Legalities 2: More About Copyright

Answers to your questions about registering your copyright in a series of works and the difference between owning artwork and owning copyright.

Q. At this point I have created quite a body of work, some that I have shared with the public and some that I have not. But I have just in the last years started to inform myself about my legal rights as an artist. Is there a way to copyright a large body of work all at once? Like publishing a retrospective book, “The Art of Joe Artist”? Or do I have to fill out a separate form and come up with $30.00 for each piece of art I’ve ever collected? Or would this only protect the work as a collection?

A. These are good questions. Unfortunately, the answer to all of them is “sometimes.” It is possible under the copyright law to register some groups of works together under one registration. However, under certain circumstances, it is better to register works separately.

The copyright law authorizes “a single registration for a group of related works.” 17 U.S.C. Sec. 408(c)(1), and the implementing regulations allows a series or collection of works to be registered together “as a single work” under one application and one fee if certain conditions are met. 37 CFR Sec. 202.3(b)(3). The conditions are different depending upon whether the works are published. Thus, the first step is to determine whether the works you want to register are published or unpublished.

Are your works published or unpublished?

“Publication” defined. Under copyright law, a work is published if copies of the work have been made available to the public. Generally, this means both (1) the work has been reproduced, for example, in print media or CD Rom AND (2) the copies have been sold, offered for sale or distributed the general public. “Publication” does not include making copies without publicly distributing them, or, conversely, publicly displaying the original work. For example, suppose you have done a watercolor painting. If the painting is printed as an illustration in a magazine, it has been published on the date the magazine hits the newsstands. It has not been “published” if you have merely included photocopies or digital copies of your painting in your portfolio (showing your portfolio to potential clients is not a “public” distribution). It has not been published if you have shown your original painting during open studios (in that case, no copies have been made). However, it has been “published” if you offer multiple prints of the painting for sale during open studios.

What about online works?

Suppose you display one digital copy of the painting on your website. This is the grey area. For purposes of registration, the U.S. Copyright Office has refused to decide whether online display qualifies as publication. It is left to you to decide whether or not you want to consider such works published.

One advantage to deciding that online works are “published” is the three month grace period for registering published works. The grace period is an exception to the usual rules that govern the remedies available to you in case your work is infringed. As discussed in last month’s column, generally you must have filed for copyright registration BEFORE the infringement occurs in order to have two important remedies: the right to recover your attorneys’ fees when you win the lawsuit, and the right to an award of statutory damages. (Statutory damages means that the court can determine an amount of money to be awarded even if you cannot prove a specific monetary loss caused by the infringement. Currently, the law sets a maximum of $150,000 in statutory damages for willful infringement.) The three month grace period for published works means that if you filed your copyright registration within three months of the first publication of your work, you have full protection even if the infringement occurred earlier than your filing date. Since copying is instantly possible once your images go online, it would be advantageous to register such images as published works if you post them online before you send in your copyright application. On the other hand, as discussed below, you may want to consider your online works unpublished in order to have more flexibility for including them in group registrations.

Strategies for registering a series of works

Unpublished works. You can register a series of your unpublished works under one application as a “collection” of related works. Any grouping of unpublished works can qualify as a collection so long as (1) they have at least one author in common, (2) the copyright owner is the same for all of them, (3) you give them a single title for the collection, and (4) they are assembled in an orderly form. (This last requirement appears to be met any time you compile deposit specimens (see below) for a collection of works. I have never seen an application rejected on grounds that a collection was disorderly.)

The copyright registration will cover the copyright in each individual work as well as the copyrightable “authorship” comprising your selection of them to create the collection. The registration will show one year of creation for the entire collection, which should be the year that the last work in the collection was finished. It does not matter if some of the works in the collection were completed earlier.

Published works. Published works may be registered together if they are (1) “included in a single unit of publication” and (2) the copyright claimant is the same for all of them. As a general rule, it is harder to register a group of published works together because of the first requirement. Under that requirement, all of the works in the group must have been published together on the same day.

Obviously, for some types of work it is appropriate that the client own your entire copyright. Corporate identity packages, logos, web sites, and any other works that are intended to have an ongoing, exclusive marketing presence for your client should become that client’s property. It would not be appropriate for you to re-license such works to other clients, and other clients won’t want them anyway, since each corporate image needs to be unique. In that case, you should ensure that you have the continuing right to display and reproduce the work in your print and online portfolios; otherwise, you no longer need to worry about copyright.

Moreover, some courts have held that, in order for the group registration to cover a particular work, the common unit of publication must be the first time that work was published. If some of the works in the collection had been published previously, they were deemed pre-existing works and thus excluded from the copyright protection afforded by the group registration.

