Legalities 3: Copyrighting Graphic Design; Online Infringement; Depicting Famous People

Is graphic design copyrightable? What can be done about a “Napster” like web site for artwork? Is it safe to publish illustrations of famous people?

Q. I do graphic design work, for example, annual reports and web sites. I’ve heard that graphic design cannot be copyrighted. Is that true? How can I protect my work from being copied?

A. This is a difficult issue. What you’ve heard about is probably the Copyright Office policy of refusing to issue copyright registrations for “graphic design.” The stated reason given by the Office is “copyright may not be claimed in works consisting only of familiar symbols and designs, basic typographic ornamentation, lettering, layout, and color schemes, even if the elements are distinctively arranged or printed.” However, that statement is absolutely incorrect as a matter of law. Under the Copyright Act and court decisions, graphic design (that is, the creative authorship comprising the selection and arrangement of text, images, artwork, typographic ornamentation, lettering, layout and color schemes) clearly qualifies as a form of “graphic artwork” that is protected by copyright. For example, back in 1970 the Ninth Circuit Court of Appeals (which covers California), unequivocally held that copyright protected the graphic design of a series of greeting cards. (Roth Greeting Cards v. United Card Co., 429 F.2d 1106 (9th Cir. 1970)).

I believe the Copyright Office policy reflects a misunderstanding of the nature of graphic design and a misinterpretation of law relating to blank forms. It is true that court opinions have established that blank business forms are not eligible for copyright protection. These decisions held that blank forms are essentially functional rather than creative works, because they are used to record information rather than to convey content. Copyright does not protect functional works, hence, such blank forms are not protected. The Copyright Office has inappropriately interpreted this “blank form” principle to mean that the format, arrangement, or typography of any work is not copyrightable. The Office seems to think that graphic design is simply a “layout” or “format,” and thus uncopyrightable under its expansive interpretation of the blank form principle. Accordingly, the Office refuses to process applications for “graphic design” or “layout” as two-dimensional artwork. Copyright Office decisions can be overturned only through the Office’s internal administrative appeals process or in litigation in federal court. Both options are expensive, and to date I am not aware that this policy has been challenged.

Having learned about this policy the hard way, I avoid triggering the Copyright Office reaction to applications for “graphic design” by treating applications for graphic design differently than other forms of two-dimensional artwork. Depending upon the specific works involved, it is sometimes feasible to apply for copyright registration of graphic design as a “compilation work.” As noted above, in copyright parlance graphic design is a compilation work in that it comprises the selection, arrangement and appearance of discreet elements such as text and images. Thus, instead of using the words “graphic design” or “layout,” I identify the nature of the work as a “compilation.” And I use the statutory language for compilation authorship, i.e., “selection, coordination and arrangement of text and images.”

Finally, remember that copyright registration is different than copyright protection. As more thoroughly discussed in the January Legalities column, copyright protection applies as soon as you create the work. Registration is merely a formality that brings with it important advantages. Generally, registration is a pre-requisite to bringing a lawsuit for infringement. However, the Copyright statute ensures that courts have the authority to overturn Copyright Office decisions regarding registration. Thus, if you applied for copyright registration but your application was rejected, you are still entitled to your day in court. As part of the lawsuit, you can ask the court to review and reverse the Copyright Office’s inappropriate refusal to grant your registration. So if the Copyright Office rejects your application to register your graphic design, it does not mean your work is not copyrighted. Should you need to challenge the registration refusal, you would likely win. Meanwhile, make sure you include your copyright notice on your work.

Q. I’ve recently learned that a web site has been illegally posting artists’ work that can also be downloaded to individuals computers, like Napster. The site owner states, in her FAQ’s page, that anything on the web is public domain and she can do with it what she wishes. The question is, what can be done about this? So far I’ve heard that some have recognized certain artists’ artwork and they have been contacted, but what about the rest? If I’m not sure whose art has been stolen then how can I contact the artists to inform them? Contacting the hosting service provider seems like the most direct way of dealing with this site since it involves so many artists. However, I don’t know how to figure out who the hosting service is. How should sites like this be handled?

A. As you know, the web site owner is mistaken: it is not true that anything on the web is public domain. Her unauthorized posting of artwork on a web site, as well as enabling unauthorized downloads of the artwork, is copyright infringement. However, under the legal concept called “standing” civil claims for infringement can be made only by the persons (or entities) whose rights are being infringed. In this case that means that only the artists whose artwork is posted have the legal right to bring a civil claim to remedy the infringement. The artists have claims against both the web site owner and the hosting service provider. Under the new law called the Digital Millennium Copyright Act (DMCA), there are very specific procedures for getting the service provider to remove the infringing content.

The best way to deal with these sites is to contact the artists whose work is being infringed, as you have already done for some of them. The artists can then use the DMCA procedures, as well as cease and desist letters to the web site owner herself, to stop the infringement. I don’t know of a way to find out who the other artists are, but the first claim will obviously alert the web site owner and her service provider that there is a problem. That may provide incentive to take care of the rest proactively.

To find out who owns a web site and who hosts it, try doing a “whois” search at the Network Solutions site (go to www.networksolutions.com, click on “whois” on the top menu, and follow directions). The search results will give you the name of the domain name registrar, and, if available, the identity and contact information for the owner of the web site (“Registrant Info”) and the service provider (“Technical Info”). If not, you can try going to the listed registrar’s website to do a search.

