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your own website and not did necessarily specifically offered them to be licensed, some or all of the 70 might still be unpublished. And, as I mentioned last month, unpublished works can be registered in a group under a single fee if they are all yours alone.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 - 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.

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 - 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.)

 Don't want to miss the good stuff? Sign up for my newsletter ;-)