Advice From Attorney > Info From Internet > Nothing

Happy Friday dear readers! I had a post planned this week about the whole GamerGate debacle sweeping through Twitter like wildfire, but then my wife went into labor on Monday night and long story short, I'm a dad now and all my energy has been spent taking care of my wife and infant daughter Hannah.

But in the very little downtime I've had at the hospital, I found this chart online and thought I'd share it with you. It lays out in fairly clear terms when you can and cannot use someone else's copyrighted work. I initially hesitated to share this chart because while the information is generally correct, the law in reality is never this clear cut, and reducing it to a simple phrase or image can be a dangerous proposition. As I wrote last October:

I like to give away lots of free legal information on this blog because I think it’s important for artists to have a basic understanding about how the law interacts with them. I was once in your shoes. I’ve had my ideas stolen, my copyrights compromised, and been in situations where a little legal knowledge could have saved me from a jam or two. At the same time, you can’t cut lawyers entirely out of the equation simply because you possess that knowledge. Legal information without analysis is just raw data. It can’t give you advice or insight. It can’t examine your specific situation and provide you with synthesized options based on that data (i.e. just because you know the fair use factors doesn’t mean you know how to apply them). No two situations are the same and everyone’s needs will differ depending on a variety of unforeseeable factors. Only a properly trained lawyer familiar with your circumstances will be able to navigate that minefield.

This is a reasonable view and I stand by it. Law without anlysis is just data, and data without analysis is useless. That said, I'm sharing this chart anyway because some of you may not have the finances to hire a lawyer, and having some information is better than having none. In fact, I've whittled it down to a pretty simple formula.

Advice From Attorney > Info From Internet > Nothing

So hang onto this chart and use it when you need to, but just remember that this is only part of the story and it may not apply to your situation. Be careful out there and call me or another qualified attorney if you have any questions about what this all means.

I'll be back soon with my thoughts on GamerGate and some other recent news items. Until then, Cheers!

Ask Greg: How To Fight Back When Someone Has Infringed Your Work

Q. I recently discovered that someone was selling T-shirts featuring my illustrations. They've credited me as the artist on their website, but I've received no financial restitution and they didn't ask my permission. I want them to either pay me or stop selling the T-shirts altogether. What are my options for getting them to stop?

A. Let's be honest, you don't want to sue anybody. You don't have the time and you probably don't have the money, and even if you did, the effort and emotional toll it takes is astronomical. So before you go down that road, there are some things you can do to save time and money, and hopefully avoid court.

1. Send the infringing party a “cease and desist” letter. You'd be surprised how often people don’t even realized they're infringing someone else's work. Oftentimes, they think the work is in the public domain simply because it's available online. And even when people do infringe your work on purpose, an officious sounding letter is usually enough to make them stop. While you can always draft a cease and desist yourself, it has more teeth if it comes from a lawyer.
2. Negotiate! If you reasonably feel that the infringer isn't acting with malicious intent, give them a call and see if they're willing to talk turkey. You want to get royalties for all T-shirts already sold, and you definitely want to get a fee for all future sales. If this works, it's a classic win-win. They stay in business and you get a financial benefit. At the very least, you'll get a sense of their motives.
3. Use social media to rally people around your cause. This can be a surprisingly effective way to get public support and put pressure on the infringer to do the right thing. You may have heard this story about a graphic designer who wasn't paid for poster designs he made for Spike Lee's newest film, Oldboy. The designer sent an open letter to Lee recounting his abuses. This was a smart choice on the part of the designer. Even though Lee, like most directors, has no role in the marketing of his films (marketing is almost exclusively the domain of the studio), by going right to the top, the designer started creating groundswell. And if he can get Lee to go to bat for him, the pressure placed on the studio could be overwhelming.
4. Lastly, BE NICE, no matter how much of a jerk the other party is. That old saying about catching more flies with honey than with vinegar - it's absolutely true. I can't tell you how many times I've seen victims of infringement get swatted by a judge because they acted like unrepentant assholes. If you look worse than the guy who actually stole from you, you're going to lose, plain and simple. In general, when interacting with a potential legal adversary, you should follow my patented Famous Three Step Rule For Dealing With Infringers: First time be nice. Second time, be nice. Third time, be nice. You can always be direct, but politeness really can make the difference in your outcome.

If you do all of these and the infringer still won't pay you back or cut you in, it's time to sue. Call a lawyer and get that ball rolling ASAP (you have three years from the discovery of the infringement to bring a lawsuit). And if you have anymore questions, don't hesitate to Ask Greg.

Copying is Copying: Homages, Tributes, and Fanboyism Are Dangerous For Artists

As far as the law is concerned, copying is copying, no matter how noble your intentions.

I'm an artist too, so I get it. We are constantly bombarded by stimuli, so it's hard not to be inspired by those images. And it's even harder to avoid relying on those images when we make our own work. My advice is to try even harder than that. Because, unfortunately, copyright holders (often, but not always, large corporations) are less inclined to care about why you copied them and more inclined to sue you into oblivion if that's what they feel is required to protect their work.

