Bo's bLAWg - Cost Benefit Analysis of Copyright Registration, and Derivative Works

MJ Bogatin (“Bo”) of Bogatin, Corman & Gold, is an Arts and Entertainment Attorney in San Francisco.  He is also a long-time President of California Lawyers for the Arts. www.calawyersforthearts.org. Bo is available to answer some of your questions surrounding the business of Art Licensing. - THANKS BO!

Dear Bo,
I have two questions if you don't mind. I am a casual print-on-demand artist for about eight years now. I have never registered my work for copyright.

1) Let's say I have about 100 designs published over time with about 30% of them actually sold through PODs. Am I understanding correctly that each design would now require a separate copyright at this late date? I do not know the dates of each uploaded image.

2) In the event I use the same design and change out the text in the picture do I copyright the design only or copyright each rendition including text? This question applies to color only changes too.

I bring in at most one to two thousand dollars of income a year. It seems like it is very costly for me to go back and copyright them at this late date. I currently don't license my work but have been approached several times over the years to consider it. I didn't have the time and knowledge back then but could be interested in the future.
“Anonymous”

Dear Anonymous,
First Q:   I agree that it is likely unduly expensive for you to individually register if you have in fact “published” your 100 +/- designs at different times, so would not be eligible to register them as a group such as “My Best Designs of 2016.”  You read last month’s bLAWg closely and are certain that the 70% that have never sold have in fact been ‘published”?  http://annietroe.blogspot.com/2017/06/bos-blawg-copyright-registration-of.html

As I mentioned last month, the designs must have been offered online or otherwise with the purpose to distribute copies to people who will license it for merchandise and further distribution.    If you have ‘merely’ displayed your designs online on your own website and not did necessarily specifically offered them to be licensed, some or all of the 70 might still be unpublished. And, as I mentioned last month, unpublished works can be registered in a group under a single fee if they are all yours alone.

Assuming that it is clear the 70 unlicensed designs were in fact clearly offered for licensed use, and they were not posted in groups that would qualify for registration together because they have the same publication date, then, to save money, I recommend that you focus on the designs that have been licensed.  It is likely that those designs will have broader public dissemination and thereby be more vulnerable to infringement. If a group of those 30 were licensed together, then they too could be registered as a group rather than individually.

Otherwise, pick and choose among the 30 as to popularity and quality and begin your registration efforts with those, since presumably, they are the ones that are most likely to be infringed, so you want the statutory benefits that accrue with registration before infringement for at least those.  Once you prevail on a copyright infringement claim, you may well be able to afford registration of all the designs you have ever created!

As for the changed designs, Q2, unless the text is sufficiently ‘creative,’ like an original poem, and not just a quip or caption, the short answer is yes, you would likely want to register the new work as appropriate. However, if the text you use are mere catchwords or phrases, mottoes, slogans, or short expressions, such verbiage is not eligible for copyright. 
(See https://www.copyright.gov/circs/circ34.pdf )

If the text is a new poem, but being used in conjunction with a previously registered image, it would be eligible for its own registration on the TX (text) application form, not as VA (Visual Art).

If you are just changing the color scheme to a previously registered design, I would say that you need not re-register the new color scheme.  Indeed, merely changing the color scheme is not likely eligible for a new registration as it lacks sufficient ‘new creative expression.’ 
(See https://www.copyright.gov/circs/circ34.pdf  ) 

It is interesting to note what the Copyright Office does offer as examples of derivative works of visual art that should be registered:
•  A sculpture based on a drawing;
•  A drawing based on a photograph, and
•  A lithograph    based    on a painting.

What all three of these have in common is that they truly transform the pre-existing artwork from one ‘medium’ to another.  Anything short of that level of transformation may not require a new registration.  What this means to me is that the new color version of your design has full copyright protection by the original registration, since it does not qualify for its own registration.

So, to the extent that this applies to a large number of your designs, maybe you can save some application fees after all!

Disclaimer: The information contained in this website is not intended as legal advice. Because the law is not static, and one situation may differ from the next, we cannot assume responsibility for any actions taken based on information contained herein. Also, be aware that the law may vary from state. Therefore, this website cannot replace the advice of an experienced attorney. Receipt of this information does not create an attorney-client relationship. MJ Bogatin, Bogatin, Corman & Gold, www.bcgattorneys.com
© 2017 mjbogatin 

Have a legal question? email it to info@AnnGraphics.com. I will forward it to Bo. It might be a blog post! You can search "Bo's bLAWg" to read more posts. I am looking forward to your comments and thanks for sharing this great information on social media.

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Bo's bLAWg - Copyright Registration of Published and Unpublished Works

 MJ Bogatin (“Bo”) of Bogatin, Corman & Gold, is an Arts and Entertainment Attorney in San Francisco.  He is also a long-time President of California Lawyers for the Arts. www.calawyersforthearts.org. Bo is available to answer some of your questions surrounding the business of Art Licensing. - THANKS BO!

Dear Bo, I just sold a new original painting (I also license my art on products). Is selling the original painting considered “publishing” it? I haven’t had a chance to copyright the image yet. I am hoping I can include it in a group copyright with several unpublished, un-sold images. If I add the new painting/image to a site like Pixels.com for print sales, is that considered “published”.  Thanks in advance, Bo! Terri

Good questions, Terri.  “Publication” is an important term in the Copyright Act.  You appear to be aware of the fact that as an Artist you can save a good deal on Copyright Registration fees if you can register multiple images together as a group, and that it is easier to group unpublished imagery than published imagery for registration purposes.

Before I answer your question about whether your sale of the original painting constitutes Publication under the Act, I want to address one particular in your email: “I haven’t had a chance to copyright the image yet.”  You most likely mean that you have not had a chance to register your copyright in the image yet.  However, not everyone knows that they ‘have’ a copyright in their image as soon as they have created it.  As long as the image has sufficient creative original material in it, it is immediately subject to a claim of copyright by its Author/Artist.  So, to be sure, you have a copyright already.  Registration adds specific important statutory protections for the benefit of the Copyright registrant.  (See http://annietroe.blogspot.com/2015/01/bos-blawg.html )

“Publication” is defined in the Act as “the distribution of copies of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication.”  (See the alphabetical definitions section of the Copyright Act: https://www.copyright.gov/title17/92chap1.html#106a )

So, there is a quick answer to your first question.  Yes, sale of the painting is deemed a “publication” under the Act even though you have not “published” it in a conventional sense by making copies and distributing them.

The more intriguing question these days is whether artworks posted online are deemed to have been “published” under the Act.  Interestingly, when you post online yourself, even though theoretically you are displaying your imagery to the whole world, the mere “display” of a work does not of itself constitute publication!  “Mere display” has been deemed to include showing your artwork in a gallery or museum as well.  It is only when the gallery sells the artwork, or the museum purchases it for its collection, is that artwork will be deemed to have been “published.”

When it comes to registration, one of the Application questions is when the artwork was first published.  If you are selling your works individually, and not registering them prior to sale, then they likely will all have different publication dates.  That means separate registrations at $55 a pop.

