Do Dr. Seuss and Fair Use (Comic)Mix? - Part 3

 

            The Ninth Circuit Court of Appeals recently issued a decision in the Dr. Seuss Enterprises, L.P. v. ComicMix LLC case I’ve been following for a while. (You can find my post initial post on the case here, and the post on the district court decision.) After Seuss lost at the district court on its trademark and copyright infringement claims, it appealed. The Ninth Circuit’s ruling overturned the lower court’s decision favoring ComicMix’s fair use defense and upholding the dismissal of Seuss’ trademark claims.

            To summarize the background, ComicMix decided to publish a book titled Oh, the Places You’ll Boldly Go! that was a mash up of Star Trek and Dr. Seuss. It raised almost $30,000 on Kickstarter, and ComicMix was having discussions with retailers and publishers about further distributing the book. However, ComicMix did not obtain a license from either Seuss or CBS/Viacom (the owners of Star Trek). Seuss sent cease-and-desist letters to ComicMix, but ComicMix believed its book to be protected by fair use. Seuss filed a lawsuit alleging copyright infringement, trademark infringement, and unfair competition in 2016.  In a summary judgment action, the district court ruled in favor of ComicMix by finding that it was a fair use and there was no trademark infringement. Seuss appealed.

            The Ninth Circuit reviewed the district court’s analysis of ComicMix’s fair use defense and found the court improperly evaluated and weighed the fair use factors. I’ve discussed fair use before, but as a reminder, the factors are:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

In evaluating the above factors, the Ninth Circuit disagreed with the district court’s conclusion, particularly in relation to factors one and four.

In analyzing the first fair use factor, whereas the district court found the work to be transformative, the Ninth Circuit did not. The Ninth Circuit determined the book was not a parody as it did not comment upon Dr. Seuss’ works, was not transformative, and primarily used Dr. Seuss’ work as a means to better commercialize its own work. The court placed considerable emphasis on the fact that ComicMix slavishly recreated scenes from Oh, the Places You’ll Go! and other Seuss works in its book.  The copying and recreation of the works was also determinative in finding against ComicMix on factor three.

Finally, the Ninth Circuit disagreed with the district court’s analysis of factor four. The district court acknowledged that there might be market harm to Seuss by allowing the publication of ComicMix’s book, but it found that Seuss failed to submit sufficient evidence to show harm. However, the Ninth Circuit emphasized that fair use is an affirmative defense to copyright infringement, and the defendant carries the burden of proving fair use. The burden was on ComicMix to show that there would not be market harm. ComicMix failed to do so, and the Ninth Circuit found it likely Seuss would be harmed, particularly in its ability to continue authorizing derivative works. In concluding its analysis of the fourth factor, the court said, “The bottom line is that ComicMix created, without seeking permission or a license, a non-transformative commercial work that targets and usurps Go!’s potential market.” (slip opinion at page 30).

I found interesting the court’s emphasis on ComicMix’s dedicated copying of Seuss works, its disregard for seeking a license, or opinion of counsel. Particular quotes that jumped out to me were: “The creators thought their Star Trek primer would be ‘pretty well protected by parody,’ but acknowledged that ‘people in black robes’ may disagree. Indeed, we do.” (slip opinion at page 5) and “Despite being ‘slightly concerned,’ ComicMix did not consult a lawyer or pursue the option of a license.” (slip opinion at page 9) Reading comments like this, you know the defendant is going to be in trouble. I also thought it interesting to note the court mentioned that ComicMix also did not seek a license from the owners of Star Trek. Overall, the opinion definitely took a hostile opinion to the activities of ComicMix.

As a creator, it is important to remember that fair use is a defense. I’ve stated it many times, but claiming your work is fair use will not protect you from a lawsuit. Fair use is evaluated on a case-by-case basis, and educated opinions can vary. For instance, while I would not have advised ComicMix to proceed with their book relying on a fair use defense, as I’ve always thought it a long shot, I also thought the district court’s decision was sound. Apparently I was wrong.

When you use someone’s copyrighted work in your own, you are inviting trouble. If you do so, you should proceed cautiously and carefully and take efforts to make it a fair use.

You can find the court’s opinion here.

Comic Book Recommendations - 2020

 

           I’m often asked for comic book recommendations, but I’ve always found it tricky to provide them. First, I am usually woefully behind on comics. There will be the occasional series I might be temporarily caught up on, but I’m usually months behind. Second, tastes differ. My preferences might not match up with the person I’m recommending a book to. Finally, breadth of choices. There are so many good books out there right now that it’s difficult to narrow it down.

            Nevertheless, with all of the foregoing caveats out there, I’m going to post some of the books I enjoyed this year. Additional caveats, just because I read them this year does not mean they were necessarily released this year. Also, this year has been long—really long—and I am having a really hard time remembering what I read pre-pandemic. Finally, I’m primarily going to focus on trades/graphic novels that are creator-owned.