Case in point: last month, a Boston-based company called Autonomie was sued for trademark infringement by Converse for making a sneaker so similar to Converse's iconic Chuck Taylors that it's nearly impossible to tell the two apart (the shoe is actually manufactured by a British company called Ethletic). Here are the shoes side-by-side.

But this isn't just ripping off for the sake of ripping off. Autonomie is all about using eco-friendly materials and fair trade practices so as to produce "high-quality garments at competitive prices to consumers that wish to make purchases with a social and environmental impact without having to sacrifice their own personal style, or break their wallet."  That's a pretty good reason, right? Too bad. The law says this is trademark infringement because there's a high likelihood that the two shoes would be confused with each other, thus steering profits away from Converse. In trademark law, this is called "blurring." Autonomie's reasons may be noble, but noble doesn't go very far in court.

Remember the whole Robin Thicke/ Marvin Gaye copyright infringement situation that came up a few months ago? Thicke was so inspired by Gaye's work that he wanted to make a song that sounded like something Gaye himself might have written. The end result was that Thicke's fanboyism got him in a legal tussle with Gaye's family.

The reasons for copying rarely matter from a legal perspective. There are very few mechanisms in the law that allow it, and they only apply in certain situations. Fair use, is the most commonly used exception but the only way to find out if it protects you is to get sued, go through months of litigation and thousands of dollars in legal fees, and find out in court. As far as I'm concerned, getting sued and winning is the same as losing because the amount of time and money required to defend yourself would never be recouped.

Copyright holders don't care what your reasons are. They only care if your work will take money out of their pocket. So don't pay homage. Don't pay tribute. Don't use the copyrighted works of others unless they give you written permission. If they don't give you permission, be creative and find another way to express yourself. Be original always in all ways, because copying someone else, even if your intention is to honor them, is the quickest way to get legally smashed. And instead of making art, you'll be paying off copyright fines.

Licensing Getty: A Cautionary Tale For Artists Using Stock Photos In Their Portfolios

[Yesterday I got an email from a reader telling me a pretty scary story.  She's permitted me to share it, but for the sake of confidentiality I'll change her name to "Jean".]  

Five years ago, Jean was hired to design an ad for a local business.  As part of the design process, she incorporated a stock photo from Getty Images, an online stock photo library.  Jean's client liked the work and paid Getty a licensing fee to use that photo in the ad.  The terms of the licensing agreement stated that the image could be used in print ads only.  Jean put the ad on her personal portfolio website.

Last July, Getty's netbots discovered the ad w/image on Jean's website.  Because the terms of the licensing did not include website use, Getty sent her a letter accusing her of breaching the license agreement and demanding $8,000 in usage fees.  The netbots also found two images that she had used in mock-ups for other clients, but those mock-ups were never approved by the clients and the images never licensed.

Faced with a pretty scary situation, Jean did what a lot of people would do: she took down the images.  This seems to have placated Getty because no more demand letters were sent.  But did she really have to take them down?

Well, there are two issues determining whether Jean should fear Getty's wrath.  1) Did Jean's use of the image constitute copyright infringement?  2) Did Jean's use of the image constitute a breach of contract?

Regarding Copyright Infringement

Most IP lawyers agree that displaying your work in a portfolio, even when the copyright is owned by someone else, is permitted under fair use.  That's because portfolios are non-commercial in nature, and don't generally compete with the copyright owner's financial interest.  Jean's case is slightly different because the artist and the client aren't the only parties involved.  There's a third-party copyright owner (Getty) who is laying claim to the image.

But even with that wrinkle, Jean is okay leaving the ad featuring the licensed image on her site.  It doesn't conflict with Getty's market and she's not profiting from its display.  She's using it as an example of her prior design work.  No copyright infringement here.

Regarding the unlicensed images, I think removing them was the right decision.  On the face of it, fair use applies to these images just as they would to the licensed image.  But fair use is a squishy doctrine and in the absence of a license agreement, a judge could look at Jean's website and reasonably believe that she's not an innocent infringer (using images without permission from a website whose sole business is to license those images could indicate intent to pirate).

Regarding Breach of Contract

According to Jean, Getty placed very specific conditions on the use of the licensed image - print ads only, no web.  Any violation of those terms constitutes a breach of contract, which is why Getty sent her an $8,000 bill.

Getty is fiercely protective of its copyrights.  Their licensing agreements regulate every possible use of their images: the size of the image, number of times the image can be used, what mediums the image can be used in, and even placement of the image in the final artwork.  When I was a producer, I would license stock photos from Getty all the time and they negotiate like Iranian hardliners.  One time, I was trying to get their permission to use a single stock photo for a fifteen-year term in a documentary.  No matter how hard I pleaded, I couldn't get them to budge from a ten-year commitment.

That said, standard agreements like these don't usually make third-parties liable for breaches of contract.  Meaning that since the agreement was between Getty and the client, the terms of the contract likely didn't apply to Jean.  Therefore, Jean is not liable for breach of contract.