However, it is possible to include multiple published works in a registration application if they were all originally published at the same time.  Circular 1 from the Copyright office says multiple published works can be registered as a group “if they are all first published together in the same publication on the same date and owned by the same claimant.” 
(See https://www.copyright.gov/circs/circ01.pdf page 8.)

Your recently sold artwork would not need to be registered individually if you actually published it prior to its sale as part of a group.  How might that have happened?  I’ll tell you.

You indicate that you list your artworks on pixels.com.  By posting the imagery at that website, if I am not mistaken, you are offering it with the purpose to distribute copies to people who will license it for merchandise and further distribution, right?  Well, that is specifically a kind of “display” that fits within the Copyright Act definition of “publication” (above).  So, if you were to post a bunch of previously unpublished images together on pixels.com for such purposes, then I think you would qualify for registering them all together since they share the same publication date.
 
Alternatively, you can register a group of unpublished artworks together for one fee as well.  These can be registered together as a “collection” if they satisfy all the following criteria:
1) The elements of the collection are assembled in an orderly form; 2) The combined elements bear a single title identifying the collection as a whole; 3) The copyright claimant or claimants for each element in the collection are the same, and 4) All the elements are by the same author or, if they are by different authors, at least one author has contributed copyrightable authorship to each element.  (Note: Works registered as an unpublished collection will be listed in the records of the Copyright Office only under the collection title.)

Hope this is helpful, Terri and that these tips save you a lot of registration application fees.  We give the Feds enough in taxes as it is! 

Disclaimer: The information contained in this website is not intended as legal advice. Because the law is not static, and one situation may differ from the next, we cannot assume responsibility for any actions taken based on information contained herein. Also, be aware that the law may vary from state. Therefore, this website cannot replace the advice of an experienced attorney. Receipt of this information does not create an attorney-client relationship. MJ Bogatin, Bogatin, Corman & Gold, www.bcgattorneys.com
© 2017 mjbogatin

Have a legal question? email it to info@AnnGraphics.com. I will forward it to Bo. It might be a blog post! You can search "Bo's bLAWg" to read more posts. I am looking forward to your comments and thanks for sharing this great information on social media.

 

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Bo's bLAWg - Copyright Term and Unpublished Works

MJ Bogatin (“Bo”) of Bogatin, Corman & Gold, is an Arts and Entertainment Attorney in San Francisco.  He is also a long-time President of California Lawyers for the Arts. www.calawyersforthearts.org. Bo is available to answer some of your questions surrounding the business of Art Licensing. - THANKS BO!

Dear Bo, I was in my mother’s attic and discovered a box of my Great Aunt's personal writings and illustrations.  It appears they date from 1880 and earlier to her death in 1925.  I don’t think any were published, but I do not know!   I would like to publish them.  You indicated in a prior bLAWg that works published before 1923 are in the Public Domain.  What about unpublished works from that date and earlier?  Thanks!  Teri

Good question, Teri.  The Term of copyright for never-published works does require a different analysis from that we use for published works.

Start with the contemporary Term:  the life of the author/artist plus 70 years.  Working backwards, if the author/artist died more than 70 years ago – before 1947 – then their unpublished works are in the Public Domain.  So, if you knew that none were published, we could conclude with certainty that all her writings and drawings are in the Public Domain (“PD”).

Had any been published, and the copyright registered as required under the 1909 Act, you will recall from my earlier bLAWg, that a registration in its Renewal 28-year Term 1923 through 1963 was granted a Term of 95 years after its original publication date.  So, were you able to determine that certain works were published, the 1923 rule applies.  Those published in 1923 would have their last year of copyright protection in 2018.  Works first published in 1924 would be protected through 2019, and those published in 1925 would lose protection as of January 1, 2021.  (See http://annietroe.blogspot.com/2016/09/bos-blawg-copyright-term.html )

I would add that there is a different rule for unpublished anonymous and pseudonymous works, and works made for hire (corporate authorship).  In the case of these, the Term is 120 years from date of creation.  So, had you found these materials but their author was unknown to you, it is quite possible that those works could still be subject to copyright protection.  It is just a matter of knowing when they were created.  As of this year, creation before 1897 would make them PD.

Here is an online Chart that addresses this Term information for both published and unpublished works:  http://copyright.cornell.edu/resources/publicdomain.cfm
 
Now, I want to say a few other things about works in the PD.  First, while you have an absolute right to use these works any way you want, anyone else who has access to them would have the same right of use.  Were you not to grant any third party access – or limit access to those who sign a Non-Disclosure Agreement with you – you could be the first to publish, and thereby have that advantage on any third party who might want to publish or make other commercial  use of them.  Even better, were you to publish them in a manner that includes contribution of new elements and materials by you, you have an absolute right to claim a new copyright for your additions to the PD material.  By publishing a copyright notice with respect to your own contributions, would anyone else necessarily know which is your new material and which your Great Aunt’s?  Not necessarily…

More likely, however, even if you made known which was your Great Aunt’s original work, it would be impractical for any third party to ‘separate’ the PD material from your own additions and/or material enhancements.  For instance, with your Great Aunt’s pen and ink drawings, were you to add colors, they might make a line of beautiful new greeting cards.  While third parties would legally be able to strip out your color and look to add their own color choices, more likely than not, they would honor your copyright notice and published efforts.  There would be little economic incentive to go to that trouble since your line is already available for sale. 

Disclaimer: The information contained in this website is not intended as legal advice. Because the law is not static, and one situation may differ from the next, we cannot assume responsibility for any actions taken based on information contained herein. Also, be aware that the law may vary from state. Therefore, this website cannot replace the advice of an experienced attorney. Receipt of this information does not create an attorney-client relationship. MJ Bogatin, Bogatin, Corman & Gold, www.bcgattorneys.com

Have a legal question? email it to info@AnnGraphics.com. I will forward it to Bo. It might be a blog post! You can search "Bo's bLAWg" to read more posts. I am looking forward to your comments and thanks for sharing this great information on social media.

 

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Bo's bLAWg - Copyright and Useful Items

 

MJ Bogatin (“Bo”) of Bogatin, Corman & Gold, is an Arts and Entertainment Attorney in San Francisco.  He is also a long-time President of California Lawyers for the Arts. www.calawyersforthearts.org. Bo is available to answer some of your questions surrounding the business of Art Licensing. - THANKS BO!

What is this I heard about a copyright and cheerleading uniforms case before SCOTUS?  Does it have anything to do with design licensing?  (BTW I love your bLAWg, Bo!)  Jeff

Always happy to discuss copyrights in the news, Jeff!  Let me summarize the case to which you are referring.  It is called Star Athletica, L.L.C. v. Varsity Brands, Inc.  Varsity Brands is one of the largest purveyors of cheerleading uniforms in the country.  Star Athletica is a smaller competitor.  Varsity registered its copyrights on certain “chevron designs” used in a new series of uniforms.  Star’s catalogue the following year included a number of similar chevron designs in its new uniforms.  Varsity sued.