            (Links to Amazon are affiliate links. Even so, if you’re intrigued by these books, try to buy them from your local comic shop or book store.)

Come Home, Indio

Jim Terry’s autobiographical comic about growing up and dealing with addiction is raw, difficult to read, and wonderfully executed.

 

The Plot vol. 1

An intriguing start to a story that reminds of a hybrid between Swamp Thing and The Haunting of Hill House.

 

Something is Killing the Children, vols. 1 & 2

Creepy, briskly-paced. The story follows Erica Slaughter as she tries to stop monsters in a small Wisconsin town. It feels like Tynion and Dell’Edera are making something special.

 

Grumble, vols. 1 & 2

Quirky and enjoyable story about a petty crook turned into a pug.

 

Outpost Zero, vols. 1-3

This series has already been cancelled, but it shouldn’t stop you from checking it out. Interesting premise that builds slowly. Story focuses on descendants of humans who fled Earth and are tryig to survive on a remote planet. Reminds me of the TV show Ascension.

 

My Heroes Have Always Been Junkies

A stand alone entry in the Criminal world that is an engrossing read. If you’re a fan of noir, definitely worth reading.

 

Clean Room, vols. 1-3.

A little sci-fi, a little horror. Clean Room focuses on a woman investigating her fiance’s suicide and the cult that may have something to do with it.

These Savage Shores

An English vampire travels to India and encounters something deadlier than himself.

 

On Forming a Comic Book Union - Part III

 

Editor’s Note: To conclude my series of posts on the challenges of forming a comic book creator’s union, I have a few final thoughts. The other posts can be found here and here.

 

Fascinatingly to me, even though I understand work-made-for-hire law, the interplay between copyright ownership and employment status had not really occurred to me as it pertains to labor law until researching this article.

Under current copyright law, a publisher can only own a work if it is created by an employee or made pursuant to a work-made-for-hire agreement (see this post for a more detailed discussion of work-made-for-hire). If the creator was not an employee and if there was no contract, then the creator retains ownership. If there is a contract but the work does not fall into one of the enumerated work-made-for-hire categories (see here), then the creator retains the rights. The creator can assign ownership to the publisher, but the original creator would retain the right to terminate the transfer later—a proposition most publisher’s would like to avoid (see my posts on the rights to Superman, Captain America, etc.).

The above seems straightforward, but it can get complicated. For instance, the analysis becomes murkier when applied to independent contractors. Even though they may be classified as an independent contractor, if the relationship with the employer meets the criteria for a common law agency relationship as set forth in Community for Creative Non-Violence v. Reid (see my first post on forming a comic book union), then it is possible for the created work to be deemed a work-made-for-hire.

For instance, one of the reasons the Kirby estate’s challenge to reclaim ownership over the Marvel characters he created failed was because the appellate court, in applying an older test to determine work-made-for-hire, ruled him to be an employee for purposes of copyright ownership. Granted, that was applying an older copyright law, but it makes for a fascinating “What if” scenario today. If the case hadn’t settled before it reached the Supreme Court, the outcome may have been very different.

Finally, this split in wanting to own the intellectual property outright versus the desire to classify workers as independent contractors played a key role in the formation of the Writers Guild in the 1930s and 1940s.[1] The studios were arguing on one hand that the writers were employees within the meaning of the 1909 Copyright Act so that the studios would own the copyrighted instead of the writers, and on the other hand, the studios were also arguing the writers couldn’t unionize because they were independent contractors.[2]

Even though copyright law and employment law are two very distinct practice areas, they do overlap when it comes to work-made-for-hire. Generally speaking, just because someone is deemed an employee for copyright purposes does not mean they are an employee for labor law purposes. However, California takes the view that an employer cannot benefit from a contractual work-made-for-hire provision without also being considered the employer. Knowing your employment status, and what your agreements say, is very important.

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[1] See Fisk, Catherine,  (2018) “Hollywood Writers and the Gig Economy,” University of Chicago Legal Forum: Vol. 2017, Article 9. Available at: https://chicagounbound.uchicago.edu/uclf/vol2017/iss1/8

[2] Id., at 184-185.                                                                                                                                                                                                                                                                                                                                                                  

Halloween Costumes & Knockoffs - Part IV

     It's my favorite time of year again. As I've done the past few years, I'm going to point out some of my favorite superhero knock-off costumes on Amazon. You can find years two and three at the links. If you want to re-read my first post that includes the legal whys behind knockoff costumes, you can find it here. Otherwise, on to the costumes! (Note: all links affiliate links)

This isn't as blatant as some, but it's still Elektra-fying.

This is Marvel-ously close to a certain Captain's design.

This costume is just Wonderful.

This costume has Miles to go before I believe it's officially licensed.

This photo looks so bad, I don't think I can make fun of it. Wait, I have something: "Ooh, somebody stop me!"