So What Can Jean (And You) Do?

Realistically, Jean had no legal liability for displaying her work on her website.  But to prove this, sadly, Jean would have to risk being sued by Getty.  And as I've discussed before, going to court and winning, especially on a fair use case, is still a loss because of the time, money, and effort she would have to invest in defending herself.  So the trick is to minimize liability before Getty can even send you a letter.

So, for all you designers who use stock photos in your work to stay (legally) safe, here are a few things you should always do:

1. All photos should be properly licensed by you or your client
2. Web use and/or portfolio use should be explicitly permitted in the license agreement
3. Even if the licensing is done by the client, read and understand the terms of the licensing agreement to understand your liability to the other parties (i.e. if the client pays the license fee, are you as the artist liable to Getty as well for a breach of the contract?)

Remember, as an artist, your portfolio is the face of your business.  The less work you can show, the less successful your business is.  But because Getty's first instinct is to throw lawyers at you, each of you has to determine for yourself whether fighting back is a viable option.  Following these three tips will help minimize that possibility.

[Author's Note: I'd be interested to hear from other lawyers out there if you've had different experiences working with Getty.  Ditto for artists.  Hit me back in the comments section below.]

Fairly Useful, Part Deux: Why It's Always Better To Ask Permission Than Beg Forgiveness

[It's the summer!  Which means all the movies in theaters are sequels, so why should this blog be any different?  Last week I wrote a follow-up to my Death of the Unpaid Internship article and it was a colossal hit.  Can lightning strike twice?  I shall endeavor to find out.]

Several months ago I wrote a post called Fairly Useful: Why Fair Use Is A Simple, But Dangerous Legal Doctrine.  The purpose of that post was to provide a bird's eye view of Fair Use, a concept that many artists know about but don't generally understand.  In that article, I said that Fair Use is "extraordinarily dangerous" when misunderstood and that if you're going to use someone else's copyrighted work, you're better off asking for permission.  Whereas that article was all about discussing the elements that make up a fair use claim, this article will elaborate on why asking permission is better than begging forgiveness.  And, as I often do, I will illustrate why with a story from my early producing career.

*****

I was on the second week of a location shoot somewhere near Bowdoin, Maine and I was looking for an eye-catching outdoor backdrop in front of which to film a conversation between our on-air personalities.  We drove around for what felt like hours looking for a suitable location and discovered that if there's anything  Maine lacks in multitudes, it's eye-popping outdoor backdrops.  Fortunately, we found our way to a quasi-civilized area and parked in front of a deli with a colorful and swirly logo.  Since we weren't going to film inside the deli, I decided not to ask for permission to film the logo.  Here's why:

1. We weren't bothering the deli owner or his customers.
2. We weren't on the deli owner's property.
3. The logo, while conspicuous, was in the background.
4. We would be there for a total of five minutes and the scene, when edited, would last ten seconds.
5. The show's format required a lot of driving, which meant that much of the filming took place inside a car... I was desperate to break up that monotony.

These were all bad reasons.  It didn't matter that we weren't in anyone's way, that we weren't on private property, or even that we'd be gone before the traffic light changed from yellow to red.  On the off-chance the owner saw his logo on TV, we would be, in the words of our in-house counsel, "royally buttf***ed."  He could sue us for copyright infringement, and while the issue was in dispute, we wouldn't be able to use the scene.  Either the show would be pulled from all future time slots - causing a significant problem for the network since ads are sold weeks and months in advance - or we would have to reshoot the scene and cut it into the show, which is the kind of expense that can only be made after firing an unwitting associate producer and using his salary to cover the cost of the reshoot.

Which isn't to say we would lose a lawsuit if the owner decided to sue.  This was a straightforward a case of fair use because it met all the requirements under the law.

1. The use was transformative because it didn't comment on the logo or the deli.  It was simply a tacit acknowledgment that the deli existed.
2. The use was non-commercial (even though the show was made for commercial reasons, that profit didn't arise due to use of the logo).
3. The use was minimal since it was in the background of a scene lasting no more than ten seconds.
4. The use did not negatively affect the market for the deli - if anything, I figured it was a bit of free advertising.

But that didn't matter.  As our lawyer explained to me when I returned from the shoot, getting sued and then winning (by successfully defending on a fair use defense) was still a loss because the amount of time and money required to defend ourselves would never be recouped.  If I had asked for permission, the best case scenario was that we would be allowed to film the logo.  The worst case scenario: the owner would either charge us a licensing fee, or say no outright and we would have to film somewhere else.  Either way would have been easier and cheaper than plodding through arbitration hearings or waiting to see if a judge would buy our fair use argument.

Lucky for me, history didn't pan out that way.  The owner was alerted to the sight of several video cameras milling around near his property and came to investigate the hubbub.  Even though I was a lowly associate producer, I was the only one in charge at that moment, so I took full responsibility (which mostly looked like groveling and blaming the cameraman).  Ultimately, the owner approved of what we were doing and signed a release for the logo.