What is a chevron?  I didn’t know!  Here is a link to some other legal bloggers who dug up the Varsity copyrighted designs and the Star catalogue uniforms:  https://www.knobbe.com/news/2016/11/chevrons-stripes-cheerleaders-and-copyright-supreme-court-hears-oral-argument-star  Now I know what a chevron is! 

The matter sounds straightforward enough, doesn’t it, Jeff?  What’s the issue that brought such a case all the way to the SCOTUS?  It is simply this:  Is the Varsity chevron an article that is part of a useful item like a cheerleading uniform, or is it something else; something uniquely creative simply added to the useful article? Copyright does not apply to “useful items”.  It has always applied to the sculpture that is turned into a lamp, and the illustrations that are added to mugs, but what about clothing?  Historically, clothing and its elements, from zippers to hidden pockets, have always been considered useful items.  Some of these items may be entitled to patent protection, but not copyright.

Copyright is limited to “original works of authorship” that are not in themselves “functional”.  (See 17 USC Section 101:  https://www.copyright.gov/title17/92chap1.html#106a )   Section 101 defines a useful article as:

an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a “useful article”.

Reasonable minds can differ.  The Federal District Court in Varsity’s copyright infringement case found that the chevrons had a utilitarian function with respect to the uniforms.  Varsity appealed.  The Federal Circuit Appellate Court reversed, finding that the chevron was a design that “incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article” per 17 U.S.C. § 101.  Star appealed to SCOTUS.  Undoubtedly, as indicated by the reversal of the original Judgment, Stars’ attorneys considered this to be “a close question.”  And no doubt there were a lot of damages at stake.  Remember, having lost on appeal, Star could be liable not only for large damages, but for all Varsity’s attorneys’ fees and costs incurred for bringing their action, as well as Stars’ own.

When it came right down to it, SCOTUS did not consider this to be such a close question.  It applied the usual legal “test”:  Do the artistic features of the useful articles includes a separate identification or “separability” requirement and an independent existence requirement.  More particularly, “(1) can the chevron designs be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would they qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article?”

Justice Thomas, writing for a five-member majority of the Court, affirmed the Judgment of the Sixth Circuit Court of Appeals.  This majority identified the two key requirements – that the chevron features were separately identifiable from the cheerleading uniform, and are capable of existing independent of the utilitarian aspects of the uniform.  It also reasoned that removing the surface decorations from the uniforms in the abstract and applying them in another medium would not replicate the uniform itself.

So, Jeff, you want to make a million bucks?  Attach some of your original artwork in ambiguous fashion to a top-selling article of clothing.  Register your copyright, and let me know when you someone infringes on your design.  We’ll rack up.

Disclaimer:  The information contained in this website is not intended and should not be relied upon as legal advice. Because the law is not static, and one situation will differ from the next, the results will differ as well, thus we do not assume responsibility for any actions taken based on any information contained herein. Also, be aware that the laws vary from state to state. Therefore, this website cannot replace the advice of an experienced attorney who practices within the jurisdiction involved in your issue or dispute. Receipt of this information does not create an attorney-client relationship. MJ Bogatin, Bogatin, Corman & Gold www.bcgattorneys.com
© 2017 mjbogatin

Have a legal question? email it to info@AnnGraphics.com. I will forward it to Bo. It might be a blog post! You can search "Bo's bLAWg" to read more posts. I am looking forward to your comments and thanks for sharing this great information on social media.

 

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Bo's bLAWg - Copyright Small Claims Court

  

MJ Bogatin (“Bo”) of Bogatin, Corman & Gold, is an Arts and Entertainment Attorney in San Francisco.  He is also Co-President of California Lawyers for the Arts. www.calawyersforthearts.org www.calawyersforthearts.org Bo is available to answer some of your questions surrounding the business of Art Licensing. - THANKS BO!

Dear Readers,
Since July I have had a number of inquiries on my opinion of the proposal that the Copyright Office set up Small Claims Court. I’ve been mulling it over.  Here are my thoughts:

Background:
On July 14th, Rep. Hakeem Jeffries of New York introduced to the United States House of Representatives a bill, known as the Copyright Alternative in Small-Claims Enforcement (CASE) Act of 2016.  https://assets.documentcloud.org/documents/2993945/CASE-Act-Jeffries.pdf

CASE is for the most part based on a Copyright Office Report released in 2013 speaking to the question of whether or not such a forum would be in the public’s best interest.  There is certainly good reason to consider the prospect.  Under the existing Copyright Act, the only forum for infringement claims, large or small, is Federal Court.  This is truly a situation where a wronged party whose original work has been copied, plagiarized or distributed without their permission has no choice but to “make a Federal case of it,” unless the matter can be resolved informally.  CASE would set up an alternative forum intended to be more accessible and efficient than your local Federal District Court.   Would it be?  That is yet to be seen.

In my practice, I have had no real problem resolving infringement claims on behalf of my plaintiff clients and avoiding drawn out litigation.  The reason for this is that my clients have been advised to register their copyrights within three months of first publication.  Having done so, I can leverage the two key benefits of registration into quick and (usually) substantial settlements. 

As mentioned in previous January 2015 bLAWg, registration benefits include the right to claim statutory damages of up to $150,000 and obtain prevailing party attorneys’ fees and costs against the infringing party – instead of being limited to “actual damages (the infringer’s profits if any), and being out-of-pocket for attorneys’ fees and cast.  http://annietroe.blogspot.com/2015/01/bos-blawg.html 

Even the most obstinate infringer will capitulate when their own attorney tells them they will have put up a large retainer to defend the claim and, when they lose, they will also have to pay my substantial fees.  When faced with this reality, I rarely have to file an action.  When I have to file, as soon as the defendant looks to retain counsel, I get a decent settlement offer.

However, I also get calls quite often from prospective clients whose works have been infringed, but who have not previously registered their copyright.  If the infringer does not have ‘deep pockets’ (assets) and there is no viable ‘downstream’ wholesale distributor or retailer with substantial profits from the infringement, it is clear that despite being harmed, such claimants have no viable remedy.  That is where I can see a Copyright Small Claims Court play an important role.

CASE describes the establishment of a reasonably well-conceived Copyright Claims Board with qualified copyright attorneys serving as “Claims Officers” empowered to hear infringement matters.  They would assure parties proper use of procedural due process, oversee basic discovery, conduct hearings and issue findings that would be published, and subject to filing as Judgments in the District Courts for collection purposes.  Unlike most State Small Claims Courts, parties can use attorneys or certified law student counsel.  All well and good.

Like the 1976 Act, claimants would be entitled to elect either Actual Damages (including the infringing parties’ profits), or Statutory Damages.  However, statutory damages would be capped at $15,000 instead of $150,000 – but only in the event of a registration prior to infringement (or within three months of original publication). In the absence of such registration, the statutory damages limit would be $7,500.

Since it is easy to leverage settlements with pre-existing registrations, it is hard for me to imagine anyone electing to pursue the Small Claims alternative unless they did not have a registration before the infringement.  In that regard, and given the prevalence of infringements where there are little or no actual damages or profits, the $7,500 statutory damage prospect would be a keen advantage – one that may pave the way for settlement early in the Small Claims process if the Defendant is at risk of that.