I realize if you're dressing up as "Fat Thor," you're probably lazy. But, buying a knock-off "Fat Thor" costume is just too much.

Enola Holmes and the Public Domain

            I recently watched the new film Enola Holmes on Netflix. The film stars Millie Bobby Brown as Enola, the younger sister of Sherlock Holmes, and it is based on a series of books written by Nancy Springer. It was an entertaining film, but, while I was watching it, I couldn’t help thinking about copyright law and the public domain.

            A few years ago, the editor of an anthology featuring newly written Sherlock Holmes stories sued the Doyle Estate after it demanded licensing fees. I covered this lawsuit, Klinger v. Doyle Estate, Ltd., in a previous blog post on the interplay of public domain law and trademark law. After watching Enola Holmes, I wondered if it faced similar issues.

The Doyle estate filed a lawsuit against Netflix, Nancy Springer, and the book publisher for copyright infringement.[1] The estate claims the novels and movie infringe upon the last 10 remaining Sherlock Holmes stories still protected by copyright. Specifically, the Estate argues the Enola Holmes stories infringe Sherlock Holmes character traits introduced in the last 10 stories. The case is still pending.

While I won’t discuss the pending case in depth, I do want to briefly discuss the public domain. Generally speaking, any creative work that is no longer subject to copyright protection is in the public domain. Once in the public domain, others are free to use the work as they see fit. Works entering the public domain after the term of copyright protection has expired is the bargain granted for the exclusive rights granted to the author during the term of protection.

Enola Holmes is a great example of how this bargain should work. Arthur Conan Doyle created Sherlock Holmes, a character beloved by many for over a century. Most of the Sherlock Holmes stories are in the public domain, and all will be in the public domain on January 1, 2023. Doyle and his estate have had decades to benefit from the publication and licensing of his stories. Springer created a new character set in Sherlock Holmes’ world and new tales drawing on the Holmes legacy. Had she done so while all of the Sherlock Holmes stories were still protected by copyright, it would likely have been an infringement of Doyle’s copyright rights. However, if the stories Springer created drew from public domain stories, then it is perfectly legal.

The creation of new and unique creative works that take from and build upon works that are in the public domain are at the heart of copyright law and “promote the progress of … useful arts.”[2] Enola Holmes embodies this goal.      

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[1] https://www.hollywoodreporter.com/thr-esq/conan-doyle-estate-sues-netflix-coming-movie-sherlock-holmes-sister-1300108

[2] U.S. Constitution, Art. 1, Sec. 1, Cl. 8.

Book Review - Empire of Monsters

Before picking up Empire of Monsters (affiliate link), I was aware of Warren Publishing, and I had heard of Vampirella, Creepy, and Famous Monsters of Filmland, but I knew nothing about James Warren, the man behind the magazines. Bill Schelly’s book was an interesting and informative biography that appealed to me in ways I wasn’t expecting. 

            Prior to starting my legal career, I had a brief career in journalism. Warren’s experiences as a New York-based magazine publisher in the '50s and '60s really appealed to my interests in the history of journalism and media. As Warren was building his business, his path crossed many well-known media personalities in New York, including photographer Diane Arbus, whose photo he published, famed crime scene photographer Weegee, and Gloria Steinem, whose career in publishing started at Warren Publishing. Terry Gilliam, of Monty Python fame, was an assistant on Harvey Kurtzman’s Help!, a magazine that Warren published.

Warren was also inspired by Hugh Hefner, early in his career. In fact, an obscenity charge was filed against him for publishing a less risqué Playboy knockoff.

            Schelly does an excellent job describing Warren’s rise, fall, rise, and fall over the decades. He tells the fascinating story of a man who was driven to succeed in publishing, constantly looking for the next big thing, and desirous of, and a bit indulgent in, success. The portrait Schelly paints of Warren shows him to be a complex and conflicting character. He could be both friendly and gregarious and also secretive and combative. Schelly’s excerpt of Warren’s speech at the New York Comic Art Convention in 1971 is both hilarious and depressing in its skewering of the industry and fans and in its relevance today.

            Warren’s magazines hosted a who’s-who of comic creators over the years—sometimes launching them, and sometimes harboring them from industry burnout. Over the years, names such as Frank Frazetta, Bernie Wrightson, Neal Adams, Archie Goodwin, Alex Toth, Wallace Wood, Louise Simonson (Jones), and many others worked for Warren.

            I particularly enjoyed the behind the business aspects of this book. Reading about how Warren built his publishing business, how he had to juggle finances to get his magazines started, and during lean years keep them afloat, was fascinating. It was also interesting to read about the variety of deals Warren would make with his writers and artists regarding pay and returning original artwork. I found a particular passage illuminating. During an interview later in life, Warren describes creative people as childlike and lacking in business sense. While on its face, the comment might seem mean spirited, he was merely acknowledging that creative people have a different mindset than business people, and the two may clash because of it. He also recognized his role in the business as someone who creates work for creatives.

