompt registration are, on balance, worth the cost.
Works for Hire
Copyrights in works of regular employees are presumed to be owned by their employers. Therefore, in the absence of an agreement to the contrary, employers own all rights in works created within an employee's scope of employment. In contrast with employees, free-lance artists and entrepreneurs are ordinarily presumed to own copyright in their work even though there is only copy, and that copy is sold. However, a party commissioning a work might still insist that it be "for hire"---especially if it contributes to a still larger work. If this understanding is both in writing and the work itself can be classified under the definition of "work for hire" as it is stated in § 101 of the copyright statute, then both the work and any copyright in it are owned by the party who commissioned it. This is startling news to many artists.
A few very important legal issues arise in
the context of works for hire. The first is that of "ownership".
As between those who own copyrighted works made for hire and the
artists who actually create them, the latter have no more rights
than an absolute stranger would. This, again, usually comes as
a shock to many artists. Freelance artists in particular must
carefully consider what they may be giving up by allowing commissioned
works to be regarded as for hire, and in the alternative should
take measures to ensure that they are not.
The term of copyrights in particular works raises another issue
to be aware of. Rights in works for hire span 120 years from the
date of creation or 95 years from the date of publication, whichever
is shorter. The terms for other works, in the case of identifiable
artists, extends for that artist's lifetime and 70 years beyond.
In the case of joint works, copyright will endure for 50 years
beyond the death of the last surviving contributor.
Copyright transfers may revert. Rights in a work not for hire will revert back to the artist or the family of a deceased artist after approximately 35 years. This will occur even if copyright has been unconditionally sold or licensed to another. While these allotted times obviously exceed the "market life" of most works, the determination of whether a work is one for hire is a matter easily resolved at the time of transfer. This is an issue that should be dealt with particularly carefully in situations of families with more than one living artist.
Licensing Rights
Although assignments and licenses may be of most interest to free-lance artists and authors who are not dealing on a bottom line take-it-or-leave-it basis, entrepreneurs will have occasion to consider licensing others the right to reproduce a particular item. In transferring copyright to others, the following issues need to be addressed and resolved in advance. As always, "get it in writing".
Eight very important questions that must be
answered prior to making transfers:
1. In cases of a commissioned work, is it or can it be regarded
as "for hire" in any way?
2. If not, what are the details of the rights being transferred?
Are all rights being transferred, the right to first publication
only, a right to use or reproduce for any other limited purpose?
3. Does the publisher have any right to license others to use
any part of the work in or on the same or unrelated products?
What is the payment arrangement?
4. To what extent is the artist restricted? For example, what
are the restraints on the artist's ability to sell substantially
similar or infringing works?
5. If the artist is engaged in a long term business relationship,
what happens to the copyright if the publisher "loses interest"
or goes out of business altogether? Does the copyright at issue
revert, or does it simply stay put, unused, in the hands of the
uninterested?
6. How will payment be made? Hourly wages, lump sump, various
royalty provisions?
7. If royalties are due, on what basis will they be computed?
Will it be per item or a percentage of gross sales? (A caveat
here is to avoid net sales or profits, as it becomes too easy
for the purchaser/licensee to manipulate the expenses allocated
to particular sales).
8. Has the publisher asked to be indemnified for expenses of defending
third party suits? While this is a common request, it is not one
to be taking lightly in today's affinity for the gratuitous lawsuit.
Even if you win a suit, expenses can be astronomical. Determine
whether you have a large enough stake to assume this risk.
Avoiding Copyright Infringement
At this point it should be clear that copyright
gives its owner the exclusive right to reproduce protected subject
matter (excluding facts and ideas). Quite naturally, the question
arises as to whether the second, similar work was copied or independently
created. The simple analysis looks to whether the person creating
the second work had access to the original work and the two works
are virtually identical. In such a case, copying is likely to
be presumed even if the chance of actual access to the first work
is remote.
When an artist sells its copyright in a given work, access is
not an issue at all if the same artist later creates a similar
work. To avoid later snags, it is vital that both artists and
purchaser of the copyright reach unequivocal agreement about such
matters. It is also important that artists understand that a work
does not have to be identical to infringe upon an earlier created
one. The legal standard of infringement is "substantial similarity."
This can be translated, for purposes of this article, into whether
an ordinary observer would recognize a work as copied in whole
or in part from an earlier one.
Similarly, the issue arises as to whether an artist may base a
painting on, for instance, a magazine photograph, even though
turning that same photograph into a postcard would clearly give
rise to infringement. These are the questions, and disputes, which
give rise to litigation in this arena. An artists is unlikely
to be sued for using a relatively small element from another work,
especially if it is used only for reference and is not copied
in detail (obviously one who photographs a forest scene does not
acquire exclusive rights in all trees vaguely resembling those
depicted there). As always, however, the safest approach is simply
not to copy unless you either have permission or are certain that
the subject is in the public domain (a relatively self-explanatory
concept not explored here).
The Role of Legal Counsel
While registering works should lead to little procedural difficulty, transferring copyright interests is an entirely different matter. Anyone either concerned or involved with the issues posed herein should promptly seek the advice of counsel knowledgeable in copyright and licensing law. Failure to do so is to risk giving away far more than you ever intended to, or to be subject to liabilities that you never anticipated. In terms of licensing deals, it is imperative to know exactly what one is getting into. Although a lawyer may not be able to immediately surmise whether a deal is economically advantageous or professionally fulfilling to the parties involved, those of us familiar with such contracts will be able to explain the underlying, short, and long-term implications of an agreement. The client-artist will be better armed to make a confident decision appropriate for him or herself.
M. Jordan Denning is an associate in the Charleston, SC, office of Moore & Van Allen, PLLC. He has significant experience in all aspects of copyright, trademark, and licensing law. Denning holds both J.D. and Master of Intellectual Property degrees from the Franklin Pierce Law Center in Concord, New Hampshire. He currently resides in Charleston.
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