HOWEVER, what I believe to be the fatal flaw in the CASE legislation, is that participation by the parties is voluntary. (See Section 1403(a).)  The defendant may “opt out!”  (See 1405(h).)  Facing a potential statutory liability of $7,500, why wouldn’t they opt out knowing that the Claimant will be out-of-pocket to bring an action in Federal Court, and no statutory damages are available.

Nor is the Copyright Claims Board empowered to grant injunctions against ongoing infringements.  That limitation in itself would rule out Small Claims as a reasonable forum for many situations where what is critical is not present damage, but the long-term damage if the infringing activity is not stopped immediately.

While I can understand the basis for not affording the Copyright Claims Board the authority to consider and grant injunctive relief, until the opt out provision is fixed, I fear that the CASE court will end up being the forum that is used by ‘copyright trolls.’  There are many entities that search the internet for copied illustrations, photographs, music and/or film clips and make unreasonable demand$ upon the website owners who have innocently or mistakenly allowed uploading of infringing material. 

Taking down the offending image or material is not enough for these outfits.  Once they have identified what they believe to be an unlicensed use, they continue to send demand letters and threaten legal action.  Rarely, however, do the actual copyright holders take the initiative to go after such infringing use if the offending item has been removed from the website.  In the case of ‘innocent’ infringement, it is likely the damages awarded in Federal Court will be as low as $200.  Nor will the Court necessarily award them prevailing party fees since the damage was minimal and the defendant complied promptly with the ‘cease and desist’ letter.

I know a number of artist organizations are supporting the legislation.  The Graphic Artists Guild appears to endorse the supporting efforts of the Coalition of Artists which includes the American Photographic Artists (APA), American Society of Media Photographers (ASMP), Digital Media Licensing Association (DMLA), National Press Photographers Association (NPPA), North American Nature Photography Association (NANPA) and Professional Photographers of America (PPA).  https://graphicartistsguild.org/news/copyright-claims-board

Perhaps they do not share my concern over potential misuse of the Small Claims Courts or that their members will not be able to make meaningful use of it due to the Opt Out provision.  Or, perhaps they are pursuing changes in the CASE provisions to address those matters.  If you are a member, I recommend that you share your own view with them.

Disclaimer: The information contained in this website is not intended as legal advice. Because the law is not static, and one situation may differ from the next, we cannot assume responsibility for any actions taken based on information contained herein. Also, be aware that the law may vary from state. Therefore, this website cannot replace the advice of an experienced attorney. Receipt of this information does not create an attorney-client relationship. MJ Bogatin, Bogatin, Corman & Gold, www.bcgattorneys.com

 

Have a legal question? email it to info@AnnGraphics.com. I will forward it to Bo. It might be a blog post! You can search "Bo's bLAWg" to read more posts. I am looking forward to your comments and thanks for sharing this great information on social media.

 

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Bo's bLAWg - The Copyright Term Follow Up

 

MJ Bogatin (“Bo”) of Bogatin, Corman & Gold, is an Arts and Entertainment Attorney in San Francisco.  He is also Co-President of California Lawyers for the Arts. www.calawyersforthearts.org www.calawyersforthearts.org Bo is available to answer some of your questions surrounding the business of Art Licensing. - THANKS BO!

 

Dear Bo, in last month’s bLAWg you indicated that works published before 1923 are in the Public Domain.  Does that mean that as of January, works published before 1924 will be in the Public Domain? Rick

That would seem to be logical, Rick, but that is not presently the case. 1923 will remain the cut-off date for automatic Public Domain for two more years under the Copyright Act.

Under the 1909 Copyright Act, the copyright term was 28 years with the right to be renewed for a second 28 year term.  Under the 1976 Copyright Act, the one that set the ‘new’ ‘life of the Author plus 50 year term,’ came into effect January 1, 1978.  As of Jan. 1978, the ‘oldest’ copyrights that could still be in their second renewal term under the 1909 Act must have been registered in the first instance in 1923 or later.  For example:  A work that was first copyrighted on January 1, 1923, and renewed between January 1, 1950, and January 1, 1951, would formerly have fallen into the public domain as of January 2, 1979.

Last month I mentioned Sonny Bono Copyright Term Extension Act (CTEA) of 1998.  Besides extending the existing copyright term from 50 years after the Author’s death to 70 years, a provision of the CTEA extended the duration of copyrights in their renewal term at the time of the effective date of this Act to 95 years from the date such copyrights were originally secured.
https://www.congress.gov/bill/105th-congress/senate-bill/505

Since the ‘oldest’ renewal registrations under the 1976 Act were from 1923, the CTEA extended those copyright terms to a maximum of 95 years, through 2018.

Accordingly, no new works will fall into the public domain until 2019, when works published in 1923 will finally be deemed to have expired. THEN Rick, you will get the ‘rolling’ year-by-year expansion of Public Domain.  In 2020, works published in 1924 will expire; in 2021 all works published before 1925 will have to have expired, and so on.  That is, unless the Copyright Act is amended again to alter these expectations!

Disclaimer: The information contained in this website is not intended as legal advice. Because the law is not static, and one situation may differ from the next, we cannot assume responsibility for any actions taken based on information contained herein. Also, be aware that the law may vary from state. Therefore, this website cannot replace the advice of an experienced attorney. Receipt of this information does not create an attorney-client relationship. MJ Bogatin, Bogatin, Corman & Gold, www.bcgattorneys.com

Have a legal question? email it to info@AnnGraphics.com. I will forward it to Bo. It might be a blog post! You can search "Bo's bLAWg" to read more posts. I am looking forward to your comments and thanks for sharing this great information on social media.

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Bo's bLAWg - The Copyright Term

 

MJ Bogatin (“Bo”) of Bogatin, Corman & Gold, is an Arts and Entertainment Attorney in San Francisco.  He is also Co-President of California Lawyers for the Arts. www.calawyersforthearts.org www.calawyersforthearts.org Bo is available to answer some of your questions surrounding the business of Art Licensing. - THANKS BO!

 

Bo, several of your bLAWgs have mentioned that once a copyright term has expired, the works are then in the Public Domain.  Are my mother’s illustrations from the 1940s still subject to copyright so I can license them as copyrighted works, or are they in the Public Domain? 
Thank you!  Janet

Good question, Janet!  It gives me the opportunity to provide more particulars regarding the extension of copyright terms under the 1909 Act – applicable as to artworks published before 1978, as allowed by the 1976 Act.

The Copyright Act has been amended several times since the first was passed by Congress.  I think the original term under the first US Copyright Act from 1790, copied from Great Britain’s,  was for only 14 years, plus a renewable 14-year term!  Then again. people did not live as long in those days, did they?  As of 1900, the Term was extended to 28 years plus an additional 28-year renewal right.

That Term remained in effect until the “new” Copyright Act of 1976 came into effect Jan. 1, 1978.  The Term was extended under the 1976 Act to conform with those of many other countries:  The lifespan of the Author plus 50 years.  The 1976 Act also addressed with particularity how the Terms for works copyrighted under the 1909 Act would be treated under the new Act. 

