Wait, Wasn’t That

My Substantially Similar Idea?

by Mark Levy and Shaun R. Vavra

Enforcement of copyright rights is a sensitive subject. Copyright infringement is the act of violating a copyright holder’s exclusive rights granted by the federal Copyright Act, and is nothing short of theft. The Supreme Court recognizes copying as “that which comes so near the original as to give every person seeing it the idea created by the original.” The severity of the subject is indicated by the fact that an infringer could be fined from $200 (unintentional infringement) to $150,000 (willful infringement) per act of infringement, or even by a jail sentence.

Infringement is dependent on three components: the holder must have an active or enforceable (registered) copyright, the alleged violator must have access to the copyrighted material, and the duplication must be “substantially similar” to the copyrighted material. Copyright infringement relies heavily on these three prerequisites, with the absence of only one stultifying the infringement process.

As you would most likely assume, the presence of these characteristics is subject to perpetual argument. It is hence the responsibility of the civil or criminal court to organize this mess and to define what is indeed infringement. With this thought in mind, what exactly does the court deem copyright infringement, and what exactly constitutes substantial similarity? The answers to these questions vary vastly from court to court.

The federal Copyright Act establishes the grounds for copyright protection. As the initial creator of a work, you are granted the privilege of the first owner. For a copyright to be valid you must reduce your aforementioned work to a tangible medium like paper, canvas, clay, marble, CD, or DVD. In the United States, copyright attaches automatically upon conception of a work and registration is not necessary, although you should register your work in the U.S. Copyright Office if you wish to sue an infringer.

You can usually prove presence of the information or “access” easily. Presence of the information requires that the copyright infringer of your copyrighted material had access to the material before he copied it. Courts typically will revert to a question of public access to prove presence of the information. For instance, was your copyrighted material displayed on YouTube or at an art gallery, or was it stowed away in your basement? A court ruled in O’Keefe v. Ogilvy & Mather Worldwide, Inc. that although the copyrighted work, the tagline “My card. My work,” was posted on the Internet, the copyright holder failed to prove the defendant had reasonable opportunity to view the work. Therefore, the infringement claim was dismissed. From this you can see that an opportunity to view the work is not always the same as open display.

Substantial similarity is the standard used to determine the level of similarity between two materials. The first rule of substantial similarity is there are no rules. There is no quantitative method to decide whether a duplicate is substantially similar to your copyrighted material. This is arguably the grayest area of the criteria for infringement, and the topic on which most courts vary. Substantial similarity is relied on because you may find direct evidence of copying difficult or impossible to prove. Courts use the judgments of the ordinary lay observer to determine similarities.

There are two categories of substantial similarity: comprehensive and fragmented. Comprehensive similarities are non-literal and often implied, where fragmented similarities are literal, but minor segments. This is the traditional method of approaching an infringement claim. Has the duplicate taken so much of the copyrighted material in either of these categories to have wrongly appropriated something that belongs to the owner? Different courts have since adopted their own methods for determining similarities. The Ninth Circuit created a test called the Total-Concept-and-Feel Test. This test relies on a subjective view to determine whether the “concept and feel” of one work is similar to another. The Second Circuit Court of Appeals uses a test named the Abstraction-Filtration-Comparison Test. This test compares the elements of a work at increasing levels of abstraction, excluding the elements of that work that are not copyrightable. As you can surely predict, different methods will inevitably lead to a spectrum of infringement results.

A problem of substantial similarity arose in the production of the film, Batman Forever. It would make sense that a popular song requires permission before you use it in your video. In the Batman case though, the court was faced with the issue of visual elements. The opening scene sets the scenery, sweeping from street level up to the peak of a downtown building, where a hostage victim stands in peril. In these few seconds a glimpse of copyrighted artwork, primarily the tops of wrought iron sculptures, are captured. Does this scene violate the sculptor’s copyright? In the decision Leicester v. Warner Bros. the court ruled since the sculpture was part of the architectural work of the building it was exempt from copyright infringement. The court basically decided that, in this case, a private sculpture was somehow equivalent to public property.

