Legal Easel

It appears that a current lawsuit between a staff news photographer and his former employer Agence France-Press (AFP) has upped the attack on creators’ ownership of the copyrights to their own work.

A Portugal-based photojournalist, originally a stringer who had become a staff photographer for AFP, is trying to re-possess his copyrights.  According to the article, AFP is claiming, not that he has lost his claim to his work under the circumstances of his employment, but that news photographers are not, and should not be, entitled to copyright at all.

That’s a very odd position for AFP to take,  since there seems to be no reason at all for AFP to do so.  If the photographer was, as the article says, a “staff photographer,” then technically he was an employee of some sort—which means that AFP could legitimately claim that it owned his work as works made for hire—and therefore if, as the news article states that AFP claims, news photography is not entitled to copyright protection, AFP could not-assert copyright protection in the work as much as it wanted to, as the work-for-hire authors of the images in question.  

It looks, however, as though AFP is playing a longer game, swinging an axe at the very root of artists’ initial ownership of their own creative work and claims to copyright protection for it—and, consequently, their independence from reliance on a single patron or employer. 

Typically, the writers of articles on copyright are ill-educated in copyright matters, and their inaccuracies are compounded by their employers’ hostility to the concept of creators owning their work, so it is always a little dicey to take a news article on these subjects at face value—and any such reportage should be met with initial skepticism.

Nonetheless, this article is disturbing.  There have been many assaults on creators’ rights to control their work over recent decades—the “orphan works” agitation, the efforts to expand “fair use” and the introduction of the non-statuory concept of “transformative use” which has polluted the statutory definition of “fair use,” the push for the idea of “commons” which suggests that people who have created nothing should have a right to freely use the work of creators. Big Tech—Google and its allies—have long made its hatred of copyright plain.  AFP merely ups the ante.

Artists who rely on their copyrights for their ongoing livelihood, and who expect to leave the rights to their works to their heirs, should be vigilant regarding the ongoing attacks upon the copyrights which comprise their legacy.

In early April of this year, artists won a semi-victory when New York’s Second Circuit found in favor of photographer Lynn Goldsmith against the Andy Warhol Foundation.  The appeals court found that Warhol’s use of a Goldsmith photo of the rock star Prince to create a series of prints was not “fair use.”  That the photographer prevailed in this case is the good news.  The bad news is the basis on which the decision was made.  

In 1984, Vanity Fair licensed a photo of Prince that Goldsmith had taken in 1981, for Vanity Fair to use as an illustrator’s photo reference.  Vanity Fair then hired Warhol to do the illustration.  Warhol did the illustration for Vanity Fair, using the photo as reference, then—unbeknownst to Goldsmith—created a series of fifteen additional prints using Goldsmith’s photo image.  Goldsmith discovered the existence of these additional images in 2016, when Vanity Fair, in the wake of Prince’s death, re-printed the article which carried Warhol’s original illustration, and one of Warhol’s other prints. 

When Goldsmith informed the Warhol Foundation that the prints were infringing works, the Foundation brought suit against Goldsmith, claiming “fair use,” and seeking a declaratory judgment that the prints were not infringing; Goldsmith counterclaimed.  The Foundation won the initial trial, but on appeal the Second Circuit reversed in favor of Goldsmith this April, finding that Warhol’s creation of the additional prints was not “fair use,” on the grounds that the works were not sufficiently “transformative.” 

The original artist won—so it’s a victory, right?  Well, sort of…and only sort of. The photographer won on appeal because the Second Circuit found that the Warhol prints were not sufficiently “transformative” to be covered by fair use. Understand that the concept of “transformative use” appears nowhere in the copyright law itself—it is a judicial invention which the Supreme Court injected into copyright jurisprudence back in 1994, in its decision in Campbell v. Acuff-Rose Music.  

Copyright law lays out four factors to determine fair use: the nature of the original work; the amount of the work taken; the purpose for which it was taken; and the effect on the commercial viability of the original work. “Purpose of the use” includes use for commentary, and parody is included within commentary—but nowhere does the statute cite “transformativeness” as a criterion.  Indeed, for a court to consider “transformativeness” leads the court into the murky realm of aesthetic judgments, rather than the more-or-less objective standards set forth above.  More important, forgiving infringement on the basis of “transformativeness” has the courts trespassing upon the creator’s exclusive right to create, or to license the creation of, derivative works.

In this instance, the court reached the right result—finding for the photographer—for the wrong reasons.  Rather than give further credence to “transformativeness,” the court should have found for the photographer on the grounds that Warhol exceeded the license under which he produced the work, as Vanity Fair had only licensed the work from Goldsmith for use as a picture reference.  The court should have respected the limitations of the license initially granted by the photographer, rather than relying on the non-statutory doctrine of “transformativeness.”