*****

For artists, it's tempting to throw the dice and assume that you won't be sued.  Suing for copyright infringement is damn hard, and requires registration with the Copyright Office.  And many of those that threaten to sue are either bluffing or have dramatically underestimated the cost of following that threat all the way through.  But as a lawyer, I can tell you that despite all that stuff being true, taking the risk is still not worth it.  For every empty threat that gets made, I can point you towards a legitimate copyright lawsuit.   And when the time comes for you to actually beg forgiveness, it never works - especially with corporations.

You should always always always ask for permission because even if the copyright owner says no, that loss is nothing compared to what you'll lose if you wind up defending yourself in court.  Because even if you successfully make a fair use argument, it's still a loss.  As an artrepreneur, your money is time - and that should be spent making and selling your work, not defending yourself in federal court.

So the next time you find yourself wanting to use someone else's copyright work in your own art, ask them for permission.  The worst thing they will say is "no."  Compared to a years-long legal battle, that's not such a bad thing.

Fairly Useful: Why Fair Use Is A Simple, But Dangerous Legal Doctrine

I always knew that I would get around to writing a post on Fair Use much like I did a few weeks ago with the Work For Hire doctrine.  If I'm being honest, I should have done this a long time ago.  I have a fluctuating list of 15 to 25 topics for this blog and Fair Use has sat squarely at the top for almost six months. The only reason I neglected it: a healthy man-sized dose of procrastination (by which I mean I was more interested in writing about other topics).  But two things happened this week that made me realize I had to finally tackle the purple-fanged monster sitting at the top of my list.  First, I was asked by several readers to discuss Fair Use in greater depth than I have in the past.  And second, I was accused by a reader (who is not a lawyer, by the way) of not understanding how Fair Use works, an allegation that made me so mad I almost hulked out.  I'm certainly not perfect (my wife will regale you with stories confirming this fact), but I can guarantee you that if I'm writing about it on this blog, then I know what I'm talking about.

So in an effort to prove that naysayer wrong and shore up my ego, here's my take on what you need to know about Fair Use, a widely misunderstood doctrine that is used by artists and non-artists alike, oftentimes without even realizing they're doing it.

What is Fair Use?

Normally, when you use someone's copyrighted work without permission, that would constitute copyright infringement (only the owner has the exclusive right to reproduce, sell, or otherwise use their work) and you could end up having to fork over a handsome fee to the copyright owner if you're sued and you lose.  However, Fair Use is a legal defense that you can assert in certain situations that gets you around that pesky infringement thing.  In essence, Fair Use allows you to legally use someone else’s copyrighted work without their permission.  That's all it is.

But while the general concept of Fair use is easy to understand, it's not always easy to apply in practice.  That's because, like most things in the law, there's no hard and fast rule about it.  You have to apply a number of different factors (four of which are used regularly) to the situation and balance them against each other.  I've listed them below in their original Legalese, along with  modern English translation:

1. The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes
   • English Translation: What is your intended use of the original work? Profit?  Parody?  Education and criticism?  Has your use transformed the expression or meaning of the original work?  Profit is generally frowned upon, but parody, education, and news reporting/criticism are more likely to be given Fair Use protection (without Fair Use,  CNN would get sued every hour of everyday). The more your use changes the original work, the better a Fair Use defense will be.
2. The nature of the copyrighted work
   • English Translation: Is the original work published or unpublished?  Fiction or Non-fiction?  Fair Use is generally more applicable if the work is non-fictional (based on facts) or published.
3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole
   • English Translation: How much of the original work are you using?  All of it? Some of it?  The less you use, the more likely you can assert Fair Use.
4. The effect of the use upon the potential market for or value of the copyrighted work
   • English Translation: Does your use deprive the copyright owner of income or undermine a new or potential market for the copyrighted work?  Basically, if your use can take money out of the copyright owner's pocket (even if you're not using it for your own personal financial gain), then that's infringement.

I could spend days discussing each of these factors in greater depth, and maybe at some point down the line I'll devote individual blog posts to the vagaries and intricacies of each one.  For now I'll just say that none of these factors intrinsically carry more weight than the others and judges have a lot of discretion over how to balance them.  For instance, a lot of people assume that if they don't profit from the use of someone's copyrighted work, that will be enough to allow them to apply Fair Use.  But some courts have de-emphasized the importance of financial gain; if the copyright owner's bottom line could be negatively affected, then using their copyright can still be infringement (and thus not Fair Use) even if the infringing party never makes a cent.

Misconceptions

Like the profit issue I just mentioned, there are a bunch of  other misconceptions people regularly make about Fair Use, so I thought I'd mention a few of the more common ones here.