For example, lets assume that your watercolor painting was published in 2001 as an illustration in a magazine. In 2003, the original painting for that illustration was included in a group show at a local gallery. The gallery printed a catalog for the show which was made available to gallery visitors. The catalog qualifies as a single unit of publication for all of the works depicted, and under the copyright statute and regulations, you can file for one copyright registration to cover all of your paintings that are depicted in the catalog. However, under some recent court decisions, because your watercolor illustration was previously published in 2001 it may be excluded from copyright protection afforded by that registration. Courts following that analysis would require a separate registration for the watercolor illustration showing the 2001 publication date.

Under this same scenario, your copyright registration would not cover the other artists’ paintings in the catalog. They would each have to get their own registration because there is a different copyright owner for their works.

As another example, suppose you have self-published a set of greeting cards reproducing five of your watercolor paintings, which you then offer for sale alongside the original paintings at open studios. You can file one copyright application to cover all five paintings as published works that are included in a single unit of publication. However, if one of the cards is the watercolor illustration, you may also need a separate registration for that painting which recites the original 2001 date that the magazine was published.

Finally, lets assume that instead of offering the greeting cards in packaged sets of five, you display them side by side on a counter priced for sale individually. Does this qualify as a “single unit of publication?” This is another grey area. Generally, I think it is safe to construe the statute broadly so that it does. The cards are offered to the public on the same date and in the same way. Thus, they should be registrable together as a group of works that were “published” on the date of open studios.

Mixed collections.

What if you have a mixed collection of published and unpublished works? Lets assume that your retrospective book “The Art of Joe Artist” will include artworks that fall into four different categories: (1) works that were previously published and in which copyright ownership was transferred (e.g., illustrations in which copyright was assigned to the publisher), (2) works that were previously published in which you retained copyright, (3) works that have been shown to the public only online or by public display of the original, and (4) works that have never been shown to the public or have been shown only by public display of the original. You have not applied for any copyright registrations for these works before.

To ensure that all of the works in the book are protected, you need to file at least two copyright applications. First, you can file one application to cover all of the works that will be published for the first time in the book, e.g., categories 3 and 4. In this scenario, it is advantageous to consider category 3, the online works, as unpublished works, so they can be included in this group as their first unit of publication. You will also need a separate application for each work (or group of works if some of them were previously published together) in category 2. You don’t need any applications for works in category 1, since you are not the copyright owner for them.

Depending upon who publishes your book, there may also be one more copyright registration: to cover the copyright in the book as a compilation work. Compilation authorship covers the selection and arrangement of separate elements to form a new work. In this case, the compilation authorship includes the selection of the particular works to be included in your retrospective book, the order in which they are presented, the cover design and interior graphic design. If your book is self-published, you can use one registration to cover your own compilation authorship along with your authorship of the individual works in categories 3 and 4. If you have a publisher, you may need a separate application to cover your joint compilation authorship with the publisher, or the publisher’s separate compilation authorship (depending upon the circumstances, e.g., who designed the book and whether you’ve assigned the compilation copyright to the publisher).

Preparing and filing your copyright application

Some artists believe that the longer their work has been available to the public, the stronger its copyright protection. Others think that once their work has been available for a long time, it loses protection. Neither theory is correct. Public availability of your work does not affect your copyright. Generally, your copyright lasts for your lifetime plus 70 years, whether or not it has been published or registered. (Under the old law, copyright terms began upon publication, and sometimes had to be renewed, but this is no longer true.) Even if your work has been published for 20 years, you cannot sue for infringement unless you have a registration.

Registration by your client: Many artists believe that their client’s registration is sufficient to protect their own copyright. This is the hardest misconception to deal with because until recently, it was considered correct by most copyright lawyers. The copyright statute requires only that “a registration” be made for the work in order to provide full protection. It does not say that the registration must be made by the author. The publisher’s copyright registration for a collective work, such as the weekly magazine in which your spot illustration was published, should protect all works included in that issue, regardless of whether you have retained some copyright in your illustration. However, recently several courts have held that a publisher’s copyright registration protects only those contributions to the magazine for which it owns the entire bundle of copyrights. In the most egregious case so far, the court held that a magazine’s registration does not protect a spot illustration even where the magazine has an exclusive license to publish it. The plaintiff’s case was thrown out of court because she did not have her own registration.