Remember that a copyright cannot be enforced if the work has not been registered with the Copyright Office—and registering before infringement makes a big difference in what you can recover.  Making registration a matter of habit is a good resolution for the New Year—but it is important to know that the rules have changed.  Used to be, all creators could register an unlimited amount of unpublished work on a single form, for a single fee. Not any more.

It is still possible to register multiple unpublished works, but the Copyright Office has now capped the number of unpublished works permitted per application at TEN.  This applies to written works and non-photographic works of visual art.   Photographers may still register up to 750 images at once, provided they use the proper form.

It’s not as good a deal as it used to be—but group registration of unpublished work is still the best deal around, and remains an important tool for creators to protect their work.

A little verse about “work made for hire”:

I passed by his garden, and marked, with one eye,
How the Owl and the Panther were sharing a pie:
The Panther took pie-crust, and gravy, and meat,
While the Owl had the dish as its share of the treat.
When the pie was all finished, the Owl, as a boon,
Was kindly permitted to pocket the spoon;
While the Panther received knife and fork with a growl,
And concluded the banquet by eating the owl.

While it long antedates modern “work made for hire” contracts, this excerpt from Lewis Carroll’s “Alice in Wonderland” expresses their perils.

Too few artists understand the definition of “work made for hire”. The common phrase doesn’t mean that an artist has been hired simply to complete a project for a client. It’s a legal term of art that ensures a one-sided deal with the artist transferring authorship to the client—and in the process, losing all meaningful rights to it.

As an artist, your creation of a work—your authorship—is the source of all the benefits that potentially flow from the copyright law. If you retain authorship, you can endlessly draw off new licensing opportunities. Even if you transfer all rights to a single client, the law says that retaining authorship of your work means you, or your heirs, can entirely recapture those rights after 35 years.

But if you hand over authorship to someone else by signing a work-made-for-hire agreement, those rights are gone forever. Worse, you may even find yourself stealing your own original creation. If one of your later works too closely resembles the one you transferred, it may infringe the rights of that client.

In a work-for-hire agreement, your client is Lewis Carroll’s panther, taking pie-crust, and gravy, and meat, and you, the owl, are left with nothing but the empty dish.

There’s more bad news for that creative bird. Work-for-hire transfers usually have the artist giving the client a warranty that the work won’t violate anyone else’s copyright. So, despite owning the artist’s authorship, the client doesn’t assume any of the associated risks. Those remain on the artist’s shoulders. That’s how the panther-client concludes the banquet by dining on the owl-artist.

You have to eat, too. Never sign a work-for-hire agreement with any cat.

Most people who are unfamiliar with the process imagine that when legal troubles arise, you go directly from a life of peace and quiet to being enmeshed in the midst of litigation. But that’s not usually the case.

Some time back, I was hired by an agent to defend her client after the artist received a demand letter. The artist, who was producing covers for a series of young-adult books whose hero was a horse, had used a horse photo for picture reference. Despite the changes the artist made to the picture—altering the color of the animal, and the background—the horse’s owner claimed the picture belonged to her. Her letter demanded a payment of $10,000 for the alleged copyright infringement. To avoid upsetting the publisher of the series, the artist and agent wanted the matter settled rapidly.

Typically, before you find yourself in the middle of a lawsuit, you’ll have prior warning in the form of a cease-and-desist, or demand, letter, similar to the one this artist received. Such letters—usually, but not always, from a law firm—state the situation in the most dire terms possible. They’re meant to intimidate the recipient into complying as quickly as possible with the letter’s demands, to avoid further problems or compelling the plaintiffs to proceed to litigation.

If you’re the recipient of a demand letter, the most important thing you can do is not panic. The letter’s language is designed to elicit that reaction—don’t give the sender the preliminary victory of doing so. It may be necessary for you to hire an attorney to write a response, but you can alleviate some of your worry by first looking for any vagueness or exaggerations in the letter. You can easily discern the holes that are sure to be there.

The most encouraging aspect of the horse-picture demand letter was the very thing that was intended to sound the most terrifying: the demand for a $10,000 payment. That was because the adversary had both locked herself into a figure she expected to receive, and indicated by the sum that she probably had no leg to stand on—which proved to be the case.

Ultimately, the demand was settled for a fraction of what the claimant initially demanded, and the relationship between the artist and publisher was saved. No litigation was necessary.