1. Acknowledgement of the source material will give you Fair Use protection.  Not even a little bit.  While it's a good CYA move to credit the artist/author/copyright owner anytime you use their work (whether you asked for permission or not), simply giving them credit doesn't get you off the hook.  You can still be sued for infringement and found liable, based on how the factors above are weighed.
2. The copyright owner can prevent your Fair Use of their work simply by adding a disclaimer.  Also not true.  In the past I've seen artists try to prevent unauthorized use of their works by attaching a note or disclaimer saying something to the effect of "this work is not subject to Fair Use."  Um, yeah buddy, it is.  Sorry.  Fair Use is always applicable and takes precedence over the author's desire, assuming of course that your use falls within the above-mentioned factors.
3. If you copy the entire work, you don't get Fair Use protection.  Like I said before, the amount of the work used is only one factor that is considered.  Now using the entire work certainly won't help you and I generally advise against it, but depending on the other three factors (especially if your use transforms the meaning or expression of the original work), your may be able to use the whole piece and have that be a Fair Use.
4. Fair Use will prevent you from being sued.  NOPE!  This is probably the biggest mistake I see people make and it's an assumption that makes Fair Use extraordinarily dangerous, so watch out.  Do not assume that Fair Use is some "get-out-of-jail free" card that will protect you from litigation.  Fair Use does not prevent you from being sued.  Ever.  Fair Use is what lawyers call an "affirmative defense" and it can only be asserted after you've been sued.  This is why it's really important that artists don't rely wholesale on their understanding of the doctrine, even if they're right!  While Fair Use can be an effective tool, it can only be exercised once you're in the middle of a legal kerfuffle which will cost you lots of time and money.

As with many of the topics I discuss on this blog, I over-simplified here and left some stuff out for the sake of brevity.  My goal here isn't to give you a Master's level understanding of the details and intricacies of Fair Use - or any legal doctrine for that matter.  Rather, I'm trying to make you aware of the forces you play with when you use someone else's copyrighted work.  Whether your use of something qualifies as Fair Use actually depends very heavily on the specifics of your case.  And even if you think your use qualifies for Fair Use protection, don't simply make that assumption and leave it there.  Ask for permission to use the work, and if you elect not to ask permission, seek professional legal advice to see if your intended use is covered by Fair Use.  

Fair Use is no mystery, but if you don't treat it with respect, it can do irreparable harm to you.  Just ask Shepard Fairey.

Ask Greg: Why You Don't Need To Register Your Copyright or Trademark Even Though You Should

I get lots of questions from artists with legal conundrums. Lots. And most of those questions tend to be variations on some common theme. So when I notice a pattern emerging, I'll wait for a bunch of similar questions to build up and then do a blog post on it - usually framed around an interesting new story, personal experience, or some other flight of fancy. Sometimes I'll discuss it in such a way that the question I'm answering is buried in the overall telling, that way it's not obvious that I'm addressing an issue that several people are facing. The question I'm answering today is a little different though, since it may in fact be the most asked question I receive. So instead of addressing it in conjunction with some framing device, I'm just going to attack it head on so there's no ambiguity. And if you like this no-nonsense approach, let me know in the comments section and I'll make Ask Greg a recurring column.

*****

Q: When should I copyright my work?

A: Never. Never ever. Let me say this as clearly and as loudly as I can: you never need to copyright your work because under U.S. Copyright Law, copyright attaches to the work automatically from the moment the work is "fixed in a tangible medium of expression." That copyright is there to protect your right to own and exploit the work and it exists independently of any other considerations: you don't need to tell anybody that the copyright belongs to you and you don't need to attach the famous © symbol. You don't even need to sign your work (although you should absolutely do all those things anyway). There. Question answered, your job is done.

Okay not really. Because this question isn't really asking whether you should copyright your work, it's asking whether you should register your work. And that is a wholly different calculus. I've talked in the past about where you should register your work (the most common is the U.S. copyright website) and how you can get that registration, so I won't go into that again here. Instead, I will tell you why registration is worth it, even though you don't have to.

Why You Don't HaveTo Register Your Work

Because Copyright Law already protects your ownership over the work. The law doesn't stop working for you just because you elect not to register your copyright with the government. Also, registration fees can really add up since each piece of work must be registered individually. So the more art you create, the more expensive it will get for you to register your art. Someone asked me last week if they could batch register a group of works at the same time. The answer is no, unfortunately. Registrations protect individual works of expression, so unless the separate pieces are meant to be viewed as part of a whole (i.e. short stories in an anthology), they have to be registered solo.

Why Registration Worth Is It

Well first off, if you decided to sue someone in for infringement - i.e. someone uses your work for profit without your permission - you will have to register the work with the Copyright Office before you can bring the lawsuit into court (it's cheaper to register online). So frankly, having that registration beforehand is just easier. But beyond that, registration is a great way to protect your copyright because it creates an official government record demonstrating when your work was created. They even send you a fancy registration certificate for your records. So if you do eventually sue someone for infringement, that registration is proof that your work preceded the infringing use. Of course, having a copyright registration isn't the only way to prove that your work came first... but it is the best way by far. That's partly because as an official government record, copyright registrations are granted a lot of authority in a courtroom setting (government documents are self-authenticating, which means your lawyer doesn't have to prove that the registration is what it claims to be. This, by the way, is good deal for you - the less time your lawyer spends proving a document's authenticity means you're spending less on attorneys fees).