The question of whether your mother’s 1970 artworks are still copyrighted depends upon whether or not they were ever published.  If they were published with a copyright notice as required under the 1909 Act, the Term became 95 years from date of publication.  (If the copyright had been renewed, 67-year renewal term is deemed added to the initial 28-year term.) 
If the original copyrights were not renewed by your mother or her heirs, her published works from the 1940s would be in the public domain.

So, if my calculations are right, if all of your mother’s works were published for the first time in 1940 with a copyright notice, her copyright on those illustrations will not expire until 2035.

If your mother’s illustrations were never published, those works are entitled to a Term of copyright protection through the 70th calendar year after her death, whenever that may occur.

In 1998, just as the Term of Walt Disney’s copyrights on its Mickey Mouse character were about to expire, Congress passed the Copyright Term Extension Act (CTEA) sponsored by Congressman Sonny Bono, better known as “Cher’s first husband.”  This Act amended the Copyright term to the life of the Author plus 70 years instead of 50.  For Disney and other works created by corporate entities or under “work made for hire” agreements the Term was extended to 120 years after creation or 95 years after publication, whichever endpoint is earlier.  For the time being, Mickey was saved from ignominious treatment in the Public Domain! 

The effect of CTEA was to "freeze" the advancement date of the Public Domain in the US for works covered by the older fixed term copyright rules. Under CTEA, works made in 1923 or afterwards that were still protected by copyright in 1998 will not enter the public domain until 2019 or afterward (depending on the date of the publication).  For works created by authors who died in 1932 or earlier, that day was January 1, 2003. 

However, as mentioned last month, any artwork published before 1923 was deemed to be in the Public Domain.  Anyone can use such works here in the US for any purpose, without any license or permission.

Since I want my bLAWgs to be super helpful, here is a chart that spells out the different operative Copyright terms: 

If you have a special case that needs to be analyzed, let me know.  We’ll see if we can figure out whether or not that work is still subject to copyright protection or in the Public Domain.

Disclaimer: The information contained in this website is not intended as legal advice. Because the law is not static, and one situation may differ from the next, we cannot assume responsibility for any actions taken based on information contained herein. Also, be aware that the law may vary from state. Therefore, this website cannot replace the advice of an experienced attorney. Receipt of this information does not create an attorney-client relationship. MJ Bogatin, Bogatin, Corman & Gold, www.bcgattorneys.com

Have a legal question? email it to info@AnnGraphics.com. I will forward it to Bo. It might be a blog post! You can search "Bo's bLAWg" to read more posts. I am looking forward to your comments and thanks for sharing this great information on social media.

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Bo's bLAWg - Copyright and Derivative Use Rights

 

MJ Bogatin (“Bo”) of Bogatin, Corman & Gold, is an Arts and Entertainment Attorney in San Francisco.  He is also Co-President of California Lawyers for the Arts. www.calawyersforthearts.org www.calawyersforthearts.org Bo is available to answer some of your questions surrounding the business of Art Licensing. - THANKS BO!

 

Bo, can I license well known art works that I have morphed kaleidoscopically?

There is a short and long answer to this question.  The short answer is that if the artworks that you are using are in the public domain (“PD”), you can.  If they are not in the PD, you cannot without a license.

The long answer is that the issue raised is one that pertains to the fundamentals of copyright law, but at the same time has become a cutting edge issue. The fundamental right is that the Author of an original work of visual art is presumed to be the copyright holder with exclusive, theoretically inviolate, rights.  The cutting edge issue is the extent to which a second artist can so fundamentally change the original copyrighted work that it is literally and legally “transformed,” and therefore not deemed to infringe!

Exclusive Interest:

The copyright holder has the exclusive interest in the following basic rights:

1.  To reproduce the work in copies or phonorecords;
2.  To prepare derivative works based upon the work;
3.  To distribute copies or phonorecords of the work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
4.  To perform the work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works;
5.  To display the copyrighted work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work; and
6.  In the case of sound recordings, to perform the work publicly by means of a digital audio transmission.
(See 17 USC 106:   http://www.copyright.gov/title17/92chap1.html#102 )

The two of these that apply particularly to visual Art are numbers 2 and 5.  In addition, Artist/Authors of works of visual fine art have the rights of attribution and integrity as described in section 106A of the Copyright Act.

A “derivative work” is defined in Section 101 as: “A work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications, which, as a whole, represent an original work of authorship, is a ‘derivative work’.”  (emphasis added)
(See http://www.copyright.gov/title17/92chap1.html#102 )

Clearly, your “kaleidoscopic” treatment of a copyrighted artwork would be derivative as a “transformation” of the original, a right that typically must be obtained from the copyright holder if you intend to license to third parties.

However, there are exceptions to this exclusive right.  The first, referenced above, is that the artwork you are altering is in the PD.  While you can presently adapt or transform any artwork published before 1923 and legally license it for use here in the US, use of the same adapted artwork in other countries will be subject to the copyright laws of that country – which could protect works created and/or published before 1923.

The second exception depends upon whether or not your derivative use “is so transformative” as to constitute a Fair Use.  I discussed Fair Use at length in my bLAWg this past March. 
See:  http://annietroe.blogspot.com/2016/03/bos-blawg-use-of-quotes-and-song-lyrics.html

The essence of Fair Use boils down to whether or not the derivative use is a free speech right under the First Amendment to the US Constitution. If the copyrighted work is being “copied” in conjunction with news and reporting about it or its author, or as part of a critical review, these uses are fundamentally “speech-based” and the copyright work may be used for these purposes as long as the amount of use does not significantly damage the market for the original work.

This is the essence of the first of the four Fair Use factor:  “The purpose and character of the use.”  The US Supreme Court in recent years has begun to expand upon the traditional ‘news and critical comment’ purpose to apply Fair Use due to the extent that the second work is “transformative” of the copyrighted original.  The seminal case was Campbell v. Acuff-Rose Music, Inc. (1994), in which the Court deemed 2 Live Crew’s rap using a few lyrics and some music from the Roy Orbison song, “Pretty Woman” to be parody.  Even under a traditional Free Speech analysis, this makes sense.  Parody is a form of speech.  Since you need to use the original work to make fun of it, the use has been deemed Fair. Obviously, the 2 Live Crew recording did not damage the market for the Orbison original.

Since 2 Live Crew, there have been other cases expanding upon the scope of transformative use so that it can be applied to visual art as well as music.  The purpose of the transformation no longer is limited to “parody.”  The Court now examine whether or not the derivative work  “merely supersedes the objects of the original creation…or instead adds something new, with a further purpose or different character.”  (Campbell)   A work can be deemed transformative “if it adds value to the original; basically uses the original as a raw material which is then transformed “in the creation of new information, new aesthetics, new insights and understandings.”  (Castle Rock)   When considering whether a work is transformative, the courts are now evaluating factors such as changes in aesthetics and meaning.  (Cariou v. Prince).