            The book recounted many of Warren’s legal issues, including how Warren tried to protect the title Eerie before another publisher could use it. (It recounted this as a copyright problem, but it really should have been a trademark issue.) It was also revealed that Warren did not have his writers and artists cash checks with a “work-made-for-hire” notice on the back, as was common at DC and Marvel. Instead, he just acted like he owned the works and would republish at will. There were also interesting tales involving a copyright lawsuit filed against Warren Publishing by Harlan Ellison, and, after Warren Publishing collapsed, a chapter on Warren’s lawsuit against Harris Publishing over the rights to Vampirella and other intellectual property assets.

            Empire of Monsters is a well-researched and well-written account of an interesting figure in comic book and magazine publishing. It is a worthwhile read for anyone seeking to learn more about these industries and this era of publishing.

On Forming a Comic Book Union - Part II

Editor’s Note: This is part two of my posts exploring forming a union in the comic book industry. Part I can found here.

        As I mentioned in my previous post, the biggest hurdle comic book creators need to overcome in order to form a union is that most creators are not employees, and the law prohibits independent contractors from forming unions.

        Even if they could overcome the employee vs. independent contractor problem, there are many other hurdles to overcome. First, the political climate for forming unions seems to be at a low. Union membership has been declining for decades.[1] Additionally, many states are passing laws to further weaken unions, and a recent U.S. Supreme Court decision declaring mandatory union dues to be unconstitutional dealt another crippling blow (See Janus v. AFSCME, https://www.supremecourt.gov/opinions/17pdf/16-1466_2b3j.pdf). Furthermore, employers generally do not like their workforce to be organized into a union, and, historically, will attempt to prevent it. All of these factors contribute to the difficulties employees would face in an attempt to form a union.

       Secondly, previous attempts to form a comic book union have been unsuccessful. In the late 1970s, a group of well-known creators explored organizing a union. The Comics Creators Guild featured Neal Adams, Chris Claremont, Paul Levitz, Len Wein, Steve Ditko, Marv Wolfman, and many more. After having several meetings to establish a goal for the nascent Guild, even going so far as to draft contract language and suggest page rates, the effort ultimately didn’t lead anywhere.[2]

        Even though many comic book creators bemoan their working conditions and agree a union would be helpful, getting enough people together to agree on the union and its platform can be challenging. This is partially what happened with the Guild in the late 1970s, and that was when most of the comics in the U.S. were published in New York. In today’s comics industry, publishers and creators are spread throughout the United States and the world, and getting enough agreement to start a union would be difficult, if not impossible.

        Additionally, two important questions would need to be addressed: What types of work would be covered, and which companies would be the “employer” in this situation? To address the first question, it seems obvious most people who support a union would want to see the work performed for DC and Marvel be unionized, and most creators would also want other work-made-for-hire jobs for publishers covered. So, it would be safe to assume that working on licensed properties for publishers, where the publishers retain all intellectual property rights, should be covered.

        I doubt most people would expect creator-owned projects to be covered by union rules, even though it might be nice to use union rates as a starting point for evaluating fair page rates. However, by not applying union rules to creator-owned projects and applying them primarily to work-made-for-hire gigs, some of the works put out by IDW, Dark Horse, Boom! Studios and similar publishers could be covered by union rules while other works might not. This obstacle can be overcome with clarification, but it does lead into the second question of which publishers should be considered “employers.”

        Again, as above, most creators would want Marvel and DC to be considered an employer for union purposes. Since almost all of the books they publish are work-made-for-hire, and the creators do not have any ownership interest in the books they create for Marvel or DC, this is an easy dividing line.

        Furthermore, if we’re using work-made-for-hire books as the dividing line, then it is easier to categorize which other publishers should be considered employers, and when they should be considered employers. If the publisher produces work-made-for-hire books, and the creators do not retain any ownership rights, then that publisher should be considered the employer. If a publisher only distributes creator-owned work and does not have an ownership or otherwise controlling interest in the work, then they should not be considered an employer.

        While a comic book union sounds great, and would likely help improve the wages and working conditions for comic book professionals, it faces major hurdles in getting started.  

Part III of this series will address my final thoughts on the issue.

 

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[1] https://www.bloomberg.com/quicktake/u-s-labor-unions

[2] See The Comics Journal, No. 42 for a comrephensive look at these discussions.

The Punisher Logo and Police

           I’ve seen an interesting discussion lately online regarding the Punisher logo, and its use by police departments. As the Black Lives Matter protests continue in the wake of George Floyd’s death and shine a light on aggressive police tactics and use of lethal force, there has been a call for Marvel to prevent police officers from wearing the Punisher logo. In particular, Comic Book Resources ran an article highlighting some of the difficulties Marvel would face in trying to use trademark law to prevent police officer usage of the logo[1], and AIPT ran an article highlighting websites that sell unlicensed Punisher police-themed goods.[2] Both of these articles raise interesting points, and when read together, show the difficulties in enforcing intellectual property rights.