On the other hand, a 1991 decision, Grand Upright Music, Ltd. v. Warner Bros. Records Inc., heard by the United States District Court for the Southern District of New York, changed the face of the music industry in a more conservative direction. The court ruled that the original copyright owner must preapprove any sampling of music. Sampling was held to be a direct infringement of a holder’s copyright. The court stated, “it is clear that the defendants knew that they were violating the plaintiff’s rights as well as the rights of others.”

By now you are probably thinking, Is there any way to avoid copyright infringement? Although the guidelines for infringement are vague, you can take precautions to avoid any infringement confrontation. The first and probably the most important guideline is: do not copy any material from the Internet or anywhere else for that matter. By default, all of this material is already copyrighted; copying would constitute clear-cut copyright infringement. This holds true for derivative works, too. If your video is derived from a copyrighted work, you won’t be able to use it without written permission from the copyright holder. So no, you can’t change “just a little bit” of the original work.

Secondly, stay innovative. Being original and creative will help ensure that you are not violating any copyright laws.

You should make note though, as always, there are some loopholes. If the source you are copying was created before 1922, you are safe from allegations of infringement. Also in the list of exceptions is music or sound effects that are royalty-free. Exceptions to copying have additionally been granted under the fair use doctrine. Fair use permits limited copying solely for the purposes of reporting, criticism, commentary, and teaching. Lastly, and probably the most straightforward approach is for you to ask the copyright holder for written permission to use his or her work.

As you have probably concluded, copyright infringement is sometimes hard to pin down. If not obvious, it is certainly a demon to be avoided. By following our few guidelines, you can help ensure an unobstructed path while creating art.

Feeding the Starving artist 

WHAT’S IN A NAME?

Sometimes the best title for your work happens to be a relatively famous one that has already been used. It may not have been used as a title for a sculpture or an oil painting, but maybe as a title for a song or a name of a famous person or even a brand of toilet paper.

Titles cannot be protected by copyright. The Copyright Act clearly states that names, titles, short phrases and expressions cannot be registered in the U.S. Copyright Office. (See http://www.copyright.gov/circs/circ34.html)  In other words, no matter how clever (e.g., a play on words), novel, or distinctive a name, title, logo, or short phrase (slogan) is, it cannot be registered in the U.S. Copyright Office. Therefore, at least under the Copyright Act, you can use an existing title or slogan for the title of your project or work of art.

But wait! Intellectual property protection is more than copyrights. It also includes trademarks for identifying the source of goods and services. When it comes to titles, it is the trademark law that can apply. If someone else has used the title or any trademark on his or her products or services, and you wish to use that exact title or a slight variation, you will have to investigate the circumstances carefully.

Trademark law is similar to copyright law. As you know, copyright law allows a user to prevent others from copying his work without permission. Trademark law also deals with an exclusive right that gives the owner of a mark the right to exclude anyone else from using the mark — or a confusingly similar mark — on goods or services in the same channel of trade. In other words, a trademark owner can prevent others from using the same trademark — regardless of whether the mark is registered — or a trademark that is close to the owner’s mark and is likely to cause confusion as to the source of the goods or services.

However, as long as the goods or services are in a different channel of trade, two or more parties may use identical trademarks. That is why certain trademarks used by different parties can coexist, such as UNITED AIR LINES® and UNITED VAN LINES®; and DOMINO’S® pizza and DOMINO® sugar.

The general rule, then, is that you can use a trademark that is being used by another party as long as your channel of trade is different from the trademark owner’s. But there is always an exception: be careful about “famous” marks. These are marks that are so famous, anyone’s use of them on any goods can be actionable by the trademark owner. You know a famous mark when you see it: McDonald’s, Coca-Cola, SONY, etc. If you call your photo “Home of the Whopper,” you may get a nasty letter from Burger King’s attorneys.

Some movie titles have been registered in the U.S. Patent and Trademark Office (PTO), since product tie-ins with novels and movies are common nowadays. In fact, the tied-in products can generate more income for a movie company than the box office.