Clearly, there is a legal argument to be made that your kaleidoscopic treatment of these copyrighted works is sufficiently transformative as to be deemed Fair Use.  However, this in no way prevents you from being sued for copyright infringement.  Fair Use is only a legal defense, not a bar to an infringement action.  And, because each Fair Use case has to be considered upon its own merits, there is a good chance that you will not learn whether or not you are entitled to use the copyrighted work in this fashion or if it will be deemed an illegal infringement  until the case is tried in court.  And then the decision of the trial court is subject to appeal!  Is this a risk you can afford?

I should also mention that a ‘creative’ litigation attorney could also make a Right of Publicity claim against you if you use the name of the artist of the underlying work in the promotion of your own transformative artworks.  As discussed at length in my bLAWg from this past February, the essence of the Right of Publicity is that under these state statutes, a person who knowingly uses the name or image of a person for commercial purposes without their permission is liable to that party. (See http://annietroe.blogspot.com/2016/02/bos-blawg-right-of-publicity.html )

Disclaimer: The information contained in this website is not intended as legal advice. Because the law is not static, and one situation may differ from the next, we cannot assume responsibility for any actions taken based on information contained herein. Also, be aware that the law may vary from state. Therefore, this website cannot replace the advice of an experienced attorney. Receipt of this information does not create an attorney-client relationship. MJ Bogatin, Bogatin, Corman & Gold, www.bcgattorneys.com

Have a legal question? email it to info@AnnGraphics.com. I will forward it to Bo. It might be a blog post! You can search "Bo's bLAWg" to read more posts. I am looking forward to your comments and thanks for sharing this great information on social media.

Make my day! and Buy me a cup of coffee (PayPal Link in right side bar, you don't need a PayPal acct.)

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Bo's bLAWg - Indemnification Provisions

 

MJ Bogatin (“Bo”) of Bogatin, Corman & Gold, is an Arts and Entertainment Attorney in San Francisco.  He is also Co-President of California Lawyers for the Arts. www.calawyersforthearts.org  Bo is available to answer some of your questions surrounding the business of Art Licensing. - THANKS BO!

 

Lisa asks:  Why would a manufacturer to whom I have licensed designs for toys expect me to indemnify it?  Shouldn’t the manufacturer indemnify me?

Thanks for your question, Lisa.  Indemnification is an important legal consideration in every Agreement, and particularly in conjunction with licensing illustrations for use with manufactured goods.  In short, indemnification means that if an “innocent” party to the License is sued by a third party because the other did something wrong, the party who did something wrong should be responsible for any potential liability of the innocent party.  It would be appropriate for each party to a manufactured goods illustration License to indemnify the other in conjunction with their particular contributions to the goods being manufactured.

When you look more closely at your License you will note that the manufacturer has likely asked you to warrant certain things.  Typically, the Illustrator Licensor will be asked to warrant:

1.  That the illustrations you are licensing are yours alone – meaning that there is no one else who will claim a joint copyright interest and claim that the manufacturer must pay them, too;

2.  That the illustrations are original to you – meaning that you have not infringed any copyrights held by someone else;

3.  That you have not violated any other person’s right with respect to your licensing these images – meaning that you have not included any trademark or recognizable face (without a signed Release)  See my February 2016 bLAWg on the Right of Publicity: click here , and,

4.  If the License is exclusive, that you have not otherwise licensed the same illustrations to other manufacturers of competing goods.

If the manufacturer is sued by a third party for a violation of any of these rights, then the manufacturer has a reasonable expectation that the Artist indemnify (be responsible for) the damages for which the manufacturer might be liable for copyright infringement or other warranted use right.

While a comprehensive License will include an Express Indemnification provision, you should know that there is also a legal doctrine called “Equitable Indemnification.”  In short, in the absence of Express Indemnification, most courts will “in fairness” allow an innocent party to invoke indemnification rights anyway.  However, in some states, only Express Indemnification, not Equitable Indemnification, will cover the innocent party’s attorneys’ fees and costs.  Since attorneys’ fees (including mine even though they are so reasonable!) can total even more than actual damages on claims like these, Express Indemnification provisions are favored by manufacturers.

However, I do have pro-active advice to limit the scope of the Artist’s indemnification obligation.  Many of these provisions are drafted so as to make the Artist Licensor responsible for damages and attorneys’ fees and costs arising out of a claim of infringement.  Heck, anyone can claim their illustration has been infringed by you!  However, there are two requirements to prove infringement, both “substantial similarity” and “access” to the copyright holder’s artwork so as to have provided the opportunity for copying.  See Bo’s bLAWg from last June: click here

If your illustration is only substantially similar by coincidence, and there was no access, hence no copying, why should you still have to indemnify the manufacturer?  I don’t think you should have to. As a large corporate entity, the manufacturer is in a much better position to afford to defend a meritless claim than the Artist.

To that end, I recommend looking to edit the standard Express Indemnification provision to make sure that the manufacturer (with its own ample insurance) should be required to defend itself, if not also the Artist, unless there is a “substantiated” breach of warranty on the part of the Artist.  Most manufacturer business reps and/or counsel will recognize the reasonableness of such an edit request.  In addition, I look to limit the attorney’s fees and costs obligation to “reasonable” attorneys’ fees and costs.  It is not only possible that an outside counsel will overcharge for defense services, but that they will assign too many attorneys to a small case.  A judge (or arbitrator) can assess whether or not the fees due are in fact “reasonable” or not.

One issue related to the manufacturer’s handling of unsubstantiated claims is that the manufacturer may try to make the Artist responsible for its insurance deductible, to be paid out of current and future Artist royalties.  That might be a risk that the Artist is willing to take if the manufacturer is not obligated to make any payments on its insurance deductible unless there is a settlement or a Judgment that implicates the Artist.  If your manufacturer offers a compromise on the “claim” indemnification language making you responsible for any part of its deductible, make sure that you have a right to pre-approve unconditionally any settlement into which it might want to enter, and that your share of responsibility for the deductible is reasonably limited.  Some of these policies have deductibles of $50,000 or more!

The flip side to the Indemnification issue is that an Artist can reasonably expect the manufacturer to indemnify them in the event an action (or claim!) is made against the Artist occurring through no fault on the Artist’s part.  Express Indemnification can and often should be reciprocal.  The Artist can be exposed to a legal action on their illustration contribution when the manufacturer requires the Artist to include content it provides in her illustration, like its logo in the packaging that the Artist is illustrating.  If it turns out that the manufacturer’s new logo infringes upon someone else’s trademark the Artist might be sued for trademark infringement along with the manufacturer.  Or, if the toys your illustrations decorate are defectively made and a child ends up getting hurt playing with them, a Plaintiff attorney could name as Defendants both the Artist and the manufacturer!  

While it is not common, it is not unheard of for the Artist to be sued along with the manufacturer.  In which case, you absolutely want to be sure that the manufacturer not only is providing indemnification on any damage claim, but that there is legal defense coverage available to you as the innocent Artist.  Most manufacturers have Product Liability insurance, and will agree to include the Artist as “an Additional Insured” on their policy for these purposes.  Then you should have no worries.  You will have the same coverage the manufacturer has, including legal defense and associated legal defense costs.  However, once again, make sure that the manufacturer is responsible for any deductible that the coverage might otherwise impose on the Artist as an insured under the Policy.

