Legalities #6: Follow-up questions about fair use and collage

by Linda Joy Kattwinkel

What happens if someone thinks your work infringes their copyright? Can you use real money in artwork?

Q. I do collage from magazine photos and found images and sometimes wonder about my rights to use some of these images. Even though I feel my work is transformative according to the "fair use" doctrine, I am not sure it would be viewed as fair by others. What are the consequences of copyright infringement in this case, and what happens when there is a disagreement about what is fair?

A. When someone believes you have infringed her copyright, usually she will contact you or send you a “cease & desist” letter demanding that you stop displaying or selling the accused work. If you have been selling copies of the work, the claim may include a demand for an accounting and payment of your profits. (If your work is online, she might also demand that the hosting ISP (internet service provider) take down the accused image under the Digital Millennium Copyright Act. See Legalities # 3. In that event, you would be notified, and you can assert your fair use defense in a counter-notice to the ISP as provided under the DMCA procedures.)

In response to the infringement claim, you have several options. If you haven’t already consulted an attorney, your wisest first step would be to get legal advice to confirm your belief that the collage is transformative and thus legally defensible as fair use. Then you (or your attorney on your behalf) can react by:

Negotiation. Legally, a copyright claimant does not have to negotiate with you to resolve the claim. She always has the right to pursue the claim in litigation. Sometimes copyright infringement actions are filed in court without even the courtesy of an initial cease & desist letter, but that is not typical. Litigation is expensive. Especially where there may be issues of fair use involved, a copyright claimant cannot be sure of the outcome. If she loses, she may be liable not only for her own litigation costs, but also your attorneys’ fees. Accordingly, most claimants will negotiate before they file suit against you.

In such negotiations, the parties (often through their attorneys) will exchange letters or talk with each other in an attempt to find a solution that both sides can live with. How much bargaining power you have in this process depends upon your side’s negotiating skill, the strength of your legal position, i.e., that your collage qualifies as fair use, and the other side’s perception of the strength of your position. That’s the part that can be difficult. Sometimes it takes a lot of persuasive legal arguing to get the other side to comprehend the legal situation accurately. (Usually its easier if the other side also has competent copyright counsel.) If your negotiations are successful, you will reach an agreement to settle the claim, which means the claimant gives up her right to sue you for the claimed infringement in exchange for whatever you have agreed to do (for example, you might agree to pay her a certain amount of money, or to add a credit line to your copyright notice acknowledging her work as one of the resources for your collage). The settlement agreement is formalized in a written document which both sides sign.

Alternative dispute resolution. If negotiations are not proceeding very well, you might consider suggesting mediation. Mediation is a facilitated process of dispute resolution in which a neutral mediator, hopefully one who has specific expertise in visual art and copyright law, will work with you and the other side to help you reach a resolution. The possibilities for resolution can be much more creative than what would happen in court. Basically, courts can only make a win-lose decision (see discussion below re: litigation). In negotiation and mediation, you can develop win-win solutions. For example, you could come up with an arrangement for cross-referencing so that viewers of your work are also made aware of the claimant’s work. Or you could agree to pay a small licensing fee on sales of your work. Or you could agree to do a custom collage for the claimant’s website. The possibilities are limited only by the imagination and the good will of the parties.

Alternatively, if both parties cannot agree on a resolution, you can suggest submitting the dispute to arbitration. Arbitration is more like a court case, but less expensive. The arbitrator acts like a judge. She considers arguments and evidence from both sides, and then issues a decision. The Arts Arbitration and Mediation Service is a good resource for both types of dispute resolution services. See http://www.calawyers forthearts.org.

Litigation. What if, in the worst case scenario, you are sued for copyright infringement? When you are sued, there are requirements and deadlines you have to meet in order to defend yourself against the claim. If you miss these deadlines or respond inadequately, judgment might be entered against you. Thus, even though you are legally entitled to represent yourself, its not a good idea. You should find an attorney with substantial experience in copyright law to represent you in the lawsuit. (Copyright is a specialized field of law. General practice lawyers often make major mistakes when they try to deal with a copyright case.) Your lawyer will help you file an answer or motion to dismiss the complaint, and prepare other motions and arguments to defend against the claim.