You can read all about registration procedures and a few other benefits here if you're so inclined. The basic gist is that registration isn't really necessary most of the time unless you need to sue someone. Think of it this way: Copyright registration is like auto insurance. You may never need it, but if you get into a car crash, it'll save your butt. That said, if you don't register your copyright but you do suffer from infringement, there are still all sorts of ways you can go after the infringing party - cease and desist letters, DMCA takedown notices, and demands for licensing fees, among others.

Added Bonus: What About Trademark Registration?

While Copyright Law protects works of artistic expression fixed in a tangible medium (i.e. art), Trademark Law protects any word, name, symbol or device, used by a person in commerce (i.e. a logo you use in business, your company name, or even a catchphrase). Trademark registration shares many of the same characteristics as a copyright registration - the main difference is the manner in which the work gets infringed.

Similarities: Just like copyright, you don't need to register your trademark in order to have protection under the law. Once you start using a trademark in commerce, it will automatically have some level of protection against infringement. If you do decide to register your mark with the U.S. Patent and Trademark Office (USPTO), it will requires a fee and you'll get a tony little certificate of registration indicating that there is now an official government record of your trademark.

Differences: Unlike copyright, if you don't register your trademark with the USPTO, the protection you'll have over your mark will be regional only - an official registration gives you nationwide protection (for example: I start a company called "Greg's Beets." If I register my company name, then anyone in the country who uses that name could be subject to a trademark infringement lawsuit. On the flipside, if I don't register the "Greg's Beets" corporate name with the USPTO, my mark will only be protected within the state). If you want, you can actually register your mark directly with the state as well: the USPTO website has a page devoted to all the state sites where you can register your mark. Most registrations have to happen with each state's Secretary of State.

One Last Note About Symbols

When you have a piece of copyrighted art, you are allowed to use the © symbol whether or not you choose to register with the Copyright Office. The © is a gift and you should absolutely use it at every opportunity because it signals to the world that your work is protected (a lot of people assume that if the © is missing, the work is not copyrighted; even though that's not true, don't give them the opportunity to think that).

The same applies in trademark situations: You are allowed to use the ™ symbol even if you don't register your mark and your work is protected whether or not you use it. But as with the ©, you should still use it. The ™ indicates that you intend to use the mark in commerce. It's just good business to get in the habit of putting a ™ on your trademarks.

That said, do not use the ® symbol without officially registering your mark with the USPTO. That mark is reserved squarely for marks that have been registered and use of it could result in a fine of some kind.

Illegal Graffiti Gets Copyright Protection Because It Is Still Art

Everyday on my walk home from work, I see this or something like it tagged to the side of my apartment building:

Graffiti intrigues me because of its contentious nature in "civilized" society.  The artist in me is excited by the skill and craftsmanship involved in making something like this (although I can barely read it; it might as well be written in Klingon).  But the law-abiding citizen in me tempers that excitement with the knowledge that graffiti, unlike most other forms of art, is predicated on using someone else's property as a canvas... often without their consent.   And because graffiti is usually illegal, it raises a decorum problem that often confuses people into thinking that the normal rights of copyright ownership don't apply - i.e. "you can't copyright protect vandalism because it is illegal."  But that's bunk.

I've known a fair few graffiti artists over my lifetime and I can safely say that they're not a populace that's overly concerned with asserting ownership rights over their work.   Primarily because asserting ownership would be an admission of guilt resulting in some form of criminal penalty such as a fine or even jail time (there's a reason Banksy can't revealed his identity, after all).  The other part of it is the political motivation that often accompanies graffiti: that property ownership is a social construct anathema to the public good.  Why else vandalize someone else's building with such artistry and flair when a sledgehammer or molotov cocktail can drive home the same point in a fraction of the time?  [Author's note: of course, there's always the possibility that the graffiti was commissioned by the property owner, in which case, the tagger is not burdened with criminal concerns and will want to assert and maintain copyright ownership. Here's an interesting NY Times article from 2007 about graffiti artists who were upset when their commissioned works were mistaken for vandalism and photos of the graffiti ended up being published in a book without their permission.  If you're a graffiti artist who is hired by a paying party, you should really check out my last post on work-for-hire.]

But make no mistake about it, graffiti artists, even the covert ones tagging buildings without permission, do have ownership rights over their work.  Graffiti is absolutely 100% protected under U.S. Copyright Law and I'll have words with anyone who says otherwise.  Our copyright law lists the following types of works that are granted copyright protection:

1. literary works;
2. musical works, including any accompanying words;
3. dramatic works, including any accompanying music;
4. pantomimes and choreographic works;
5. pictorial, graphic, and sculptural works;
6. motion pictures and other audiovisual works;
7. sound recordings; and
8. architectural works

And while graffiti (along with many other forms of art) is never explicitly mentioned anywhere in our copyright laws, it's clear that the list was purposefully left open-ended to grant protections to art forms that hadn't yet been invented and hadn't been contemplated by the drafters of the law.  I should also point out that nowhere in our copyright law does it say that a type of art forgoes protection simply because it could be illegal.  That's what this article by Celia Lerman argues and I agree without reservation.   Copyright law places no judgment on art, the motivation behind the art, or the form in which the art takes.  It is, for all intents and purposes, judgment neutral.

