Legalities #3
by Linda Joy Kattwinkel
Is graphic design copyrightable? What can be done about a “Napster”
like web site for artwork? Is it safe to publish illustrations
of famous people?
Q: I do graphic design work, for example,
annual reports and web sites. I’ve heard that graphic design
cannot be copyrighted. Is that true? How can I protect my work
from being copied?
A. This is a difficult issue. What you’ve heard about is
probably the Copyright Office policy of refusing to issue copyright
registrations for “graphic design.” The stated reason
given by the Office is “copyright may not be claimed in
works consisting only of familiar symbols and designs, basic typographic
ornamentation, lettering, layout, and color schemes, even if the
elements are distinctively arranged or printed.” However,
that statement is absolutely incorrect as a matter of law. Under
the Copyright Act and court decisions, graphic design (that is,
the creative authorship comprising the selection and arrangement
of text, images, artwork, typographic ornamentation, lettering,
layout and color schemes) clearly qualifies as a form of “graphic
artwork” that is protected by copyright. For example, back
in 1970 the Ninth Circuit Court of Appeals (which covers California),
unequivocally held that copyright protected the graphic design
of a series of greeting cards. (Roth Greeting Cards v. United
Card Co., 429 F.2d 1106 (9th Cir. 1970)).
I believe the Copyright Office policy reflects a misunderstanding
of the nature of graphic design and a misinterpretation of law
relating to blank forms. It is true that court opinions have established
that blank business forms are not eligible for copyright protection.
These decisions held that blank forms are essentially functional
rather than creative works, because they are used to record information
rather than to convey content. Copyright does not protect functional
works, hence, such blank forms are not protected. The Copyright
Office has inappropriately interpreted this “blank form”
principle to mean that the format, arrangement, or typography
of any work is not copyrightable. The Office seems to think that
graphic design is simply a “layout” or “format,”
and thus uncopyrightable under its expansive interpretation of
the blank form principle. Accordingly, the Office refuses to process
applications for “graphic design” or “layout”
as two-dimensional artwork. Copyright Office decisions can be
overturned only through the Office’s internal administrative
appeals process or in litigation in federal court. Both options
are expensive, and to date I am not aware that this policy has
been challenged.
Having learned about this policy the hard way, I avoid triggering
the Copyright Office reaction to applications for “graphic
design” by treating applications for graphic design differently
than other forms of two-dimensional artwork. Depending upon the
specific works involved, it is sometimes feasible to apply for
copyright registration of graphic design as a “compilation
work.” As noted above, in copyright parlance graphic design
is a compilation work in that it comprises the selection, arrangement
and appearance of discreet elements such as text and images. Thus,
instead of using the words “graphic design” or “layout,”
I identify the nature of the work as a “compilation.”
And I use the statutory language for compilation authorship, i.e.,
“selection, coordination and arrangement of text and images.”
Finally, remember that copyright registration is different than
copyright protection. As more thoroughly discussed in the January
Legalities column, copyright protection applies as soon as you
create the work. Registration is merely a formality that brings
with it important advantages. Generally, registration is a pre-requisite
to bringing a lawsuit for infringement. However, the Copyright
statute ensures that courts have the authority to overturn Copyright
Office decisions regarding registration. Thus, if you applied
for copyright registration but your application was rejected,
you are still entitled to your day in court. As part of the lawsuit,
you can ask the court to review and reverse the Copyright Office’s
inappropriate refusal to grant your registration. So if the Copyright
Office rejects your application to register your graphic design,
it does not mean your work is not copyrighted. Should you need
to challenge the registration refusal, you would likely win. Meanwhile,
make sure you include your copyright notice on your work.
Q: I've recently learned that a web site has been illegally
posting artists’ work that can also be downloaded to individuals
computers, like Napster. The site owner states, in her FAQ's page,
that anything on the web is public domain and she can do with
it what she wishes. The question is, what can be done about this?
So far I've heard that some have recognized certain artists’
artwork and they have been contacted, but what about the rest?
If I'm not sure whose art has been stolen then how can I contact
the artists to inform them? Contacting the hosting service provider
seems like the most direct way of dealing with this site since
it involves so many artists. However, I don't know how to figure
out who the hosting service is. How should sites like this be
handled?