Even once litigation has started, there is always the opportunity to negotiate settlement. Indeed, most courts strongly encourage or even require settlement discussions. The incentives to settle are avoiding the risk of losing, and saving the costs of litigation. To some extent, each side has some risk of losing. And even the winner must spend a lot of money to pursue the litigation, and her attorneys’ fees may not be fully reimbursed. The vast majority of cases are settled before going to trial. The stronger your fair use defense, the more likely the other side will settle early.

Often in copyright cases the plaintiff’s first move will be a motion for preliminary injunction. Each side submits briefing to the judge arguing its position on the infringement claim. The judge will make a preliminary assessment of the strength of the plaintiff’s case. If she thinks the plaintiff is likely to win, she will grant temporary injunctive relief requiring you to stop displaying or selling the allegedly infringing work pending the final outcome of the case. If not, she will deny the injunction. Cases often settle after a decision on a preliminary injunction, because it gives the winning side a significant boost in bargaining power.

If yours is one of the rare cases that don’t settle, the case may be resolved by a trial, or by a pretrial motion for summary judgment, which allows the judge to decide the case on the legal merits if there are no significant factual disputes. As noted above, the court will make a win-lose decision. If you win, you will have the full right to continue showing and selling your collage. You may also receive an award of your attorneys’ fees, which means the plaintiff would have to pay your litigation costs. If the plaintiff wins, the court may issue and injunction preventing you from displaying or selling the collage, and, depending upon whether you have made profits, it might order you to pay some monetary damages. In the relatively unlikely event that the court decides that your infringement was willful, it might also order you to pay the plaintiff’s attorneys’ fees.
Finally, there is always an opportunity to appeal the court’s decision. If you lose, you will want to assess the possibility and expense of an appeal with your lawyer.

Finding legal representation. If you don’t already have a lawyer, the best way to find one is to ask your colleagues if they have worked with lawyers they would recommend.

California Lawyers for the Arts has a lawyer referral service. See http://www.calawyersforthearts.org. There are similar legal referral services for artists in other areas. Various state and local bar organizations also have referral services.
Depending upon the nature of your collage and the strength of your fair use position, you may be able to find enthusiastic lawyers who will want to represent you pro bono (at no cost). Fair use often raises significant issues of free speech and disparity of commercial power that many of us believe are very important to defend in the interests of all artists. For example, you may have heard about the case Mattel brought against Barbie parody artist Tom Forsythe. Tom’s pro bono lawyers won a resounding defeat against Mattel at all stages of the litigation, including a final judgment ordering Mattel to pay $1.8 million in attorneys’ fees and costs. See http://www.aclusc.org/News/ Releases/2001/100068, and http://www.howardrice.com/ newsstand/Press/Barbie0604.asp.

Q. I have an idea for a collage using cut up dollar bills as one of the design elements. Is it legal to use real money in a work of art?

A. It is a federal criminal offense to “mutilate, cut, deface, disfigure, perforate, unite or cement together, or do any other thing” to U.S. paper currency with the intent to render it “unfit to be reissued.” 18 U.S.C. § 331. I don’t know of an instance in which an artist has actually been prosecuted under this statute, but technically, cutting up real dollar bills and using them in a collage would qualify as illegal under this definition. As a practical matter, I doubt the government would waste resources on prosecuting artists for violating this statute.

Interestingly, the corollary provision for coins makes such mutilation, etc. illegal only when it is done “fraudulently” (for example, to deceptively alter the value of the coin). Thus, those machines for tourists which transform pennies into souvenirs are presumably legal; as would be any artwork incorporating real US coins, rather than dollar bills. For a beautiful example of a sculpture using coins, see Michael Osborne’s current San Francisco hearts sculpture for Wells Fargo at http://www.heartsinsf.com.

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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.
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Legalities is a service mark of Linda Joy Kattwinkel. (c) 2004 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.

See the archive of previous columns for more answers to your questions.