For example, STAR WARS® was registered in the PTO by Lucasfilm, Ltd. to cover not only the production and distribution of motion pictures and other entertainment services, but to identify paper goods and printed matter, like address books, comic books, notebooks, children’s books, paper doorknob hangers, printed invitations, paper table cloths, trading cards, book marks, checkbook holders and covers, as well as pencils, pens, paper gift bags, greeting cards, napkins, party hats, postcards, stickers, cardboard figures, temporary tattoos, and school and office supplies.

STAR WARS is also used to identify athletic shoes, slippers, children’s footwear, hats, masquerade costumes, masks, pajamas, rainwear, sweatshirts, ties, T-shirts, underwear, wristbands and suspenders.

Trademarks can be searched at the U.S. Patent and Trademark Office web site, http://www.uspto.gov/ to determine whether another party is using a word or expression as a trademark.

As long as a mark is active (i.e., being used continuously on products or services), it is enforceable. In other words, there is no expiration date for trademarks. Coca-Cola®, for example, has been an enforceable trademark for over 100 years.

Since trademarks are in a gray area of law, it makes sense to avoid using an established mark for your title or to seek legal counsel if you are unsure about your rights or the rights of others.

Mark Levy & Ryan Miosek are attorneys with the Binghamton-based law firm of Hinman Howard and Kattell. They specialize in trademarks, copyrights, and the general protection of intellectual property. You can telephone Ryan Miosek at  (607) 231-6804 and Mark Levy at  (607) 231-6991, or contact them by e-mail at rmiosek@hhk.com and mlevy@hhk.com.

Feeding the Starving Artist

The Public Domain

When our country’s Founding Fathers adopted the U.S. Constitution, they wanted to make sure that, unlike in England, no person could have an unlimited monopoly over property, whether it was real property, personal property, or intellectual property. So Article I, Section 8 of the Constitution gave Congress the power to secure “for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”

The “limited times” stated in this section refers to a time period that has changed over the years, as Congress updated the Copyright Act. Between 1909 and 1978, for example, the copyright term was 28 years, renewable once for an additional 28 years. But the 1976 Copyright Act, which went into effect on January 1, 1978, changed the term of copyright from a maximum of 56 years to the creator’s entire life plus 50 years. More recently, Congress acted again, allowing those with copyright rights (e.g., movie makers, song writers, sculptors, 2-D artists, novelists, screenwriters, etc.) to prevent copying part or all of their creations for their entire life plus 70 years. That’s a long time, of course, but still within what Congress defined as a “limited times.”

Looking backward, however, to works created before 1978, the pre-1976 Copyright Act applies. If someone made a movie, for example, in 1970, and applied for a 28-year copyright registration, it would have expired in 1998, unless the copyright holder decided to renew the registration for another 28 years. Then the expiration of the copyright rights wouldn’t occur until 2065.

The Copyright Office provided a handy table for calculating when the copyright rights of a particular work will expire, depending upon when the work was initially registered and whether the registration had been renewed. For instance, following is an abridged timeline for works published within the United States. You can access the rest of the table by visiting

http://www.copyright.cornell.edu/resources/publicdomain.cfm

You can access some of the Copyright Office database at  http://www.copyright.gov/records/. If you don’t know when a work was registered, the Copyright Office can search its database for you for $150 per hour.

Here’s a rule of thumb that may come in handy: any work that was created before 1923 is now in the public domain, regardless of whether the registration was ever renewed. That’s the magic year. All works created before 1923 can be used without permission by the creator of those works. That would include the music of Brahms, the poetry of Shelley, the plays of Shakespeare, and the paintings of Rembrandt. Be careful, though, that you don’t use a modern recording of a Brahms musical piece, since that particular recording is most likely still under copyright, even though the rights to the underlying musical work are in the public domain.