A. As you know, the web site owner is mistaken:
it is not true that anything on the web is public domain. Her
unauthorized posting of artwork on a web site, as well as enabling
unauthorized downloads of the artwork, is copyright infringement.
However, under the legal concept called “standing”
civil claims for infringement can be made only by the persons
(or entities) whose rights are being infringed. In this case that
means that only the artists whose artwork is posted have the legal
right to bring a civil claim to remedy the infringement. The artists
have claims against both the web site owner and the hosting service
provider. Under the new law called the Digital Millennium Copyright
Act (DMCA), there are very specific procedures for getting the
service provider to remove the infringing content.
The best way to deal with these sites is to contact the artists
whose work is being infringed, as you have already done for some
of them. The artists can then use the DMCA procedures, as well
as cease and desist letters to the web site owner herself, to
stop the infringement. I don’t know of a way to find out
who the other artists are, but the first claim will obviously
alert the web site owner and her service provider that there is
a problem. That may provide incentive to take care of the rest
proactively.
To find out who owns a web site and who hosts it, try doing a
“whois” search at the Network Solutions site (go to
www.networksolutions.com, click on “whois” on the
top menu, and follow directions). The search results will give
you the name of the domain name registrar, and, if available,
the identity and contact information for the owner of the web
site (“Registrant Info”) and the service provider
(“Technical Info”). If not, you can try going to the
listed registrar’s website to do a search.
In this example, the service provider is identified as Earthlink,
Inc. With that information, the next step is to find out if Earthlink
has a registered agent to receive an infringement complaint under
the DMCA (most service providers do). The law requires that these
agents be registered with the Copyright Office, and they can be
searched online at the Copyright Office web site (go to www.copyright.gov,
click on “Online Service Providers” under “Search
Copyright Records,” then click on “directory of agents”).
Most service providers also list their agent on their own site,
along with a step by step explanation of how to follow the DMCA
complaint procedure. For example, see Earthlink’s posting
at http://www.earthlink.net/about/policies/dmca. You can also
look up the statute itself on the Copyright Office site (go to
“Online Service Providers” and click “Digital
Millennium Copyright Act,” then look for Section 512(c));
however, the statutory wording is a bit more obtuse. Under these
procedures, the service provider is required to take down the
infringing material when duly notified by the copyright owner.
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As a bystander, you cannot raise a claim legally, but you can
write to the web owner and/or the service provider to voice your
concerns. If you do so, be sure that you are reporting accurate
factual information. It is important not to make potentially untrue
or disparaging remarks. (Remember, some images are in the public
domain: they may be old enough that the copyright has expired,
or the artist may have posted them on the web with explicit permission
for free use. Or the images might be used in a way that qualifies
as “fair use.” That doesn’t seem to be the situation
in your example.) Its best to state your concerns in terms of
what it appears might be happening, e.g., “it looks like
the site may be posting artwork and allowing downloads of artwork
without permission of the artists, and I’m concerned there
may be copyright violations” rather than in terms of absolute
legal conclusions, e.g., “the site is engaging in copyright
infringement.”
Q. When it comes to famous persons, can I do an illustration
of their likeness for use on a book cover? The illustrations may
be cartoons of these people, like those done in the NY Review
of Books, but this is for a book for sale. I'm not sure this is
"editorial" use. The book would contain quotes known
to be from these famous people. (I don't know what the legal issues
are of using their quotes, but that is being figured out by the
publisher.) This book not a parody of these people, nor a piece
of literary criticism. The book is more a “great quotes
with great advice” kind of book. What I'm concerned about
is, will I get into trouble if I don't have the permission of
those persons to use their likeness?
A. This question touches on the rights of publicity,
which involve a famous person’s rights to control the commercial
exploitation of her/his likeness. Unlike copyright (which is a
matter of federal law uniformly applied nationwide), rights of
publicity are governed by state laws, and the rules vary from
state to state. So the evaluation can get very complicated. California
state law is one of the most expansive in terms of granting the
most power to celebrities (or their estates).