            For those unaware, the Punisher is a Marvel character introduced in The Amazing Spider-Man 129 and was created by Gerry Conway, John Romita Sr. and Ross Andru. He was originally introduced as a Spider-Man antagonist, but quickly gained in popularity. After witnessing his family murdered by the mob, he becomes a vigilante who frequently kills criminals. At best, the character can be called a vigilante anti-hero; at worst, the character can be called a serial killer.

            Despite this, the character and his signature skull logo remain popular, and there are many instances of police and military wearing the logo. The reason people are calling on Marvel to do something is because police officers’ duty is to serve and protect. Wearing the Punisher logo conveys a troubling message.

            As was mentioned in the Comic Book Resources article, trademark law primarily protects against consumer confusion in commercial usage. If the individual police officers are not selling merchandise bearing the Punisher logo, then Marvel has limited recourse. Marvel would not be successful arguing traditional trademark infringement, and they would have to rely on alternative theories, such as dilution. This theory argues that someone else’s usage of the trademark would harm the value and goodwill of the original trademark owner. However, for personal use, it is harder to argue than if it was adopted by an entire police department. Additionally, the First Amendment provides strong protection against trademark claims where freedom of speech is concerned. While the use is questionable, police officers wearing the logo could be considered an expression of free speech.  

            Copyright law could also be used to protect the logo, as it is an artistic work. However, once again, copyright law usually focuses on commercial activity, but non-commercial use could be found to be an infringement if it does not qualify for fair use and harms the marketplace for the copyrighted work.

            Marvel would face a difficult task in trying to enforce its trademark or copyright rights against individual police officers. However, as noted in the AIPT article, Marvel could remove many unlicensed products from the marketplace that bear the Punisher logo. Manufacturing and selling product that bears the Punisher logo is clearly commercial use.

The question would then focus on whether the products being sold, such as a Punisher logo incorporating a blue line emblematic of police or Blue Lives Matter, would constitute a fair use under copyright law or a form of speech protected by the First Amendment. These are difficult questions to answer, but I believe they would not be. The First Amendment protects many types of speech, but commercially exploiting someone’s copyright or trademark by adding minimal design elements would be unlikely to qualify without a strong speech component.

For example, there was a recent case involving the use of Matt Furie’s Pepe the Frog by Infowars in political posters supporting Donald Trump and using the MAGA slogan. In an initial ruling denying summary judgment, the court stated that Inforwars’ use of the character could not be considered a fair use as a matter of law and would need to be decided by a jury. See Furie v. Infowars, LLC, 401 F.Supp.3d 952 (C.D. Cal. 2019). The case was later settled with Infowars paying Furie $15,000.[3]

             Finally, Punisher co-creator Gerry Conway has launched a campaign to “reclaim” the Punisher logo from police and military appropriation.[4] Conway has teamed up with artists of color to create and sell t-shirts bearing the Punisher logo, or similar designs, to raise money for Black Lives Matter. The campaign can be found here: https://www.customink.com/fundraising/black-lives-matter-skulls-for-justice-presented-by-gerry-conway. So far, Marvel has not taken a position on Conway’s campaign, but it could be considered an infringement of Marvel’s intellectual property rights. While I will not go into a detailed analysis of each shirt, the outcome would depend on the creativity involved in the designs and the message they convey. At first glance, I believe many of the designs could qualify for First Amendment protection, but it would be decided on a case-by-case basis. Conway’s campaign will end on June 30.

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[1] https://www.cbr.com/punisher-logo-marvel-cops-military-limited-legal-response/

[2] https://aiptcomics.com/2020/06/10/punisher-police-symbol-marvel-legal/

[3] https://www.npr.org/2019/06/11/731520403/alex-jones-to-pay-15-000-in-pepe-the-frog-copyright-infringement-case

[4] https://www.forbes.com/sites/lisettevoytko/2020/06/11/the-creator-of-the-punisher-wants-to-reclaim-the-iconic-skull-from-police-and-fringe-admirers/#589a94ab4348

Tattoos and Copyrights - Part II

            I previously wrote about the NBA 2K copyright lawsuit that involved reproducing the tattoos of famous athletes in video games a few years ago. Recently, the district court issued its opinion in the case, and it was in favor of the video game company.

            In 2016, Solid Oak Sketches, LLC sued the makers of the NBA 2K video game series. Solid Oak had acquired the exclusive license to a number of tattoo designs that were tattooed on famous basketball players, notably among them Lebron James, and it alleged the NBA 2K games infringed its copyright rights because the video game series recreated the tattoos on the athletes in the game.

            The court ruled that the use in the NBA 2K games was de minimis, there was an implied license, and it was a fair use.

