Tattoos and Copyrights

This week’s post discusses a growing lawsuit trend in the entertainment industry. Namely, tattoo artists suing content producers when the work they tattooed upon a famous individual is reproduced in a movie, video game, etc. The trend began a few years ago when the artist responsible for tattooing Mike Tyson’s face sued Warner Bros. before the release of The Hangover Part II. The basis for the artist’s claim was the movie recreating Tyson’s tattoo on Ed Helms' character’s face. The case ended up settling out of court, and there was no ruling on the extent of copyright protection for tattoos being reproduced in other forms of media.

Recently, a company sued the maker of the NBA 2K video games for copyright infringement for recreating NBA players’ tattoos in the game. Due to a favorable initial ruling for the video game maker reducing its possible liability, the game maker is asserting some strong claims against lawsuits of this type, including that the use should be considered a fair use and is a de minimus use, meaning it's too trivial to merit consideration. It would be helpful to have judicial decision directly addressing the issue of recreated images of tattooed individuals.

Personally, I find this trend, and the mere fact that these lawsuits exist, annoying. While I’m inclined to acknowledge some tattoos can be creative enough to merit copyright protection, I cannot comprehend copyright law being used to sue third parties because they recreated a true-life representation of the tattoo artist’s client in some form of media. With the prevalence of tattoos on many people, the risk to content producers can be very high unless they take precautions to protect against such lawsuits. The primary methods to avoid being sued are to seek a license from the tattoo artist, have the tattooed person seek permission and/or indemnify you, or do not reproduce tattoos at all.  

Hopefully, the courts or congress (yeah, right) will address this issue and clearly define the copyright rights of tattoo artists and their patrons as it relates to portrayals in media. It seems to me if a patron obtains a tattoo he should be allowed to be photographed or otherwise reproduced without having to receive the tattoo artist’s permission. It should be an assumed part of the deal—an implied license for the patron to give consent to others who are reproducing his image. Copyright law should not be used to prevent someone from being truthfully depicted in various forms of media just because he is tattooed.     

As of right now, there have not been any lawsuits in the comic book world, but if you are in the habit of drawing famous tattooed people, or otherwise drawing tattoos on individuals in your work, you should proceed carefully.

For more on the NBA 2K lawsuit, read The Hollywood Reporter story here.

Side note: If you’re famous or on a career path where your image will be reproduced and you want to get a tattoo, you may want to have the artist sign a release giving you complete control over the design and reproduction rights. Your production partners will thank you. 

Protecting Your Work Online Using the DMCA

Protecting Your Work Online Using the DMCA

            I have recently been asked a number of times about what to do if someone is distributing your work online without your authorization. It is a great question, and there are a few options.

Obviously, you can reach out to the person distributing your art online and ask them to take it down. Frequently, this will be enough, and it is an approach that you can take in just about every instance where someone has posted your work online. The potential downside to this option is in how the person reacts. Sometimes, he will ignore you, and you will have to resort to the options below. Sometimes, he will engage you in a conversation about what he has done and what you are doing, and this can be an opportunity to educate him about your work and your rights. Sometimes, however, he will be defensive and argue with you, which can be stressful and an unproductive drain on your time. Even with the downsides, this is still a good option in many cases.

Another option, and the harshest, is to sue him. If someone is using or posting your work online without your permission, it is likely to be a copyright infringement. However, this can take a long time to wind through the courts, cost a lot of money up front, and, depending on the circumstances, it can make you look like a bully.

My favorite option to remove infringing content from the internet is to send a Digital Millennium Copyright Act takedown notice. Depending on where the work is posted, sending a DMCA takedown notice is the easiest way to enforce your rights. The DMCA was enacted in the late 1990s, and it includes a provision that limits online service providers’ liabilities for copyright infringement if they register with the Copyright Office a designated copyright agent to receive notice of infringement, post the information on their website for the public to access, and if they promptly respond to proper takedown requests sent to this copyright agent.[1] Online service providers are not required to take down material that is alleged to be infringing. However, if they receive a takedown notice and do not act, then they have been placed on notice of infringing materials, and they may face liability as a secondary infringer.[2] Due to the way this law is structured, online service providers almost always take down allegedly infringing material as soon as they are notified. Personally, I find this method to be one of the easiest ways to quickly remove infringing material from the internet, particularly if one website has a lot of infringing materials on it.