Probably a lot more than you wanted to hear, Lisa, but you asked a good question!

Disclaimer: The information contained in this website is not intended as legal advice. Because the law is not static, and one situation may differ from the next, we cannot assume responsibility for any actions taken based on information contained herein. Also, be aware that the law may vary from state. Therefore, this website cannot replace the advice of an experienced attorney. Receipt of this information does not create an attorney-client relationship. MJ Bogatin, Bogatin, Corman & Gold, www.bcgattorneys.com

© 2015 mjbogatin

Have a legal question? email it to info@AnnGraphics.com. I will forward it to Bo. It might be a blog post! You can search "Bo's bLAWg" to read more posts. I am looking forward to your comments and thanks for sharing this great information on social media.

Bo's bLAWg - Use of Quotes and Song Lyrics

MJ Bogatin (“Bo”) of Bogatin, Corman & Gold, is an Arts and Entertainment Attorney in San Francisco.  He is also Co-President of California Lawyers for the Arts. www.calawyersforthearts.org  Bo is available to answer some of your questions surrounding the business of Art Licensing. - THANKS BO!

Could I be sued for using somebody else's quotes?  What about song lyrics?

I knew I was going to get this question sooner or later.  It is a tough one.

There are at least three legal rights that bear on the question of whether or not an illustrator can make commercial use of an existing quote or song lyric.  These are Copyright, Trademark and the Right if Publicity which I wrote about last month.
http://annietroe.blogspot.com/2016/02/bos-blawg-right-of-publicity.html

With respect to Copyright, let’s first clarify that words, phrases and titles are not by themselves copyrightable.  See: http://www.copyright.gov/circs/circ34.pdf

However, when the words or phrases you want to use are contained in a larger, copyrighted work, then they are indeed protected by copyright.  The same rule applies if the phrase you want to use is a quote, whether from a copyrighted speech or a catchy aphorism used by a writer or one of her characters in the course of dialogue.  Use of the same content in your commercial product without the permission of the copyright holder, whether in a greeting card, or other paper product, is an infringement.  The Copyright Office addresses the same question in one of its own FAQs:   http://www.copyright.gov/help/faq/faq-fairuse.html

“If you use a copyrighted work without authorization, the owner may be entitled to bring an infringement action against you. There are circumstances under the fair use doctrine where a quote or a sample may be used without permission. However, in cases of doubt, the Copyright Office recommends that permission be obtained.”

Then the question is whether or not the Illustrator’s particular use is defensible as a “Fair Use.” See my Fair Use bLAWg from last May:
http://annietroe.blogspot.com/2015/05/bos-blawg-fair-use-of-logos.html

Considering the four part Fair Use test: 
1)  The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
2)  The nature of the copyrighted work;
3)  The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
4)  The effect of the use upon the potential market for or value of the copyrighted work.

I believe it is reasonably clear that while the substantiality of the amount used may be minimal, (factor 3), the Illustrator’s commercial use and the fact that her use effectively eliminates the copyright holder’s market to license the same quote for similar use would be sufficient to defeat the Fair Use defense. 

When considering whether or not pithy sayings might be protectable on their own, I ran across a case by Ashleigh Brilliant ( http://www.ashleighbrilliant.com/ ) who has successfully defended his copyright of his collection of original sayings.  I can also vouch for the fact that certain quotable essayists and humorists have sent out ‘cease and desist’ letters to some of my clients for their use of quotes, including the Estate of Erma Bombeck.  However, given how broadly her quotes are now disseminated online, I must wonder if they gave up trying to stop commercial use.

As for trademark, if the quote or lyric you want to use is being utilized as a trade or service mark then your use could cause someone to believe that the trademark holder is the source of goods on which you use it.  That is the gravamen of trademark Law – to avoid just such confusion as to origin -- as noted in my May 2015 bLAWg:  http://annietroe.blogspot.com/2015/05/bos-blawg-fair-use-of-logos.html  So, you want to make sure that you are not using a pre-existing catchy saying associated with another company to attract prospective purchasers of your goods.  Many such phrases, such as “Show Me the Money,” “ET Phone Home,” “Got Milk” and “Just Do It,” are trademarked, and cannot be used by you without likely objections, if not claims, by their owners.
Finally, if you are using a quote, and in conjunction with the quote you use the author’s name, that is a use that can easily been seen as a violation of that person’s Right of Publicity, even if it is just being used to identify the source of her quote!  What if you were to use the quote without the author’s name?  Would that diminish sales of your product?  If so, then clearly there is a commercial advantage to using the name.  At the same time, if you go to the author or her agent or publisher for permission to use the quote, it is very likely that the permission will come with the condition that the quote be attributed.  And that is a large part of the reason a royalty payable on your sales will likely be required in exchange. 

Disclaimer: The information contained in this website is not intended as legal advice. Because the law is not static, and one situation may differ from the next, we cannot assume responsibility for any actions taken based on information contained herein. Also, be aware that the law may vary from state. Therefore, this website cannot replace the advice of an experienced attorney. Receipt of this information does not create an attorney-client relationship. MJ Bogatin, Bogatin, Corman & Gold, www.bcgattorneys.com

Bo's bLAWg- The Right of Publicity

MJ Bogatin (“Bo”) of Bogatin, Corman & Gold, is an Arts and Entertainment Attorney in San Francisco.  He is also Co-President of California Lawyers for the Arts. www.calawyersforthearts.org  Bo is available to answer some of your questions surrounding the business of Art Licensing. - THANKS BO!

 

After I’d turned in my bLAWg to Annie in December, I received another client holiday gift that raised legal issues that she had not considered that is topical.  The set of cards I received contains illustrations of a number of celebrities.  Clearly, she had not obtained their permission to feature their likenesses on gift cards.  As long as the cards were being circulated to friends and families as examples of the Artist’s fine skills, there is no legal risk.  However, if the Artist were to sell a single set of these cards, she would be subject to some very expensive legal claims.

The legal interest that underlies this claim is the Right of Publicity.  While it is celebrity images that are most commonly used by illustrators or photographers on cards or on products from digital picture frames to place mats and t-shirts, everyone has an individual Right of Publicity.  In short, it is a personal right to either allow their name and image to be used for commercial purposes – or not.  With respect to celebrities, this right is directly associated with endorsements.  One cannot turn on the television or flip through a magazine without seeing the image of some celebrity touting the benefits of some product.  They get paid big money for these kinds of endorsements.  Whether their image appears on a towel or product packaging, the celebrity has a reasonable right to object unless they have expressly granted this personal right – and so would you or I; although, our damage claim would no doubt be significantly less than that of a celebrity!

