Legal Issues Every Artist Should Be Aware Of

(c) 2012.  Shanen R. Prout.  All rights reserved.

Registering artwork with the U.S. Copyright Office provides important benefits

Copyright registration with the United States Copyright Office is not a condition of copyright protection; however, there are advantages to registering your work, including:

• Registration establishes a public record of the copyright claim.
• Before an infringement suit may be filed in court, registration is required for works created in the United States.
• If made before or within 5 years of publication of the work, registration will establish a rebuttable presumption of the validity of the copyright and of the facts stated in the registration certificate.  This makes enforcement of a copyright infringement action much easier because the infringer has the burden to prove that the registration is invalid.
• If registration is made within 3 months after publication of the work or before an infringement of the work, statutory damages and attorney’s fees will be available to the copyright owner in a lawsuit.  Otherwise, only an award of damages that you can actually prove or actual lost profits is available to the copyright owner.

Registration covers only the particular work deposited for registration—it does not give any sort of “blanket” protection to other works in the same series or similar works.  For example, registration of a single comic strip drawing does not cover any earlier or later drawings.  Each copyrightable version or derivative work must be registered to gain the advantages of registration for the new material.

Avoid collaborating without a written agreement

A “joint work” is a work prepared by two or more artists with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.  This concept is important because unless the parties have a written agreement stating otherwise, the joint artists are 50/50 co-owners of the copyright in the artwork, and each joint author may determine unilaterally how the artwork is sold or licensed and what happens to the copyright in the artwork.  However, and again in the absence of a written agreement stating otherwise, if one joint author licenses the artwork, he or she must account to the other joint author for the profits realized from commercial exploitation of the copyright.  Because artists frequently collaborate together they should always have written agreements that address subjects such as ownership of the copyright, control and possession of the artwork, terms and conditions of sale or licensing, royalties, profits or other “backend” monies, expenses, attribution, termination of the collaboration, and how to handle disputes between the parties.

Always put licenses and permissions in writing

Artists sometimes wish to allow others to use or access their artwork under certain terms and conditions.  Some common scenarios include exhibiting the artwork in a gallery, museum or festival, merchandising the artwork in clothing apparel or posters, creating commercial prints of the artwork, or entering into a deal with another party to commission the creation of a work.  Any situation whereby the artist will allow another party to use the physical artwork or any of the copyrights in the artwork, in any manner, should be reduced to writing and signed by the parties to the transaction.  This includes even the most temporary and limited uses of the work.  Failing to do so can result in the artist having granted a more generous license than was desired and perhaps an unanticipated loss of the copyrights in the work.

Monitor your licenses and permissions for infringement or breach of the license

Ensuring that the parties to an art license have placed their intentions in writing is important.  But, another important undertaking is that the artist monitor performance of the art license to ensure the licensee does not abuse the license’s terms.  Failure to monitor and control the license could result in the unintended granting of a more generous license, or worse, a loss of exclusive copyright in the work.  A critical portion of negotiating the art license is determining the appropriate controls retained by the artist and the terms of auditing and accounting.

What to do if you suspect another party is infringing the copyright in your artwork

If you suspect or have evidence that another party has unlawfully copied your artwork, you must ask yourself two threshold questions: (1) have I registered the copyright in the work with the United States Copyright Office, and (2) did I register the copyright within 90 days of my publishing of the work or, in the case of an unpublished work, before the alleged infringement took place?  You must answer “yes” to the first question.  The next step is to determine how to address the alleged infringement.  This often involves sending the suspected infringing party a “cease and desist letter” addressing the infringing behavior.

Before you or your attorney send a cease and desist letter, several issues must be analyzed.  Is the work at issue copyrightable?  Can ownership of the copyright be verified?  Was the copyright registration completed correctly?  Has there been any previous licensing or transfer of any of the copyrights?  What are the alleged infringer’s potential affirmative defenses?  Was there actually infringement?  What is the extent of the infringement?  Who is the infringing party(ies)?

Right of publicity

If an artist creates a work that he or she plans to use in any commercial manner (e.g., merchandising), the artist must be sure to obtain permission to use the likeness of any person who appears in the work.  This is because every person has a “right of publicity.”  The right of publicity is different than copyright law— the right of publicity protects against using another person’s “personality” without permission.  In the broadest sense, the right of publicity is the right of every individual to control any commercial use of his or her name, image, likeness, signature, voice or some other identifying aspect of identity, limited by the First Amendment’s grant of the right of free expression.  Unlike copyright law, the right of publicity is a state-based right, as opposed to federal, and so the right varies across jurisdictions.  California has both statutory and case law authorities protecting slightly different forms of the right.

You may have rights of attribution and integrity (“moral rights”)

For certain one-of-a-kind visual art and numbered limited edition artwork of 200 or fewer copies, Section 106A of the Copyright Act provides artists with rights of attribution and integrity.  The right of attribution ensures that artists are correctly identified with the works of art they create and that they are not identified with works created by others.  The right of integrity allows artists to protect their works against modifications and destructions that are prejudicial to the artists’ reputation.  These rights cannot be transferred by the author, but they may be waived in a written instrument.  Transfer of the physical copy of a work of visual art or of the copyright does not affect the artist’s moral rights.

The California Resale Royalties Act (RRA)

Artists of certain artworks may have rights in connection with the subsequent sales of their works after the work is originally sold.  The California Resale Royalty Act (Civil Code section 986) provides that whenever a work of “fine art” is re-sold for $1,000 or more and the seller resides in California or the sale takes place in California, the seller or the seller’s agent shall pay to the artist of such work of fine art, or to such artist’s agent, 5% of the amount of such re-sale.  The right of the artist to receive 5% of the amount of such re-sale may be waived only in a writing signed by the artist.

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