Archive for the ‘arts attorney’ Category

Ask an Arts Attorney

Monday, November 15th, 2010

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.

Today’s question:
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?

Ripped off!

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.

Ask an Arts Attorney

Friday, September 10th, 2010

This is our second installment of Ask an Arts Attorney, in which arts and entertainment lawyer Jenny Milana of DangerMilana answers your questions on legal issues relating to work in the arts.

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.

Now onto matters copyright, contract, and e-publishing!

Is it ok to take a published paperback novel and turn it into a piece of fine art by altering it and making it no longer readable and not having the title or author showing? The pieces would then be for sale. Thanks!

An artist with a novel idea

Dear novel idea,
What you are describing is called a derivative work. A derivative work is when an author creates a new work of art that incorporates copyrighted material, whether identifiable or not. What might be considered unidentifiable to some may be identifiable to others though. Only the original author of the novel has the right to use or license for use the copyrighted work to create a derivative work. When a derivative work is created, in this case the fine art, the fine art is copyrightable. However, the copyright in the fine art only covers the new material. It does not extend to the previously copyrighted work, the novel.

Another thing to be careful of when you create a derivative work is you could be violating rights other than copyright. For example, if the author has a trademark or other marks that are protected on the pages of the book, you would be possibly violating trademark rights if there is any way that the consumer could think the work was authorized or created by the trademark owner.

When you create an original work of the fine art, you hold the right to create derivative works or license others to create derivative works. An example is I could not take a photograph of your piece of fine art and then turn around and sell the photograph. That would be a derivative work, even if I used Photoshop and mutilated the image to the point your work was unidentifiable. I could not have created the photo without incorporating the image of your fine art. As the author of that fine art, you would want the ability to sell photographs.

Ultimately, my suggestion to you is to use books that are in the public domain. This way there is no copyright to worry about. Avoid using images from any books in the public domain though as those may not be part of the public domain. There are several books that are part of the public domain and are newer than 1923, but if you want to be truly on the safe side, any book first published in the US prior to 1923 are part of the public domain.

I do not like to make prints or reproductions of my work. I sent a painting to a dealer to show a customer not too long ago and I was told by a fellow artist that I should have made up a contract stating that I didn’t want to have reproductions made of my work, in any form. I thought the dealer would have to ask for my permission to do if that were to occur.

My question is: Should I have made up a contract for the dealer to sign stating that under no circumstances there will be no reproductions of my work without my written consent?

The painting’s the thing

Dear painting’s the thing,
The answer to your questions is yes and no. Yes, every time you send your work to a dealer you need to send along a written statement. No, you do not need a contract that the dealer must sign to prevent your work from being reproduced.

There is a Massachusetts law (MGL 104A) that covers this issue. When you send a Gallery your painting and the Gallery is being paid to exhibit or sell the painting, the painting is considered on consignment. Auction houses are excluded from this statute. It sounds as though the situation you describe falls under this statute.

When you deliver your work to the dealer you are supposed to furnish to the dealer a written statement indicating you delivered your work of art. This statement should include your name as the artist and your name as the owner of the work, the title of the work if any, the medium and dimensions of the work, the date of completion, the date of delivery and the anticipated fair market value of the work. The dealer must keep a copy of that statement as an acknowledged acceptance of delivery and if the work is sold, the dealer is to record the date it sold, the amount it sold for and the name and contact information for who purchased the work. The dealer then sends the funds owed to you, the artist. These records are supposed to be kept for 4 years after completion of the sale and payment is to be made to you within 90 days of the sale or the dealer can incur fines.

Under this arrangement, the dealer is acting as an agent for you the artist and the property is held in trust by the dealer for the benefit of you the artist. Your work can never be subject to a claim by a creditor of the dealer and the dealer is responsible for any damage or loss to the work of fine art. The dealer also has a fiduciary duty under the law, which is a fancy way of saying the dealer has a very high standard of duty that the dealer must abide by regarding the money received for selling the work of art.

If you are providing a written agreement when you deliver the work of fine art as described under the law above, you can certainly add a quick clause that states you are only giving the art dealer permission to sell the work of art being delivered. This is really not necessary though because the right to create reproductions of your work is a right held solely by you the copyright owner. None of those rights are transferred to the dealer when you deliver the painting.

I recently signed a publishing contract for a new book of fiction. In my contract, the royalties for “online, digital, or other electronic format” publication is slightly less than for the paperbound edition, which seems odd, since it is presumably so much cheaper to publish or sell and electronic books. Shouldn’t royalties for e-books be more, not less, generous?

Also, I get a lot of e-mail from the Author’s Guild warning about the end of the world if publishers get their way with e-books and have not had nearly enough time to follow the intricacies of the debate. In short, what’s the essence of this?