In this example, the service provider is identified as Earthlink, Inc. With that information, the next step is to find out if Earthlink has a registered agent to receive an infringement complaint under the DMCA (most service providers do). The law requires that these agents be registered with the Copyright Office, and they can be searched online at the Copyright Office web site (go to www.copyright.gov, click on “Online Service Providers” under “Search Copyright Records,” then click on “directory of agents”). Most service providers also list their agent on their own site, along with a step by step explanation of how to follow the DMCA complaint procedure. For example, see Earthlink’s posting at http://www.earthlink.net/about/policies/dmca. You can also look up the statute itself on the Copyright Office site (go to “Online Service Providers” and click “Digital Millennium Copyright Act,” then look for Section 512(c)); however, the statutory wording is a bit more obtuse. Under these procedures, the service provider is required to take down the infringing material when duly notified by the copyright owner.

As a bystander, you cannot raise a claim legally, but you can write to the web owner and/or the service provider to voice your concerns. If you do so, be sure that you are reporting accurate factual information. It is important not to make potentially untrue or disparaging remarks. (Remember, some images are in the public domain: they may be old enough that the copyright has expired, or the artist may have posted them on the web with explicit permission for free use. Or the images might be used in a way that qualifies as “fair use.” That doesn’t seem to be the situation in your example.) Its best to state your concerns in terms of what it appears might be happening, e.g., “it looks like the site may be posting artwork and allowing downloads of artwork without permission of the artists, and I’m concerned there may be copyright violations” rather than in terms of absolute legal conclusions, e.g., “the site is engaging in copyright infringement.”

Q. When it comes to famous persons, can I do an illustration of their likeness for use on a book cover? The illustrations may be cartoons of these people, like those done in the NY Review of Books, but this is for a book for sale. I’m not sure this is “editorial” use. The book would contain quotes known to be from these famous people. (I don’t know what the legal issues are of using their quotes, but that is being figured out by the publisher.) This book not a parody of these people, nor a piece of literary criticism. The book is more a “great quotes with great advice” kind of book. What I’m concerned about is, will I get into trouble if I don’t have the permission of those persons to use their likeness?

A. This question touches on the rights of publicity, which involve a famous person’s rights to control the commercial exploitation of her/his likeness. Unlike copyright (which is a matter of federal law uniformly applied nationwide), rights of publicity are governed by state laws, and the rules vary from state to state. So the evaluation can get very complicated. California state law is one of the most expansive in terms of granting the most power to celebrities (or their estates).

You are right: generally, “editorial” use of a famous person’s likeness is protected as a fair expression of our free speech rights under the first amendment. On the other end of the spectrum, mere commercial use of a famous person’s likeness to sell products is an infringement of the celebrity’s rights of publicity. Parody and literary criticism are the clearest examples of “editorial use.” What counts as “commercial use” is less clear. It used to be safe to assume that photographs or artwork depicting famous people that appear in traditional “editorial” venues, such as newspapers and books, would be considered editorial rather than commercial use, even if the images were used to increase sales of such publications. Thus, when a newspaper reproduced one of its editorial photographs of a sports celebrity on posters to advertise the paper, a New York court held no infringement. Similarly, it used to be safe to assume that fine art (as opposed to merchandise such as coffee mugs) depicting a famous person would not be considered a commercial use, even though such works can be sold for large amounts of money.

However, in a recent California Supreme Court case, limited editions of fine art prints of realistic drawings of the Three Stooges were deemed infringing. (Comedy III Productions, Inc. v. Gary Saderup, Inc., 25 Cal.4th 387 (2001)). The court held that only “transformative” images would escape liability. Rather unhelpfully, the court explained that “transformative” means the art has become primarily the defendant’s own expression rather than the celebrity’s likeness. (Obviously, the court did not appreciate the artistic skill and “expression” that goes into creating a compelling portrait.) Last year, the same court held that comic book characters based on Edgar and Johnny Winter qualified as “transformative.” (Edgar Winter v. DC Comics, 30 Cal.4th 881 (2003)). At least in California, these rulings changed the focus from the nature of the “products” on which the allegedly infringing artwork appears to the nature of the artwork itself.

Your example might fall into the new grey area, depending upon the nature of your illustration. It sounds like the illustration may include several cartoon depictions of the famous people. That would most likely count as a “transformative use.” The courts have less trouble recognizing that a cartoon is primarily the artist’s own expression rather than the celebrity’s likeness. Moreover, where artwork depicts more than one person, it is harder to argue that the likenesses are being used commercially. Arguably, the purpose of the illustration is an editorial message reflected by the decision to depict such people together (e.g., these are all people who had something worthwhile to say). And the inclusion of more than one celebrity makes is less likely that any one of them is being used to sell the book.

Assuming the cover art itself is not parody or otherwise “transformative,” the evaluation of risk for the cover art is probably the same as for the book content. (Technically, the content of the book is governed by copyright law rather than rights of publicity, but the analysis is similar for the purpose of this discussion.) Books are a traditional editorial venue, however, the purpose of the book is not clearly “transformative.” It could be argued that a mere compilation of quotes from famous people does not comprise editorial “expression” by the author. Thus, I’d guess that the publisher is seeking permission from the various people (or their estates) to use the quotes. Presumably the publisher has commissioned your artwork and has directed that celebrity likenesses be used in the illustration. Thus, the publisher should be taking responsibility for clearing use of their likenesses in the cover art as well, and such permission should be sought at the same time.

Finally, note that this discussion applies only to use of the illustration on the book cover. If you want to reproduce the illustration in other ways, each of those other uses should be analyzed separately. For example, display of the illustration in your portfolio or on your web site as an example of your work would be a safe, noncommercial use. However, if you print the illustration on coffee mugs and offer the mugs for sale over your web site, that would be a commercial use, and it could provoke claims for violating the celebrities’ rights of publicity.