In ruling that the use was de minimis, which means that the copying was trivial and did not create a substantial similarity between the works, the judge noted that the tattoos at issue were only on three players out of 400 available in the game, were hardly, if at all, visible or distinct during game play, and average game play was unlikely to include the players at issue.

The court also found that an implied license existed for the players to “use the Tattoos as part of their likenesses…”.[1] In determining the implied license, the court emphasized that

(i) the Players each requested the creation of the Tattoos, (ii) the tattooists created the Tattoos and delivered them to the Players by inking the designs onto their skin, and (iii) the tattooists intended the Players to copy and distribute the Tattoos as elements of their likenesses, each knowing that the Players were likely to appear “in public, on television, in commercials, or in other forms of media.”[2]    

Because the players had an implied license from the tattoo artists, that existed before the license granted to Solid Oak, and the players granted the NBA the right to exploit their likeness, 2K Games use of the players’ likenesses, including the tattoos, is not an infringement.

            Finally, the court found the use of the tattoos in the games to be fair use. In evaluating the fair use factors, the court found (i) the commercial use of the tattoos to be negligible, as they constituted a minor part of the game and were barely visible,[3] (ii) the tattoos at issue had limited expressive value,[4] (iii) even though the tattoos were copied in total, it was done to accurately depict the players, and the tattoos were barely visible in the game,[5] and (iv) there was no impact on the market value of the tattoos because video games are not a substitute for tattoos, and a market for licensing tattoos to be used in video games would be unlikely to develop.[6] 

            As I mentioned previously, this issue had been bubbling up for some time. While tattoos, generally speaking, are entitled to copyright protection, it had been an unanswered question of how far copyright protection would extend once the tattoo was on someone. This decision goes a long way in determining the scope of that protection. I think it is a solid decision, and, if appealed, I hope it is sustained.

            After reading it, however, I am concerned about the emphasis on how the tattoos are barely visible in the game. This leaves open possible arguments that if the tattoo is visible, or featured prominently, such as in a portrait of a tattooed subject, then it could be an infringement. Hopefully, the implied license theory outlined in this decision would continue to protect an artist in such a situation. 

            Until the decision is upheld on appeal, it is still risky to recreate tattoos without permission. As I mentioned previously, if you are a celebrity whose likeness is likely to be recreated, obtain a waiver or assignment of any copyright rights the tattoo artist may have. If you are someone creating a work incorporating a tattooed subject, either have them indemnify you from harm, if it is commissioned, or proceed with caution, as the law regarding accurate recreations of tattooed individuals is still unsettled.

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[1] Solid Oak Sketches, LLC v. 2K Games, Inc., No. 16-CV-724-LTS-SDA, 15 (S.D.N.Y. 2020).

[2] Id.

[3] Id. at 17-19.

[4] Id. at 20.

[5] Id. at 21.

[6] Id. at 22.

An Industry Undone?

The comic book industry faces challenging times right now due to Covid-19, and many people blame the industry’s reliance on Diamond, and their recent actions, for some of the problems. However, many other consumer-reliant entertainment industries are also struggling, including the movie industry. And while the impact didn’t occur as quickly as with the comic book industry, traditional book stores are also facing significant challenges.[1]

Will this be the end of comics, as so many seem to fear? No. Will the comic book industry drastically change the way comics are distributed? Maybe, but I wouldn’t bet on it. Many critics of Diamond want to see comic book stores survive and thrive, but they also call for a complete rethinking of the way comic book distribution works. I don’t see how these two thoughts can be reconciled.

To briefly recap, a pandemic has swept the nation, and the United States has seen unprecedented unemployment and business closures. Comic book stores were ordered to close in many states in order to comply with social distancing requirements, which meant they could not receive and sell new comic books.

Diamond Distributors, the primary distributor to comic book shops for the industry, announced they would cease shipments to stores. There are a number of factors as to why Diamond made this decision, but two significant ones were (i) many of their customers were closed, and (ii) some of Diamond’s distribution centers were also ordered to close or soon would be closed. Around this time, some publishers began to trim back and cancel some of the titles they had scheduled for release in the coming months, and after Diamond’s announcement halting shipments, additional publishers started halting or rearranging production.

Diamond then stated they would not pay their suppliers until the situation improves, a move they have since clarified. This statement caused many to believe the comic book industry as we know it would collapse. 

Many have blamed Diamond for the fragile state of the industry. As the primary distributor to comic book shops, it has a near monopoly on getting comics from publishers into shops. However, it is important to remember how Diamond came to be the primary distributor.

The direct market emerged after the newsstand market started collapsing in the late 1970s. It was a lifesaver for comic publishers. Notably, comics distributed through the direct market were non-returnable. This factor, combined with reliance on pre-orders, helped increase publisher profits and financial certainty. It shifted some of the risk of a comic book not selling to the retailer from the publisher. Initially, there were a number of distributors, but after the comic book speculation collapse in the ’90s, Diamond remained as the primary distributor.