As frightening as a demand letter may seem, you’re equipped to evaluate whether its threats have validity, even before you contact an attorney to address them.

In an effort to discourage knock-offs of designer clothing, U.S. Senator Chuck Schumer (D-NY) introduced legislation in August that would provide fashion designers with limited intellectual property protection. Schumer’s view is that with the legal support offered by the Innovative Design Protection and Piracy Prevention Act,  the fashion industry’s revenue and jobs would stay safely in New York.

Despite the fact that counterfeiting products of any type is already illegal—those guys on Canal Street hawking $25 Louis Vuitton bags have always had to pack up and run when they sight a cop—the proposed legislation is unnecessary and even harmful.

Copyright protects original expression, but does not protect useful objects. For example, if you create an original sculpture, it is copyrightable; if you drill a hole through that sculpture and wire it to make a lamp, the lamp is not copyrightable. And while some of the freakish get-ups worn by the models on the Fashion Week runways may strain the definition of “useful object,” they are indeed articles of clothing and therefore fall within the category of useful objects.

Schumer’s legislation further complicates matters by limiting its protection only to those designs designated “extremely unique and extraordinary,” which must feature distinguishable “non-trivial and non-utilitarian variation” from previous similar articles of clothing. Details such as fabric patterns or colors cannot figure into the mix, and a litigant would have to prove that the offending design is “substantially identical” to his or her own.  Under those conditions, Tim Gunn is going to have be our next Supreme Court appointee.

Why this new standard should be injected into copyright law is in question as well. “Uniqueness” is a term used in patent law that has never been applied to determine eligibility for copyright. Originality is what earns you a copyright, and it has to nothing to do with producing a groundbreaking design. Originality merely means you did not copy it from anyone else. Compelling copyright to bear a burden it never has before, at a time when intellectual property rights are under fresh attacks daily, will erode the concept of copyright even more dramatically.

It is not clear why the Senator, along with the Council of Fashion Designers of America and American Apparel and Footwear Association, who worked with him on the legislation, is so convinced clothing designers need this protection now, when they never did before. The fashion industry has survived—and thrived—for decades in New York City without such protection.

The legislation is being touted as balancing the need to protect innovation in the fashion industry with keeping clothing “affordable.” But there is no reason to believe that the proposed intellectual property rights will reduce the prices of the designs they protect. If anything, those reaping the benefits of this superfluous arm of IP law are likely to be the wealthiest and most successful designers, who are the only ones likely to be able to take advantage of the suggested new restrictions on such copying.

But there would be others who would feel a negative effect if the legislation passes: the city’s countless other creative professionals, who rely on the law as it exists to safeguard their work. They don’t need their protections, or the process of proving infringement, made more difficult by needless tinkering with the standards of copyright protection.

The Graphic Artists Guild has filed a defamation suit against several people associated with the Illustrators Partnership of America (IPA).

One would think that illustrators would support the Guild in its effort to quash false or misleading statements by other would-be industry spokesmen.  Nobody who has ever had dealings with the legal process can think such a decision was lightly undertaken; lawsuits are expensive and unpleasant at the best of times–and the Guild has a well-earned reputation for lengthy deliberation before taking action. Who would not want to ensure the unquestioned veracity of those who claim to speak for them?

But one would be wrong. The IPA quickly produced a website containing a plaintive press release and an accompanying petition, which it is encouraging artists to sign to persuade the Guild to drop its suit.  Surprisingly, this petition has actually obtained signatures.

Had it been possible to resolve this dispute without a lawsuit, the Guild would surely have chosen that route.  That the Guild would nonetheless take such a drastic step should be a signal to illustrators–including those who have signed the petition–that something may be very much amiss with some of the industry’s would-be spokesmen.  Is defamation really forgivable when it is done by the Right People?

Illustrators approached to sign this petition should recognize that demanding the Guild drop the suit without knowledge of the evidence is, in effect, demanding that the defendants be given the right to lie without being challenged–whether the defendants actually have lied or not.

Whether the Guild can prove its allegations remains to be seen.

Life can be a bee-otch for film companies when they don’t secure the rights to copyrighted material. Read about the suit against Dreamworks SKG and Paramount Pictures, Inc. in the New York Post.

A bill being considered by the Egyptian parliament would copyright the pyramids, scarabs, and other antiquities. Aside from being at odds with the concepts of authorship and public domain, it appears that the Egyptians are unfamiliar with the concept of “Pharaoh use.” 

It appears that the new RIAA suit is, in fact, over illegal downloading, not over recording off legally-purchased CDs.  But the RIAA may be trying to push the envelope a little.