(However, writing that reminded me of the Taster’s Choice claim.  In 1986, a one-time model, Russell Christoff, posed for a Nestle photo shoot pursuant to an agreement that paid him for a couple hundred dollars for shoot but promised him $2,000 if his image was actually used to market Nestle’s Canadian division products.  By 2002, Christoff had become a school teacher.  That year, while shopping in a Rite-Aid store in the US, Christoff saw his image on the label of jars of Taster’s Choice Coffee jars.  Christoff had never been paid the $2,000.  Instead of suing for his contract damages, he made a Right of Publicity claim under California law.  With the help of some good lawyering, a jury returned a verdict in favor of Christoff for $15.3 million dollars(!) based on 5% of Nestle’s profits for the six years that Nestle had been using Christoff’s image on the Taster’s Choice label.)

While the Right of Publicity is a matter governed by State law --  which varies from State to State -- because cards and products are typically sold all across the country,  a person whose right of Publicity has been violated can ‘forum shop’ and potentially bring an action against anyone who has profited by the use of their image without their permission.  This means the shop that sells the offending card and the distributor who provided it to the retailer are also liable, albeit they would have a right of indemnification against the Artist who provided them the cards with an express or implied warranty that they had the right to use the image on the card or product.

Christoff used the California Right of Publicity because it is one of the strongest.  This is due to the fact that a lot of celebrities live in California and the State wants to protect their interests.  California’s Right of Publicity is found in Civil Code Section 3344:               http://www.leginfo.ca.gov/cgi-bin/displaycode?section=civ&group=03001-04000&file=3344-3346

Under this statute, a person (or company) who knowingly uses the image of a person without their permission is liable to the injured party for his actual damages (like provable endorsement fees otherwise due a celebrity), “and any profits from the unauthorized use that are attributable to the use…” or a minimum of $750.  In addition, the defendant may be subject to a punitive damages, (often based on their total value or assets(!).  And one of the best parts of the statute is that the prevailing party in such an action is entitled to recover their attorney's fees and costs – like in a post registration Copyright infringement action as noted in my June 2015 bLAWg – which means I take these cases on a Contingent Fee basis. Given the risks of a losing case, the defendant will almost always settle rather than risk fees and costs on top of the claimant Plaintiff’s damages.

And don’t think that just because a celebrity is dead that you are safe to use their image.  To the contrary, many States protect the Right of Publicity of the dead!  California Civil Code Section 3344.1 (same link as 3344 above), provides the same rights and remedies to deceased “personalities” as 3344 provides to the living.  All the Estate or heirs of the personality has to do is register the name of the deceased at the California Secretary of State Office.  If you want to find out if a given personality is registered you can find out at this linked website:
http://www.sos.ca.gov/business/sf/sf_siisearch.htm

However, just because you do not find listed at the California Secretary of State the name of the dead celebrity whose image you want to use on a card, does not mean that you can.  Since the right is State to State, there are other States that protect this right for a term of years without any Registry, and others who may well have case law instead of statutes that provide similar rights.  So, what’s my advice?  Don’t use any illustrations or photos of people on any product for sale unless you have obtained a license that warranty that the underlying rights to the image have been obtained for the intended purpose.

Disclaimer: The information contained in this website is not intended as legal advice. Because the law is not static, and one situation may differ from the next, we cannot assume responsibility for any actions taken based on information contained herein. Also, be aware that the law may vary from state. Therefore, this website cannot replace the advice of an experienced attorney. Receipt of this information does not create an attorney-client relationship. MJ Bogatin, Bogatin, Corman & Gold, www.bcgattorneys.com

Bo's bLAWg - The California Resale Royalty Act

MJ Bogatin (“Bo”) of Bogatin, Corman & Gold, is an Arts and Entertainment Attorney in San Francisco.  He is also Co-President of California Lawyers for the Arts. www.calawyersforthearts.org  Bo is available to answer some of your questions surrounding the business of Art Licensing. - THANKS BO!

 

Since it is in the news and an issue dear to my heart, I wanted to comment this month on the U.S. Supreme Court’s decision this week to decline to hear the appeal of last year’s Ninth Circuit decision striking down part of the California Resale Royalty Act (RRA). (See CA Civil Code Section 986:  http://www.leginfo.ca.gov/cgi-bin/displaycode?section=civ&group=00001-01000&file=980-989 )

This unique California statute provides for artists to be paid a modest royalty (5%) on the re-sale of their artwork at an increased price over the re-seller’s purchase price. The statute was one of several that benefit artists that my organization, California Lawyers for the Arts (CLA), helped get passed in the late 1970’s.
   
California is unique in having passed this statute, although it is common in Europe. At its core, it is intended to compensate visual artists for the appreciation in value of their previously-sold works, which appreciation is the result of the artist’s wider acclaim, usually earned through hard work over the years. If the value of the artwork has not increased in value, no royalty is due; if it has, only 5% is to be paid over to the Artist by the Re-Seller. Until recently, the statute applied only on re-sales of fine art in California or by a California Seller.

The RRA came under legal attack in 2012 in response to a lawsuit filed against the major auction houses (Christie’s, Sotheby’s, and eBay) by Chuck Close, the Estates of Sam Francis and Robert Graham, other established artists based on the fact that they were not being paid their resale royalty on out-of-state sales of artworks owned by California Sellers. There was a concerted effort by the auction houses to have the RRA deemed unconstitutional as violating the Commerce Clause of the U.S. Constitution. This clause reserves to Congress the power to regulate interstate commerce. A Federal Judge agreed with the auction houses and an appeal was taken.

On appeal to the Ninth Circuit Court of Appeals, in a split ruling, it was decided on esoteric grounds that part of the RRA that applies to out-of-state sales violates ‘the negative grant of power to Congress under the Commerce Clause’ (The “Dormant Commerce Clause), to restrain the authority of individual states to impose regulation of commerce in other states. In short, even if one party is a Californian, imposing the royalty obligation on the auction house in a New York sale would violate the Dormant Commerce Clause. The ruling left intact the right of California to impose the resale royalty on California sales, but the damage was done. It was this Appeals Court ruling that the artists and CLA sought be reviewed by the US Supreme Court, that the Supremes declined to reconsider.

While disappointing, this is not the end of the matter. There have been attempt to pass a Federal Resale royalty Act that would apply to all the states and provide such royalties to all artists.  Although the statute has been proposed three times to Congress, it has yet to get a hearing. Perhaps with the publicity around this decision will cause artists to become more vocal about their right to such royalties. After all, if composers can continue to earn royalties on the public performance of their works, why shouldn’t visual artists?!?

Or, artists can do what I recommend: Put a resale royalty provision in your art sales contracts. It need not be limited to 5%, either! My sales contracts require re-sellers to pay 15% on the profit of their re-sale, and to pass on this obligation to the purchaser of the work of art so the same obligation applies on future re-sales. You want to see the provision?  I’d be glad to share it with you. Just let me know!

Disclaimer: The information contained in this website is not intended as legal advice. Because the law is not static, and one situation may differ from the next, we cannot assume responsibility for any actions taken based on information contained herein. Also, be aware that the law may vary from state. Therefore, this website cannot replace the advice of an experienced attorney. Receipt of this information does not create an attorney-client relationship. MJ Bogatin, Bogatin, Corman & Gold, www.bcgattorneys.com