It is important to acknowledge that comic book stores are still a vital distribution channel for publishers. Other than trade paperbacks in bookstores, success outside of comic book shops is still hard to achieve for most publishers. And, even though I fondly remember buying comics off of newsstands at the grocery store, that market isn’t coming back due to the issues surrounding returnability.

Publishers recognize the importance of comic book shops to the industry, and they actively listen and attempt to support retailers. The movie industry is perhaps the only other comparable industry that listens to and negotiates with its primary distributors—movie theaters. The system we currently have, and the slow adoption of alternate methods of distribution, is due to publishers listening to and trying to support comic book retailers.

My guess is that Diamond will remain the primary distributor to comic shops after this crisis has passed. However, I think a lot of publishers will explore alternative means of distribution, particularly methods over which they can exert direct control. Direct shipment to stores or customers will likely increase, and more publishers will try to expand to the book market. Even though comic book consumers have been slow to adopt digital comics, I expect the numbers to grow. The ease of use, continuous availability, and profit margins make digital comics a distribution method publishers would like to see increase.

Notice, however, that all of these alternative models come at the expense of comic book shops. Any major changes to the current distribution system will cause stores to close.

Overall, I don’t foresee major changes to the industry. The direct market, and the money it generates, works too well for most publishers to abandon it. If true, radical change were to happen it would be at the expense of comic book shops, and most publishers don’t want to see that happen. 

              

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[1] https://www.publishersweekly.com/pw/by-topic/industry-news/trade-shows-events/article/82672-covid-19-ongoing-list-of-cancellations.html

On Forming a Comic Book Union - Part I

Editor’s Note: This is the first in a three-part series. Also, I am not a practicing union / labor attorney, but I am familiar with the law in these areas.

If there’s no Guild now, if we don’t stand together now, I don’t think there’ll ever be one. In a very real sense, it’s now or never.

– Chris Claremont, 1978.[1]

Every so often, I see talk online about how comic book creators should form a union. It usually comes up after a story emerges about the low pay and, oftentimes, poor treatment of comic book creators in the industry—typically at the hands of a publisher. So, why not form a union? If only it was as easy as it sounds.

In its simplest definition, unions are groups of employees joining together to collectively bargain with employers to set wages, working conditions, benefits, and other job-related conditions. By bargaining together, the employees can offset some of the employer’s inherently strong bargaining power and obtain better results for all employees than each employee could achieve individually.

The law is the greatest obstacle that creators face in attempting to form a union. The National Labor Relations Act prohibits independent contractors from organizing a union. As such, only employees can form unions. With few exceptions, the artists, writers, letterers, and inkers making comics who would benefit most from a union are almost all categorized as independent contractors.

To determine whether someone is an independent contractor, the IRS looks to three categories relevant to the degree of control exerted by an employer and independence:

1.       Behavioral: Does the company control or have the right to control what the worker does and how the worker does his or her job?

2.       Financial: Are the business aspects of the worker’s job controlled by the payer? (these include things like how worker is paid, whether expenses are reimbursed, who provides tools/supplies, etc.)

3.       Type of Relationship: Are there written contracts or employee type benefits (i.e. pension plan, insurance, vacation pay, etc.)? Will the relationship continue and is the work performed a key aspect of the business?[2]

All of the factors must be weighed to determine whether a person is an employee or an independent contractor, and results can vary. In Community for Creative Non-Violence v. Reid, the U.S. Supreme Court in determining whether a sculpture was made by an independent contractor or during the scope of employment stated:

Among the other factors relevant to this inquiry are the skill required; the source of the instrumentalities and tools; the location of the work; the duration of the relationship between the parties; whether the hiring party has the right to assign additional projects to the hired party; the extent of the hired party's discretion over when and how long to work; the method of payment; the hired party's role in hiring and paying assistants; whether the work is part of the regular business of the hiring party; whether the hiring party is in business; the provision of employee benefits; and the tax treatment of the hired party. […] No one of these factors is determinative.[3]

            As mentioned previously, for the most part writers, artists, inkers, and letterers have been categorized as independent contractors by publishers, and they sign agreements stating the works are work-made-for-hire in order to comply with copyright law. This work-made-for-hire agreement allows the publisher to retain ownership and control over the works. In order to overcome the presumption that artists and writers are independent contractors and unionize, the independent contractor status would need to be challenged, and after applying the factors listed above, the National Labor Relations Board or a court would have to find the creators to be in an employment relationship. (Note: Some states have taken actions to address these issues, notably California and its recent AB-5 law that changes the test for classifying independent workers and employees.)

If comic book professionals are not recognized as employees and treated as such by employers, then they cannot join together to bargain or strike. Doing so would be a violation of antitrust law. Only recognized labor unions have the ability to bargain for wages, working conditions, etc., and have the ability to strike. While other groups exist that advocate for better treatment for independent contractors, such as the Graphic Artists Guild, Freelancers Union, etc., these are not true unions, and they have limited direct impact on employee-employer relations.