Note: this discussion applies to works of visual art such as paintings, illustrations, photographs, fabric designs and cartoons, for which you are the creator and the copyright owner. Other forms of graphic art, such as graphic design for printed publications and web site design, encounter unique problems in the copyright office and thus require special strategies for registration. There are also additional considerations for more complex works, such as those which incorporate elements from another work, or have multiple authors. I will discuss those issues next month.

To get the application form, go to the copyright office web site at www.copyright.gov. Under the “Publications” heading, select “Forms” from the menu. Click on Short Form VA. You can fill in this form online and then print it, or you can print the blank form and then fill it in by hand. The form includes a one-page summary of instructions for filling it out. These are relatively clear and easy to follow. There are also multiple “Circulars” online to explain various aspects of the application process. I just have a few supplemental comments:

Space 1: Title. This is where you put the name of your collection. If you are registering a group of unpublished works, you can give it any title you’d like, e.g., “Illustration Portfolio Series I.” If you are registering a group of works published together, its generally best to use the title under which they were published. That makes it easier for someone to find the registration if they are looking for it based on the publication title.

Space 2: Author/copyright owner. Only your name, address and citizenship or domicile are required. (Strangely, the form doesn’t give you an identified place to indicate your citizenship or domicile. You can put “USA” after your name). Phone numbers and email are optional. Some people like to withhold this for privacy reasons.

Space 3: Year of creation. This is required for published and unpublished works. Put the year that the last work in the collection was actually completed. This is not the same as the date of publication.

Space 4: Date of publication. Fill this out only if you are applying to register a group of published works. For unpublished works, leave it blank. You must fill in the month, day and year. Otherwise the copyright office examiner assigned to your application will delay processing until you have provided the missing information. If you don’t know the exact date, give your best estimate. There is no legal consequence to being mistaken unless you are deliberately stating an incorrect date for fraudulent reasons (e.g., putting down a later date in order to stay inside the three month grace period).

Space 5: Type of authorship . For most visual artworks, “2-dimensional artwork” will be correct.

Fee. Enclose a check or money order for the current fee of $30. This fee is per application, not per work. Your $30 check covers all of the works included in the collection you are registering.

Deposit specimens. For unpublished works, enclose one set of photocopies, mounted slides or a CD Rom of the images (the copyright office does accept CD Roms even though the web site does not mention this alternative). If the works are in color, these specimens should also be in color. The name of the collection (i.e., the Title you provided in Space 1) along with your name should be included on the specimens.

For published works, send two copies of the published form if practicable. For example, two copies of the gallery catalog, two sets of the greeting cards. If your work comprises only a small portion of a publication, such as a magazine, you can send just the tear sheets for the pages on which your works appear. If the published version is oversized or bulky, such as a fabric swatch or t-shirt, send photocopies, photographs, slides or a CD Rom. For online works, two print-outs of the web pages are appropriate, or a CD Rom copy of the site.

Always keep a complete copy of the signed copyright application and duplicate copies of the deposit specimens that were submitted with the application in your files. This is very important. The copyright office does not keep the deposit specimens indefinitely. Copyright lasts for your life plus 70 years. In the event you or your heirs need to prove a particular work was registered many years later, your file copy of the deposit specimen may be the only evidence.

Q. If I am commissioned to do a piece of art on a motorcycle tank for a customer, do I still own the copyright for that graphic even if they own the bike?

A. Yes. Copyright ownership means owning the bundle of intangible rights governing how your work can be reproduced and exploited. Copyright is separate from ownership of the tangible artwork, and it can be separately owned. Your customer paid for, and owns, the tangible artwork that was applied to his bike. However, unless you gave him a written assignment of your copyright in the artwork, you still own the copyright, and he has no rights to reproduce that work on other items.

However, its a good idea to be clear about this with your customers, as this distinction is frequently misunderstood. Even large companies get it wrong. For example, a bank bought several paintings by a local artist to hang in its lobby. Later the artist was surprised to discover one of them being used as the cover illustration for one of the bank’s brochures. Since her permission had not been requested, the brochure constituted copyright infringement. It didn’t matter that the bank owned the original painting.

Under the “first sale” doctrine, your customer has the right to display the artwork on his bike. However, if he wants to reproduce the artwork, for example, on a t-shirt or his website, he needs your permission. Often you can include a grant of specific permission (or “license”) to that effect in your purchase order or commission contract. Remember that you can make the scope of the license as broad or as narrow as you want. For a situation like this, it might be wise to limit his license to reproduction for his own personal, noncommercial use. You would then retain the rights to market t-shirts bearing that image to the general public, or to license the artwork for someone else’s website. And always remember to get good copies of your artwork before you deliver it to the customer. Copyright ownership does not give you an automatic right of access to the tangible work if it is owned by someone else.