Legal Briefs

Publishing Rights
Q. For the past 18-20 years I’ve designed and painted covers for two-year planner calendars. Millions of these calendars have been sold and the company for which I do the work copyrights each design I do. I invoice the company and I’m paid by check for my work. I’ve never given the company the right to copyright my work—verbally or in writing. The company offers my designs for sale in their catalog, repeating some designs for years. Since I’m paid only once, I feel that this practice is unfair. I’ve asked to be paid on a royalty basis rather than a one-time fee, but the company has declined. Do I have any legal recourse? —Frank B. Wright Jr., Lynchburg, VA

A. First, a copyright exists in a work the moment the work is completed, regardless of whether or not you’ve registered your claim of copyright in the work. Nevertheless, federal registration is required before you may institute a copyright infringement action. Copyright registration before the infringement or within three months thereof also allows for statutory damages and attorney’s fees in litigation. Without federal copyright registration, you’re limited to actual damages, such as lost licensing fees or the infringer’s profits.

Generally, the owner of a copyright in a work is you, the author of the work. If you’ve transferred the copyright rights to someone else through an assignment, or the underlying work is a "work for hire," you may not be the copyright owner. A work for hire arises in two situations: 1) an employee who creates a work within the scope of his or her employment; or 2) an independent contractor who has stated in writing that the work is a "work for hire" and the underlying work falls into one of the following nine statutory categories:

  • a contribution to a collective work (that is, a work consisting of a collection of materials that are separately copyrightable by others);
  • part of a motion picture;
  • a translation;
  • a supplementary work (an adjunct to another work, such as an introduction, conclusion or illustration);
  • a compilation (a collection of pre-existing uncopyrightable works, such as facts, forms, etc.);
  • an instructional text;
  • a test;
  • answer material for a test;
  • an atlas.

It appears that you’re an independent contractor. As such, you own all copyright rights in and to the calendar paintings unless you signed a "work for hire" agreement and the work falls into one of the categories articulated above, or you assigned your rights to the calendar company. As the copyright owner, you have the right to control the reproduction of your works. If the calendar company sells your paintings beyond the scope of your authorization, the company may be infringing your reproduction right. Nevertheless, you may have implicitly consented to the unauthorized sales if you haven’t objected to the activity over the past 20 years. Therefore, at this point, you should advise the company, in writing, that any future sales of your paintings that exceed the scope of any existing contract will be considered an infringement of your copyright rights. Any future contracts should explicitly describe the terms of the company’s use of your paintings and you should actively monitor the company’s compliance from now on.

Infringement or Coincidence?
Q. About eight years ago I painted a watercolor of a scene in the North Woods of Minnesota. About a year ago, a major magazine did an article about the North Woods, including a large photo very similar to my painting. Since then, whenever people see my painting, they comment that I must have copied the photo from this major magazine. Do I have any legal recourse against this magazine? Can the magazine’s publisher sue me? My reputation is on the line. —George Robertson, Barrington, IL

A. To pursue a copyright infringement action, first you must obtain registration for the underlying work and show that the alleged infringer had access to your work and copied it. If you can show that the magazine or the photographer had access to your work (through an exhibit, publication, etc.), and either party copied your work to create the photograph, you may have a successful action against the magazine or the photographer for infringement.

If you registered your claim of copyright before or within three months of the alleged act of infringement, you have the right to request statutory damages, which could be as much as $100,000, and attorney’s fees. If registration occurred three months or more after the alleged date of infringement, relief will be limited to actual damages (that is, lost licensing fees) or the infringer’s profits. As an alternative to litigation, you may wish to ask the magazine to insert a notation that the photograph is unrelated to your artwork and you. It is, after all, possible that the photograph’s creation was a coincidence.

The magazine can’t maintain an infringement action against you if you created your work before the magazine published its photograph or if you independently created your work (that is, you didn’t copy the magazine’s photograph).

Individuals’ Rights
Q. As an avid photographer, I enjoy taking my camera along to parades, rodeos, county fairs and other community events. Would there be any legal repercussions if I painted the people in my photos without their permission? —Marilyn Cukjati, Franklin, KS

A. As a general rule, if a person is recognizable in one of your works of art, you should first obtain that person’s consent to use his or her image. Every individual has a right of publicity that protects against the commercial use of his or her name, likeness or personal attributes. This right of publicity is determined by state law.

Animal Rights
Q. If an owner’s horse is recognizable in a commissioned equine portrait, do I still retain copyright privileges as the artist to make greeting cards and other reproductions? —Anna M. Dabney, Waldorf, MD

A. You may freely reproduce a commissioned work if you own the copyright in the work and the agreement between you and your client doesn’t explicitly prohibit reproduction of the work. With respect to reproducing the image of a horse, the right of publicity doesn’t protect animals.

Contracts for Curators
Q. I’m planning to curate a self-portrait photo show, inviting participants to submit a slide, which I’ll print and frame. What wording should I put in the invitation to protect myself legally? I won’t be selling the prints, but I do intend to travel with the show, as well as print a catalog. —Kate O’donnell, Harrison, AR

A. There is no specific language you should print on your art show invitation. Each artist, however, should execute an assignment or license granting your show the rights to make prints of the slides and to reproduce the images in a catalog, brochure or other marketing materials. To expedite the process, you could draft a basic contract for each artist to sign. In addition, each artist should warrant that he or she owns the copyright in the underlying works and has the right to license or assign the copyright rights in and to the works. Also, any agreement should require the artist to indemnify the art show for any breach of the warranties.

If your show will extend to photographs of people other than the photographer, each artist also should warrant that he or she has the authority to photograph the subject for public display.

More on Copying
Q. I was asked by a client to re-create a painting from the individual’s photo of the original artwork. From the picture, the original appears to be an old oil painting, but since it isn’t dated I can’t be sure of its age. As well, the signature is illegible, and almost 25 percent of the photo image is obliterated by camera flash reflection. The client no longer has access to the original. I estimate the original to be about 38×53 inches, but I plan to do it in pastel on a 22×28. Would re-creating this painting infringe one anybody’s copyright? — Robert L. Heger, West Lafayette, IN

A. Copying another’s painting without permission is an infringement, unless the work is in the public domain, or the copying is a "fair use." Your proposed activity doesn’t appear to be a fair use as defined in the "Quoting Poetry" question in the April 2000 issue of The Artist’s Magazine. Unless you can determine the identity of the artist to obtain his or her consent and or verify that the work is in the public domain, we advise against reproducing the work.

Ross Merrill is chief of conservation for the National Gallery of Art in Washington, D.C.

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