In my next post, I will discuss some other obstacles union organizers would have to overcome.

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[1] Groth, Gary, “The Comics Guild,” The Comics Journal, No. 42 (October 1978).

[2] https://www.irs.gov/businesses/small-businesses-self-employed/independent-contractor-self-employed-or-employee

[3] 490 U.S. 730, 751-52 (internal citations omitted).

When can a copyright holder sue for statutory damages?

I’ve been doing a lot of research on copyright issues lately, and I am seeing people, attorneys included, incorrectly explaining when statutory damages are available in copyright infringement cases. Namely, I see a lot of people claim you are only eligible for statutory damages if you register your copyright within 3 months of publication. This is incorrect, and it is very important to understand this section of the Copyright Act properly as it can greatly impact a copyright holder’s decisions in enforcing their rights. 

 In brief, when a copyright holder sues someone for infringement they can attempt to pursue actual damages and profit from the infringer, or they can pursue statutory damages—if they qualify to do so. The benefit of being able to pursue statutory damages is that the copyright holder doesn’t have to prove they were harmed, and the damages range from $750 to $30,000 per infringement, with the ability to pursue up to $150,000 for willful infringement. Essentially, this means that pursuing statutory damages in a copyright infringement case is easier and, in some cases, can be more lucrative.

How can a copyright holder be eligible for statutory damages? By having their copyright registered. The text of the statute authorizing statutory damages reads:

In any action under this title, other than an action brought for a violation of the rights of the author under section 106A(a), an action for infringement of the copyright of a work that has been preregistered under section 408(f) before the commencement of the infringement and that has an effective date of registration not later than the earlier of 3 months after the first publication of the work or 1 month after the copyright owner has learned of the infringement, or an action instituted under section 411(c), no award of statutory damages or of attorney’s fees, as provided by sections 504 and 505, shall be made for—

(1) any infringement of copyright in an unpublished work commenced before the effective date of its registration; or

(2) any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.[1]

This statue is awkwardly worded and people misread it. Frankly, the first time I read this statute, it took me a good 30 to 45 minutes to understand it. Most people get hung up on the phrase that appears to state a copyright must be registered within 3 months of publication or you are not entitled to seek statutory damages. This only applies to infringements that occur before registration. The three months is a grace period between publication and registration. If a work is published and someone begins infringing it, then the copyright owner can pursue statutory damages if the work is registered within 3 months of publication. If we remove the phrases that are exceptions to the rule, then we can see that a copyright holder can seek statutory damages for any infringement that occurs after the copyright has been registered: 

In any action under this title, other than an action brought for a violation of the rights of the author under section 106A(a), an action for infringement of the copyright of a work that has been preregistered under section 408(f) before the commencement of the infringement and that has an effective date of registration not later than the earlier of 3 months after the first publication of the work or 1 month after the copyright owner has learned of the infringement, or an action instituted under section 411(c), no award of statutory damages or of attorney’s fees, as provided by sections 504 and 505, shall be made for—

(1) any infringement of copyright in an unpublished work commenced before the effective date of its registration; or

(2) any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work. [Italics added for emphasis.]

Paragraph 2 only prevents an owner from seeking statutory damages for infringement that occurred before the work was registered. If the owner registers the work, then the owner can pursue statutory damages for any new infringing uses that occur after registration. Note, however, that an infringing use that occurred before registration and continues after registration has been found to be one infringement.  Therefore, an owner would not be able to seek statutory damages.[2]

There is nothing preventing copyright owners from pursuing statutory damages against people who infringe their work after it has been registered. Additionally, they may pursue statutory damages against infringements that occur during the three month period between publication and registration, if the work is registered within three months of being published.

As one commentator has noted, “Congress made statutory damages available only for previously registered works to serve … as ‘a great encouragement for registration.’”[3] This is a reminder for all creators to register their work as soon as possible. If you haven’t registered your work and you’ve discovered it being infringed, unfortunately it’s too late to pursue statutory damages. 

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[1] 17 U.S.C. §412

[2] See Derek Andrew, Inc. v. Poof Apparel Corp., 528 F.3d 696, 700-01 (9^th Cir. 2008)(“Every court to consider the issue has held that "infringement `commences' for the purposes of § 412 when the first act in a series of acts constituting continuing infringement occurs.; See also, Mason v. Montgomery Data, Inc., 967 F.2d 135, 144 (5th Cir. 1992)(“We thus conclude that a plaintiff may not recover an award of statutory damages and attorney's fees for infringements that commenced after registration if the same defendant commenced an infringement of the same work prior to registration.”), and Johnson v. Jones, 149 F.3d 494, 506 (6th Cir. 1998).

[3] Nimmer, David, Investigating the Hypothetical “Reasonable Royalty” for Copyright Infringement, 99 B.U.L.Rev. 1, 24. [Internal citations omitted.]