For example, if you are an online marketplace like Etsy where people are uploading and selling homemade items, you would not want to be held liable for copyright infringement for any infringing items being sold on your website by your users. So, you would register a copyright agent with the Copyright Office, usually someone in your legal department, and you would list the copyright agent’s email address in an easily accessible area. If your copyright agent receives a proper takedown notice from someone who believes their copyrighted work is being infringed, and your website acts quickly to remove or disable the allegedly infringing content, then your website would not be found liable for secondary copyright infringement.  
In order to send a DMCA takedown notice, you must send the following information in writing to the designated agent of the service provider:

(i)                 “A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

(ii)               Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site.

(iii)             Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material.

(iv)             Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted.

(v)               A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.

(vi)             A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.”[3]

 Once you have sent a takedown notice containing all of the information above to the designated agent, a site will typically remove or disable the allegedly infringing material in a few days. The alleged infringer does have the ability to challenge your takedown and have the material reposted, but if it is clearly an infringement, they won’t.

The DMCA takedown notice is an effective and quick way to protect against the unauthorized distribution of your work online. Once you know how to use it, it will quickly become your favorite method of removing infringing material from websites.

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[1] Online Service Providers, U.S. Copyright Office, http://www.copyright.gov/onlinesp/ (last visited July 5, 2016).

[2] Id.

[3] 17 U.S.C. §512(c)(3)(A)

Wizard World Chicago

I'm excited to announce that I will be presenting my Comics Startup 101 panel at Wizard World Chicago on Saturday, August 20 at 4:00. If you will be attending the show, I hope you'll stop by.

Joining me on the panel will be Wesley Sun, writer and communications director for Sun Bros. Studios,  Ali Cantarella, creator of The Hasty Pastry and founder of The Wet Stain, and Dirk Manning, the creator of Tales of Mr. Rhee and Nightmare World and author of Write or Wrong: A Writer's Guide to Creating Comics. This great trio of creators has a diversity of experiences, and they will share their knowledge and insights on the business and legal issues of making comics with those in attendance.

The Power of the Olympic Trademarks

          This is my first non-comic book related post, but as it says in the header, this is a comics and entertainment law blog. As such, it seems like the right time to look at an issue you will be seeing over the next few weeks, if you haven’t noticed it already. The 2016 Summer Olympics start today in Rio, and the United States Olympic Committee (“USOC”) is notoriously aggressive in defending its trademarks. If you are not an official sponsor of the Olympics and are thinking about trying to capitalize on the games through marketing or social media, you may want to think again.

In the U.S., and in all countries that have hosted the games, there are laws protecting the intellectual property associated with the Olympics.[1] In the United States, the Ted Stevens Olympic and Amateur Sports Act gives the United States Olympic Committee the “exclusive right to use:

(1) the name “United States Olympic Committee”;

(2) the symbol of the International Olympic Committee, consisting of 5 interlocking rings, the symbol of the International Paralympic Committee, consisting of 3 TaiGeuks, or the symbol of the Pan-American Sports Organization, consisting of a torch surrounded by concentric rings;

(3) the emblem of the corporation, consisting of an escutcheon having a blue chief and vertically extending red and white bars on the base with 5 interlocking rings displayed on the chief; and

(4) the words “Olympic”, “Olympiad”, “Citius Altius Fortius”, “Paralympic”, “Paralympiad”, “Pan-American”, “America Espirito Sport Fraternite”, or any combination of those words.”[2]

The statute also gives the USOC the exclusive right to license the trademarks to sponsors,[3] and it allows the USOC to file a civil action against any party using the Olympic trademarks without its permission.[4] The Supreme Court has even ruled that unlike in traditional trademark lawsuits where a suing party must show a likelihood of confusion, there is no such requirement for the USOC to enforce its rights and typical trademark defenses are not available.[5] Additionally, the Supreme Court found that the First Amendment does not provide protections against using the Olympic trademarks in commercial speech.[6]

            Through the Stevens Act and court decisions, the USOC has a broader and stronger trademark interest than any other trademark owner. It has also not been shy about enforcing its rights. Recently, it even went so far as sending out letters to companies who sponsor athletes but not the Olympics warning them to not (i) post about the Olympic Trials or Games on their social media accounts, (ii) share or repost media from official Olympic accounts, or (iii) use hashtags involving USOC trademarks such as #Rio2016 or #TeamUSA.[7]

            While this seems ridiculous, based on the statute and court decisions, the USOC just might be able to enforce it. Even though you may be tempted to try and trade on the Olympics to promote or support your brand, doing so could be costly if the USOC finds out.    

