This Tuesday, November 16, 6-8 PM, attend an interactive workshop at the Boston Center for the Arts Mills Gallery on Legal Issues and Starting a Business as an Artist. The workshop is hosted by ARTmorpheus and features attorneys Jenny Milana and Mitchell Bragg of DangerMilana Law Firm. There’s a limit of 15 participants and a $10 fee, payable to Boston Center for the Arts. RSVP here.
If you’ve been following this blog, you may recognize Jenny Milana from our Ask an Arts Attorney feature, where she’s fielded questions about copyright, contracts, e-book rights, and other arts law matters. Jenny is back for another installment, and she’s joined by Mitchell Bragg, who specializes in intellectual property law for DangerMilana. (Also, credit is due to DangerMilana intern Michael McCubbin for researching the topics.)
Incidentally, if you have any arts law questions, send them our way for a future “Ask an Arts Attorney” post.
Please note: this post is for informational benefit only and should not be used in place of actual legal services. Also, as a state agency, the Massachusetts Cultural Council does not endorse any individual business or service.
If I commission someone to create something custom for me that I design, can they then replicate that design for someone else without my permission? I could draft some agreement to protect me from this or to share in future profits should there be any, but would that be accepted in the arts and crafts world? For instance, we designed a wrought iron railing that the iron company replicated for someone else in a very visible exterior location. Also my friend paid a lot of money for a custom stamped tin stove hood that the artist is now mass producing and selling for much less than she paid. Frustrating! Unfortunately neither of us had anything in writing to protect us. Is there anything we can do? I have another idea for something unique I would like to have made. How can I protect myself from this moving forward?
Dear Ripped off!,
As a general rule, copyright protection does not extend to “ideas.” Instead, a creator can only protect the tangible expression of that idea when it is fixed in a physical medium. For example, were Michelangelo to think to himself: “I am going to chisel an image of Mary holding Jesus,” he could not receive copyright protection for that “idea;” however, he could receive protection for the actual sculpture of his famous Pieta. So, the answer depends on whether your “design” was ever fixed in any physical medium (i.e. a drawing, a sculpture, etc.), or whether it was merely an “idea” in your mind. If you have the “design” fixed in a tangible medium, you may receive some protection and stop further reproduction; however, if you merely thought of an idea, there is no copyright protection for the “idea” underlying the design. Also, if you do not have a copyright registration it will be difficult to bring a lawsuit, but the possibility remains.
The situation you presented will depend on your unique circumstances – for instance, did the iron company commission you to design a railing, or did you commission the iron company to make a railing for you, based on your design, and the company is now continuing to market that same design for sale to others?
If the company commissioned you to design a railing for their manufacture, then you likely have no rights to that design and the company can make any use of it. In this scenario, based on the information in your post, your “design” for the railing would be called a “work-for-hire.” Generally, this is what most commissioned works default to unless there is a written agreement otherwise. If so, because the company commissioned you to design the railing, they own all copyright protection in the design because they paid for your creative efforts.
Conversely, if you commissioned the company to make a railing, solely for your use, you may have some protection; however, any protection is contingent upon the factors discussed in the first paragraph above. Namely, do you have the design fixed in any medium and, more specifically, do you have a copyright for the design? While you may still be protected if you do not have a registration, provided that the design is fixed in a tangible medium (i.e. the drawing, sculpture, etc.), it will be difficult to claim ownership in court without a registration. To sue someone for copyright infringement, you must have a registration; however, you may be able to sue for “misappropriation” of your intellectual property (the design) if you can show proof of ownership for that design.
In the future, it is always best to have something in writing, signed by all the parties involved (e.g. you, the iron company, etc.) and the benefits of copyright registration cannot be overstated. Registration is relatively easy, inexpensive, and makes it easier to stop people from infringing your intellectual property. Similarly, a simple written document indicating that you own the design, the finished product, and which forbids the manufacturer from making additional reproductions of that product would seem to protect you. Essentially, you want the process of manufacturing your design to be a “work-for-hire” (you should call it that in the written document) so that you own all the copyrights. But remember, you would not want any work that you do for others to be called a “work-for-hire,” unless of course you don’t mind giving up ownership in the copyright. Again, copyright registration is only $35 – it pays to register!
Jenny Milana and Mitchell Bragg are attorneys at law at DangerMilana. Special thanks to DangerMilana intern Michael McCubbin who researched the above topics.
If you have any questions for a future Ask an Arts Attorney post, send them here.