There are exceptions to the copyright law. For example, under the fair use clause of the Copyright Act, in certain situations you may use copy-protected works without permission. See 17 U.S.C. §107. Also, works created by the federal government cannot be protected by copyright. We are allowed to copy part or all of government publications, photographs, videos, soundtracks, etc. That means that you can copy some or all of productions of the Department of Defense, NASA, Congress, the FBI, and the like without obtaining permission.

_____________________

Now that you know how to protect yourself in the “public domain,” who will shoulder the responsibility of promoting your work?  Throughout the contract process an artist should not overlook the minute details with respect to promotion of the display of their hard work. This includes all artists, not just gallery artists.  The producer of a film, the performance dancer, the writer, all should concern themselves with how the work will be promoted and, most importantly, how will it affect their overall bottom line. 

Many galleries, agents, production houses, etc. (“promoter”), will agree to take on the responsibility of promotion of the work.  However, the cost of this promotion most times will be passed on to the artist through higher commission rates received by the promoter. Terms in the contract that address the promotion of the work will aid the artist in realizing the maximum gain for the hard work that has been put into creating it.  As we have said all along, emerging artists should not be timid about insisting on terms in the contract that maximize their gain.  Precedent is a hard obstacle to get around as the artist progresses with his or her career.

Promotion of the work needs to be set out in the contract in detail. Specifically, the artist will want to get in writing who will handle any press releases, handbills, posters, and the all important opening reception.  As mentioned above, many galleries will take on these responsibilities, but will pass on the overall cost to the artist through the commission that the gallery will take on a sold piece.  As added leverage for the artist to reduce the amount of the commission the gallery will take on the sale of the work, he/she may consider assisting the promoter in organizing the promotion of the show.

Whomever takes on the responsibility of promotion, the contract should be clear as to what promotion will be done.  At a minimum, the artist will want to make sure the contract includes terms that address, (a) how many posters will be produced, (b) where will the posters be hung to gain the maximum amount of exposure, (c) who will hang them, (d) how long before the show will promotion begin, and (e) how long will promotion of the show continue after the show has begun.  The more involved the artist can be with the promotion of her/his own show, the more she/he will be able to control the overall passalong costs.

In the end, whether the show is a success or not depends on what was done to get people to attend.  A weak promotion will result in a weak turnout.  Specific terms in the contract will give the artist control to direct how the promotion will be accomplished.  Overall success will depend on the willingness of the artist to get involved and have his or her opinions not only heard – but also included.

Mark Levy & Ryan Miosek are attorneys with the Binghamton-based law firm of Hinman Howard and Kattell. They specialize in trademarks, copyrights, and the general protection of intellectual property. You can telephone Ryan Miosek at  (607) 231-6804 and Mark Levy at  (607) 231-6991, or contact them by e-mail at rmiosek@hhk.com and mlevy@hhk.com.

Lotus Weave, Valerie Brown Photograph

Primer on Contracts:

Know What You’re Getting Into

 – And With Whom

By Mark Levy & Ryan Miosek

We attempt to cover topics having the greatest interest for as many artists as possible. Many of the legal concepts that apply to one type of artist also apply to others. Although we try to discuss topics that matter to all artists, including but not limited to visual artists, graphic artists, sculptors, composers, photographers, moviemakers, writers, and dancers, certain topics are clearly more appropriate for specific artists and their work. For example, musicians are concerned with performances, while visual artists are interested in showings at galleries. But be patient. Over time, we will discuss topics that concern every artist.

Beginning Basics of Contracts

In the coming months we will cover all of the contractual concepts that must be considered before executing a contract.  In this column, it is important to provide the beginning basics of any contract.  In most situations, contractual terms will be moot as both parties will perform as they have provided theywould under the contract.  In cases where one party fails to hold up their end of the bargain (i.e. breach), it will be very important to have the black-and-white contractual terms to fall back on.

It may seem elementary, but the one of the most important terms of any contract is the names of the parties (to the agreement) forming the contract.  In the event of a breach, knowing who the parties to the contract are will save a lot of time and money determining who the proper party to the suit is.  As an artist, you want to know who it is that you are entering into business with.  Is it the individual who owns the gallery, or is the gallery owned by a corporation?  Is the person you are contracting with the person who will ultimately be on the hook for a breach, or is this person a representative of a larger group?  In that case, does that person have the authority to enter into a contract on behalf of the group?  As you can see, knowing who is entering into the contract is not a trivial item, and one that must not be ignored.