The fact that an artist can own the copyright to a piece of illegally made art that emblazons the side of someone else's property creates an interesting dynamic when a third party takes a photograph of that graffiti (like the one I took above) and attempts to profit off of it.  That's infringement of copyright and doing so without the artist's permission could actually result in the artist taking you to court and winning monetary damages (if the artist isn't concerned about the criminal ramifications, obviously).  Luckily, I'm in the clear because I can assert Fair Use over my photo since it was taken for non-commercial, educational purposes.  But if you're like the photographer in that NY Times article I linked to above, watch out!

So ownership over the copyright to graffiti is vested in the artist regardless of its legality.  But that's not the end of the story, because that art, while owned by the artist, is completely reliant on someone else's private property.  And property is kind of a big deal in this country.  The right to property is mentioned explicitly in the Fifth and Fourteenth Amendments, and the Third Amendment is built entirely around it.  Let's not even go into the entire legal disciplines that arose around property law and made my life in law school an unwinnable shit-show.  Property is important, which means that the needs and wishes of the property owner will almost always supersede the rights of the graffiti artist.  So when my landlord decides to blast off the graffiti adorning my building with a power washer, he can do that without fear of legal repercussions from the artist (although why bother?  The taggers are just going to show up again).

The truth is, despite the political hand wringing over it, graffiti is just like any other type of art form and gets the same protections.  What makes it difficult at times is its relationship to the surrounding environment.  And unfortunately, as long as graffiti remains illegal, the oath I took to uphold the law will mean I have to walk a fine line between the rights of the artist and the rights of the canvas owner.  It will be, for the foreseeable future, an issue that tugs on my Gemini heartstrings.

Even When You Sell Your Work, You Still Own Your Work

My cousin Danny and his wife Lira are talented fine artists and painters. Every so often, they'll hold open studios at their home and I like to attend so I can see what they've been working on recently. During the last open studio, one of Danny's neighbors decided to buy a painting. After a very brief discussion over price, the neighbor went away and reappeared five minutes later with cash. He gave Danny the cash, they shook hands, and the neighbor walked away with the painting. The entire transaction took three seconds. There was no discussion regarding return policy, dissatisfaction with the art, or ownership over the art's copyright upon conveyance. Honestly, Danny didn't seem all that concerned about losing his rights to the work once it left his studio, and thus he felt no compulsion to memorialize the sale in writing with a discussion over terms of the sale.

And you know what? He was right not to be worried, because under U.S. Copyright Law, he still owns that work! You see, according to this circular put out by the U.S. Copyright Office:

Mere ownership of a book, manuscript, painting, or any other copy or phonorecord does not give the possessor the copyright. The law provides that transfer of ownership of any material object that embodies a protected work does not of itself convey any rights in the copyright.

Any or all of the copyright owner’s exclusive rights or any subdivision of those rights may be transferred, but the transfer of exclusive rights is not valid unless that transfer is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent... Copyright is a personal property right, and it is subject to the various state laws and regulations that govern the owner­ ship, inheritance, or transfer of personal property as well as terms of contracts or conduct of business.

In plain English, this means that when an artist sells his artwork to a buyer, he is only selling the physical object - the wood, canvas, and paint - not the artistic expression that created the painting. In order for the copyright to be conveyed along with the artwork, it must be done explicitly in writing. Therefore, even though Danny's neighbor is now the owner of the physical painting, Danny still owns the artistic expression of that painting, and retains full control over how to use, display, and promote that image.

[Author's note: This does not apply to artists who are hired to create a custom work of art. That's a work-for-hire scenario and the copyright belongs to the person who commissioned the work, not the artist who creates it.]

Here's another recent example: the wedding photographer I hired to make me look good on my wedding day retains the copyright to my wedding photos. If he decides to promote his business using images he took of me and my wife, I have no say about it, even though I own the physical prints and JPEG files of those photos (as long as I'm not defamed, but that's a blog post for a different time). So this awesome pic of me?

Even though it's my face and my killer smile, I can't make any money off of it. I should add that buyers DO retain the right to display the physical work for non-commercial purposes, but will of course open themselves to a lawsuit if they attempt to make money off a copyright they don't own.

So if you're a fine artist and you're concerned that by selling your work you lose all rights to it, don't worry. You will control that work for as long as you live (and for 70 years after you die), even if you've long since sold the piece of canvas it was painted on.