You are right: generally, “editorial” use of a famous
person’s likeness is protected as a fair expression of our
free speech rights under the first amendment. On the other end
of the spectrum, mere commercial use of a famous person’s
likeness to sell products is an infringement of the celebrity’s
rights of publicity. Parody and literary criticism are the clearest
examples of “editorial use.” What counts as “commercial
use” is less clear. It used to be safe to assume that photographs
or artwork depicting famous people that appear in traditional
“editorial” venues, such as newspapers and books,
would be considered editorial rather than commercial use, even
if the images were used to increase sales of such publications.
Thus, when a newspaper reproduced one of its editorial photographs
of a sports celebrity on posters to advertise the paper, a New
York court held no infringement. Similarly, it used to be safe
to assume that fine art (as opposed to merchandise such as coffee
mugs) depicting a famous person would not be considered a commercial
use, even though such works can be sold for large amounts of money.
However, in a recent California Supreme Court case, limited editions
of fine art prints of realistic drawings of the Three Stooges
were deemed infringing. (Comedy III Productions, Inc. v. Gary
Saderup, Inc., 25 Cal.4th 387 (2001)). The court held that only
“transformative” images would escape liability. Rather
unhelpfully, the court explained that “transformative”
means the art has become primarily the defendant’s own expression
rather than the celebrity’s likeness. (Obviously, the court
did not appreciate the artistic skill and “expression”
that goes into creating a compelling portrait.) Last year, the
same court held that comic book characters based on Edgar and
Johnny Winter qualified as “transformative.” (Edgar
Winter v. DC Comics, 30 Cal.4th 881 (2003)). At least in California,
these rulings changed the focus from the nature of the “products”
on which the allegedly infringing artwork appears to the nature
of the artwork itself.
Your example might fall into the new grey area, depending upon
the nature of your illustration. It sounds like the illustration
may include several cartoon depictions of the famous people. That
would most likely count as a “transformative use.”
The courts have less trouble recognizing that a cartoon is primarily
the artist’s own expression rather than the celebrity’s
likeness. Moreover, where artwork depicts more than one person,
it is harder to argue that the likenesses are being used commercially.
Arguably, the purpose of the illustration is an editorial message
reflected by the decision to depict such people together (e.g.,
these are all people who had something worthwhile to say). And
the inclusion of more than one celebrity makes is less likely
that any one of them is being used to sell the book.
Assuming the cover art itself is not parody or otherwise “transformative,”
the evaluation of risk for the cover art is probably the same
as for the book content. (Technically, the content of the book
is governed by copyright law rather than rights of publicity,
but the analysis is similar for the purpose of this discussion.)
Books are a traditional editorial venue, however, the purpose
of the book is not clearly “transformative.” It could
be argued that a mere compilation of quotes from famous people
does not comprise editorial “expression” by the author.
Thus, I’d guess that the publisher is seeking permission
from the various people (or their estates) to use the quotes.
Presumably the publisher has commissioned your artwork and has
directed that celebrity likenesses be used in the illustration.
Thus, the publisher should be taking responsibility for clearing
use of their likenesses in the cover art as well, and such permission
should be sought at the same time.
Finally, note that this discussion applies only to use of the
illustration on the book cover. If you want to reproduce the illustration
in other ways, each of those other uses should be analyzed separately.
For example, display of the illustration in your portfolio or
on your web site as an example of your work would be a safe, noncommercial
use. However, if you print the illustration on coffee mugs and
offer the mugs for sale over your web site, that would be a commercial
use, and it could provoke claims for violating the celebrities’
rights of publicity.
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You are invited to send in questions for consideration in upcoming
Legalities columns. Please send your questions to Legalities@owe.com.
See the archive
of previous columns for more answers to your questions.
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Legalities is a service mark of
Linda Joy Kattwinkel. © 2003 Linda Joy Kattwinkel. All Rights
Reserved. Ms. Kattwinkel is a former graphic artist who currently
enjoys personal oil painting. She practices intellectual property
law, arts law, arbitration and mediation as a member of Owen,
Wickersham and Erickson in San Francisco. The information in this
column is provided to help you become familiar with legal issues
that may affect graphic artists. Legal advice must be tailored
to the specific circumstances of each case, and nothing provided
here should be used as a substitute for advice of legal counsel.
A good resource for finding counsel is the lawyer referral service
of California Lawyers for the Arts (SF office: 415-775-7200).
Linda Joy Kattwinkel can be reached at 415-882-3200 or ljk@owe.com.
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