The second term that can be overlooked or over simplified in the contract is what exactly is being contracted for?  Recently we met with an artist who was contracting to sell prints of original works for $5 a piece.  This particular artist had drafted a very well written contract laying out all the intricate details, many of which we will discuss in future articles.  When it came to what was being contracted for, however, the contract failed to mention the works to be sold were prints. In the end this simple mistake could have resulted in that artist contracting to sell original works for $5 a piece.  Without specificity of what was being contracted for, a court considering the contractual terms may have read the ambiguity in favor of the buyer.  This is especially so when the artist contracting to sell work is an emerging artist and does not have a reputation in the art community, or another verifiable basis from which the court can determine reasonable selling prices.  

Such a potentially unsavory result leads us to the moral of this section: Never, ever, ever leave anything to chance, or to the interpretation of the court.  If it seems too basic to include in the contract, chances are it will be the term you wished you had included when you find yourself fighting for your rights.

Types of Property

As mentioned in our previous conlumn, the three classes of property are real property, personal property, and intellectual property (IP), which, simply stated, relates to what comes out of your head. You, as creator of an artistic work, can transfer your rights in your creative work by assigning those rights, much like a real property owner can sell a house, or a car owner can sell a car. Or, you might decide to maintain ownership, but allow others to enjoy the work, as would occur when you sell someone a photographic print or a DVD. The latter situation is more like an apartment owner who leases an apartment, or a car owner who rents a car.

Similar to compensation for real or personal property, as the IP owner you have options for receiving payment. First, you may desire objects or services that are valuable; or, (much more often), you may want to be paid in cash. If that’s the case, a one-time payment or lump sum might be agreeable to the person who buys your artistic work. That person is known as the “assignee” – or the “licensee” in IP parlance. Alternatively, the licensee may be able to afford only a portion of your asking price. In that case, you might consent to receive payments over time. Such payments are known as “royalty” fees or “royalties.” An analogy to royalties is the fee a car renter pays to a car rental organization. The driver may pay by the mile, by the day, or a flat fee for a week or for a year. Similarly, the licensee of your artistic work can also pay you a flat, lump-sum fee or a given amount for each unit of time. If your licensee intends to make recordings or prints or postcards or bumper stickers from your work, with your consent, of course, you may decide to receive a royalty fee for each product sold to the public.

Royalties are considered taxable income, and that’s all we’re going to say about that.

If you are promised sufficient payments, you might agree to grant an exclusive license to the licensee. That is, only one party will have the right to enjoy your work. Exclusive licenses are usually considered more valuable than licenses granted to two or more parties simultaneously, a so-called “non-exclusive license.” In other words, non-exclusive licensees usually realize that they may have competition from other licensees, so they will offer you less money for the non-exclusive license. 

In addition to an ongoing royalty fee, you might also ask for a down payment. In this way, even if your licensee does not follow through with his or her promise to sell many copies of your work, you still end up with money in your pocket. How to determine the amount of a fair down payment requires research based on supply and demand. Here is where an attorney who acts as a negotiator can help you arrive at a reasonable offer.

There is more to the subject of licensing, some of which Mark Levy has included in a short paper: “Should I Consider Licensing?” For a free copy of that paper, please contact Mark at mlevy@hhk.com.

Mark Levy & Ryan Miosek are attorneys with the Binghamton-based law firm of Hinman Howard and Kattell. They specialize in trademarks, copyrights, and the general protection of intellectual property. You can telephone Ryan Miosek at (607) 231-6804 and Mark Levy at (607) 231-6991, or contact them by e-mail at rmiosek@hhk.com and mlevy@hhk.com.