[Author's Update, Feb, 18th, 2013 1:17pm: Danny told me today that following a sale, he will provide buyers with a Bill of Sale informing them that the copyright remains with him. This is a good practice and I highly recommend that everyone out there adopt this or a similar practice. Too many artists think that once they sell the work they have to give up the copyright, and that's just not the case.]

Sweat the Business Stuff Redux: Patience and The Art of Turning Your Art Into Your Business

While visiting my family in Connecticut over the holidays, my mom came to me on behalf of a friend who had a legal question.  This friend "Sally" is a middle school teacher and had developed a unique idea for an educational curriculum for science teachers.  She wanted to market and sell the curriculum, but had some concerns over whether she could use the title she came up with.

Since I was in the Christmas spirit and Sally was operating on a budget of less than zero, I told my mom that Sally could very easily (and for free!) run a trademark check at the U.S. Patent and Trademark Office website (titles are protected under trademark law, but only if registered through the USPTO).  If the title was available, the website explained how she could register it and what it would cost.  I also suggested to my mom that Sally find a way to hire a lawyer despite budget constraints because A) I'm not licensed to practice law in Connecticut and therefore couldn't provide anymore worthwhile advice, and B) there might be some trademark dilution issues if the title was too similar to something else already out there.

A few days passed and my mom told me that Sally had gone to the USPTO website but ended up without any answers.  To Sally, the website was difficult to navigate and understand; she wound up more confused than ever.  When my mom asked me what Sally should do, this was my answer:

"Sally should hire a lawyer.  If she can't afford one, she'll have to become her own.  That will mean spending a lot of time being confused at first.  But eventually she'll understand and be a better business owner because of it."

In the past, I've spoken about sweating the business stuff, but I haven't really detailed what that means for all you budding artrepreneurs out there.  So by way of closing out the year at The [Legal] Artist, here are the top three things you and Sally need to do to turn your art into your business:

(1) Have patience.  Seriously, this may be the most important thing I ever tell you.  Artists, by nature, are doers who thrive on activity and creation.  That's a wonderful thing in my opinion, but successful businesses require someone behind the wheel to be thinking and planning, playing the long game (for your Boardwalk Empire fans out there, think of it this way: every Lucky Luciano needs a Meyer Lanksy).  And playing the long game requires patience.  In Sally's case, if she can't hire a lawyer to walk her through this process, she's going to have to do it herself.  Which means looking at a lot of documents she won't understand.  Sally will end up frustrated and agitated and the business will take off a lot slower than she wants.  But that's okay!  If she has patience and keeps at it (with a little help from Google) these complicated things will eventually seem less complicated.  When I started law school, I had to read each case 3-4 times before I understood what I was reading.  With some practice, I learned how to do it in a fraction of the time.   If Sally spends an hour or so clicking around the USPTO website, eventually it will start to make sense and she won't need to pay a lawyer $400 an hour to do something she can do by herself for free... if only she has some patience with the process. 

(2) Decide what kind of form your business will take.  There's no doubt about it - people take you more seriously if you're a business.  Years ago when I was a young television producer, I went out to pitch a number of TV show and script ideas.   One network executive looked me right in the eye and said "we like you, but we will not do business with you until you incorporate."  A week later, Hammerspace Productions LLC was born. 

If you want to turn your art into a business, then you're going to have to actually turn it into a business; that means deciding what type of business you want to create.  For artrpreneurs, the most obvious choices for business type are sole proprietorships (if you're the only employee) and LLCs, mainly due to the low start-up costs and paperwork.  There's a good article here explaining the difference, but the gist is that with an LLC, you pay income tax for both yourself and the business, but the business shields you from personal liability (if you're sued, they can only come after business assets, not your personal assets).  With a sole proprietorship, you only pay taxes on the profit you make, but you are open to personal liability (meaning someone can sue you for the acts of your business, putting your personal assets at risk, such as your checking and savings accounts, and even your house).  In a sole proprietorship, you generally do not file any documentation with the state, whereas an LLC requires certain documentation to get going (such as a federal EIN, state and federal tax documents, etc).  Check with your state's Secretary of State to find out wha documents they require.

(3) Draft a business plan.  This is a tough thing to ask of artists because it requires them to think about things like taxes and finances and long-term planning.  Hell, even after seven years producing and three years of law school (and dozens of jobs and internships in between) I'm still struggling with it.  But a business plan is extremely necessary for two reasons:  First, it shows outsiders that you're serious and have given your business some thought.  Second, it lays out a path for you and helps you understand steps you need to take to get your business off the ground.  A business plan need not be written in stone.  It should be a living document that grows with the business.  Put in as much or as little detail as you want.  Regardless of whatever form the plan takes, it should impart one clear message: you have thought about this business and know what is required to make it a successful one.

As you build your business, there will be a lot of little things to consider.  How will you accept payment?  How will you market your wares?  Will you pay taxes yearly or quarterly?  All of these things are important on some level, but getting these big decisions made will take some time, so don't rush it.  Have a little patience.  I promise that you (and Sally) will be glad you did.

Have a Happy New Year everyone!