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[1] http://www.inta.org/TrademarkBasics/FactSheets/Pages/ProtectionofOlympicTrademarks.aspx (last visited August 3, 2016).

[2] 36 U.S.C. §220506(a).

[3] 36 U.S.C. §220506(b).

[4] 36 U.S.C. §220506(c).

[5] San Francisco Arts Athletics, Inc. v. United States Olympic Committee, 483 U.S. 522, 531 (1987).

[6] Id. at 535.

[7] Rovell, Darren. USOC sends letter warning non-Olympic sponsor companies, ESPN.com, July 21, 2016,  http://www.espn.com/olympics/story/_/id/17120510/united-states-olympic-committee-battle-athletes-companies-sponsor-not-olympics (last visited August 3, 2016).

What is a work made for hire?

What are we talking about when we talk about a work made for hire, also known as a work for hire? Basically, we are talking about work made by an employee for an employer, or a written agreement to create work specifically made by one party for a commissioning party that falls into one of the categories established in the 1976 Copyright Act. Under the work made for hire doctrine, the employer or the commissioning party are considered the authors of the work.

The 1976 Copyright Act defines a work made for hire as “(1) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a “supplementary work” is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an “instructional text” is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.”[1] Later in the Act, it further adds that “the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.”[2]

Under the Act, there are two ways that a copyright eligible work that you create might belong to another: (1) if you are an employee, and it relates to and was made during your employment, or (2) if you entered into a work made for hire agreement and it falls into one of the nine categories listed above.

If you are a creator, you need to be aware of the work made for hire doctrine and how it impacts you. First, if you are working as an employee for an employer, or in a relationship that can be categorized as an employer-employee relationship, then any work you create that is related to your employment or is created for the benefit of your employer will be considered work made for hire. This means that your employer will be treated as the author of the work for copyright purposes. Second, if you are hired to work on someone else’s work, it could be considered a work made for hire if you have entered into an agreement stating such, and if the work falls into one of the nine categories listed above. In both of these instances, your copyrightable contributions to the work will be considered to be owned by the person paying you.

At this time, it is not clear that non-employee contributions to comic books fall under the work made for hire doctrine. If they do, it would be under the collective work provision, and this is the approach typically taken by the major publishers like DC and Marvel. The Act defines a collective work as “a work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.” As you can see from the definition, it is possible that the work someone contributes to a comic book would not fall under the work made for hire doctrine. In order to protect themselves and their intellectual property, the major publishers also include language in their agreements requiring the freelancer to assign any and all rights they may in contributions to the comic book to the publisher. While this is a good alternative solution, it is not as ideal for the publisher. If the work is a work made for hire, then the publisher owns the copyright rights outright. However, if it is an assignment, then the Copyright Act has a provision that would allow creators to reclaim copyright assignments after 35 years.[3] Obviously, this is something a publisher would prefer to avoid.

If you want to create a comic book, then you also need to make sure you understand the work made for hire doctrine, and how it might impact your rights. For instance, if you want to hire a freelancer to work on your comic book, then you would need to have her sign a work made for hire agreement in order to prevent her from obtaining any copyright interests in your book. This agreement should have a provision stating that she is entering a work made for hire agreement, and that all contributions she makes to the work will belong to you. Additionally, in order to further protect your work, it should also include language assigning all of her possible rights in her work to you. This should prevent the freelancer from unintentionally gaining a copyright interest in her contribution to your work. Obviously, if you want the freelancer to have a copyright interest in her contributions to her work, then a different contractual approach should be taken.

If you are being hired to work on someone’s comic book, then the reverse of the above situation would apply. When you are hired to work on someone else’s comic book, they should have you sign a contract. If they do not have you sign an agreement, then you might be able to claim a copyright interest in your contributions to the work. If you do sign an agreement, make sure you understand what it says and what, if any, rights you will be giving to them.

 By understanding the work made for hire doctrine, you will be better positioned to protect your own creative works when you hire freelancers, and you will be able to understand what rights you are possibly giving away when you sign a work made for hire agreement.

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[1] 17 U.S.C. §101

[2] 17 U.S.C. §201(b).

[3] 17 U.S.C. §203