Feeding the Starving Artist

             Shakespeare may have been a little quick when he unceremoniously wrote, “The first thing we do, let’s kill all the lawyers.”  Had Shakespeare been around today he just may have wanted to hear what we have to say first, as we take the bold step of trying to “feed” the “starving artist.”  Now that we have your attention, it is our intent in this series of articles to provide artists with resources to ease the contract process, protect the artistic product, and maybe in the end make art profitable.

The first of our goals after recognizing the issues that artists face on a daily basis was to take the guess work out of contracts involving the display, production, and exhibition of art.  Such contracts are not limited to the display of gallery work, but can be applied to film production, performance dance, and writing.  Some of the most important decisions regarding works of art are made at the contract stage, before anything is ever displayed or sold.  Contracts, be they gallery, publishing, or film production contracts, not only capture both parties’ (i.e., gallery owner and artists) understanding of the agreement, but also protect the rights of the artist.  It is easy for an artist just starting out to believe that his or her bargaining abilities are limited due to their possible perceived obscurity in the art community at large.  However, with basic contract knowledge and maneuvering, artists can help to ensure that they are getting the best possible deal with the biggest potential pay-off.

 While some artists do not care to think about their work in monetary terms, at the end of the day even those committed to “the work” have to be able to create “the work.”  It is our belief that with the assistance of legal concepts, artists do not have to sacrifice anything in the way of commitment while making sure they are getting what they deserve.  Contracts that clearly and explicitly provide the basic rights of parties, the payment terms, promotion and advertisement, and selling strategies can go a long way to not only protect the artist and a promoter (i.e., publisher, gallery owner, film studio, etc.), but also show the art community that no one can take advantage of you, the artist.  

With respect to your work as a whole, what you don’t know can hurt you, both in terms of protecting your work and in terms of infringing on the rights of others. So it’s important to know more than how galleries and forums and performance centers work, and how not to be ripped off in contracts to show your work or have it performed. 

Protecting your work and yourself from claims of infringement by other artists is the foundation for the other of our goals in setting up our legal department.  Information and guidance with respect to such issues will help inform and advise you, the artist, about protecting your rights and about respecting the rights of others who came before you. 

In future columns, we will be discussing the copyright law ― both in the U.S. and in other countries ― and the limits of fair use in the copyright law. We will also be discussing the laws of privacy and publicity.

For now, it will be helpful to understand that property, in general, comes in three flavors: real property, personal property, and intellectual property. Real property covers land and things affixed to the land, like your house, your studio, your shed, your factory. Personal property covers tangible things that are also movable, like your clothing, your computer, your tools and instruments, your artist supplies. Finally, intellectual property covers things that come out of your head. And that’s where we come in. 

All three types of property have attributes in common. For example, you can transfer property that you own. We have different words to describe transfers, but the concept is the same for all three types of property. In real estate, a house, for example, is “sold” and ownership rights are conveyed by means of a “deed.” In personal property, goods are also “sold” with a “bill of sale.” In intellectual property, however, rights to your works can be “assigned.”

With all three types of property, the owner may want to own the land or the car or the music, but allow someone else to use it. For real estate, the terms we use are “rent” or “lease.” For personal property, the terms are “lend” or “rent” or “lease.” But for intellectual property, we say the work is “licensed.”

 There is a bit more to this subject, so we will be discussing it in future columns, as well as other subjects, such as:

 • registering your work in the U.S. Copyright Office and why to do that

• copyright notices

• parodies

• derivative works

• public domain

• duration of copyright rights

• co-ownership

• the rights of privacy and publicity

• copyright infringement

• actual vs. statutory damages for copyright infringement, and

• other topics that concern creators of artistic works.

 We look forward to visiting you every issue and, of course, welcome your questions and comments.

Mark Levy & Ryan Miosek are attorneys with the Binghamton-based law firm of Hinman Howard and Kattell. They specialize in trademarks, copyrights, and the general protection of intellectual property. You can telephone Ryan Miosek at (607) 231-6804 and Mark Levy at (607) 231-6991, or contact them by e-mail at rmiosek@hhk.com and mlevy@hhk.com.