It’s an E-nigma

Dear E-nigma,
Regarding your first question, your thinking is not uncommon. It is a common frustration of authors and a common topic on publishing and author websites. Royalties for e-books are not likely to be more though, and here’s why. Say traditionally you receive 15% royalties for hard back books and the book sells for $30. If the book is an e-book there are lower production costs as there is no printing. But the book wouldn’t sell for $30. It would sell for maybe $15. It is easy to argue though that the royalty rate should still at least be 15%, not less.

The reason e-book royalties are so low is because they never used to matter. The technology had not caught up yet so there was no convenient way to read e-books and they were not popular. Since it was rare for anyone to really make any money on e-books, the royalty rate was ultimately unimportant. The times have changed though as e-books are becoming the more popular format. But the contracts are not changing. In December of 2009 according to Amazon, they sold more e-books then print books.

The Author’s Guild has been fighting for higher e-book royalties for a while now and is making some headway very slowly. Just last month, Random House reached an agreement with a literary agency where they agreed to pay upwards of 40% in e-book royalties for the Odyssey series.

Other issues are slowing down changes. Most publishing agreements are broken up into territories and there are different clauses for translated books and entering into contracts with publishers in other territories. But e-books are sold online, and the internet is worldwide. Where an e-book would still need to be created in different languages, one publisher could release all versions of the book rather than there being several different publishers across the globe representing the different territories. The publishing industry has not figured out how to handle that issue just yet because any change affects the publishing industry across the globe.

There is also the issue of price point for e-books. Amazon set the standard quite low but as e-books grow in popularity, so will their prices. What the market will bear and where prices will level out is still up in the air. There was a lot of buzz when Apple released its iPad with the iBookstore what price consumers would pay for e-books. Prices were so similar that the Attorney General of Connecticut started an investigation into the contracts Apple and Amazon entered into to see if they threaten to encourage coordinated pricing.

The other issue that makes the Author’s Guild leery is that the majority of the agreements authors enter into have clauses that are very broad in scope granting publishing rights for any and all electronic versions in any all media formats for the length of the contract. With technology changing so quickly and the industry changing so much as well, everyone waits with bated breath. Ultimately the jury is still out.

Jenny Milana, a partner at DangerMilana, specializes in arts, media, and entertainment law.

If you have any questions for a future Ask an Arts Attorney post, send them here.

Ask an Arts Attorney

Wednesday, July 28th, 2010

We’re excited to welcome guest blogger Jenny Milana, of DangerMilana, whose experience in contract negotiations, copyright issues, and other legal matters spans the publishing, theater, music, film and television industries. What’s more, while growing up in California, Jenny worked as an actor, so she knows the field from the creative side, too.

She’s generously agreed to field artists’ questions on legal matters relating to their work. (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.

So without further ado…

My questions may be a little different than what you may typically hear from artists concerning copyright. At this point I am not concerned about the copyright of my own work but the copyright of published books and illustrations. I love to work with paper and am interested in using books with illustrations as materials for a new project. First, I understand that any work published before 1923 is considered public domain, but if those works are re-published at a later date (ex: Alice’s Adventures in Wonderland originally published in 1865 but the story re-published in 1946), is the 1946 publication considered public domain as well? Can I purchase that 1946 copy to be used in a new work of fine art? Thank you so much for any help!

Let It Fly

Dear Let It Fly,
Your question is a bit tricky because it involves the doctrine of fair use. Works in the public domain do not have any copyright protection and can be freely used. However, if those works are re-published at a later date by a new author and they are not identical to the original works, then such work does have copyright protection in the new material. The new material could be a spin on the story’s ending or the illustrations.

The original story itself which is in the public domain can still be used, but the new publication typically has taken the original work and modified it somehow, repackaged it in such a way which gives the new publication copyright protection in those new elements. So in your example about Alice in Wonderland, if the 1946 publication is still copyrighted because it maintained its registration prior to the 1976 copyright law, then you could not take that book and use it in a work of fine art because you are creating a derivative work, a right held exclusively to the copyright owner. A derivative work is a modification, or new use of the original work. You could, however, create a derivative work using the 1865 original.

A few questions. The first has to do with music publishing: what should an indie artist be on the lookout for when trying to license their original music? The second is about gigs: is there a casual way of putting something in writing for a gig which is both legal, casual and easy? Possible uses: dj’ing a wedding, gig at a small club on a tour (making sure gear and staff agreed upon, etc. is there).

Indie Songster in Somerville

Dear Indie Songster,
As in most things there is a long answer and a short answer. I’ll try to give you something in between. A musician looking to license their work should be on the lookout for a variety of things. The first and most important thing to watch out for is what rights you are licensing away. You don’t want to end up with your music as the theme song to a pornographic movie if your target market is teens, for example. You don’t want to give exclusive rights, either, otherwise you won’t be able to license your music for other purposes. There are also two kinds of licenses, master license and synch licenses. Most often, a music license needs to contain both. The master license is for the sound recording and a synchronization license is for the music and lyrics, or musical composition. Most licenses require both but some uses may not need both.

You want to make sure when negotiating rights that subsidiary rights like merchandising are talked about as well so it’s very clear what you are allowing the other party to do and not do with the music. Another thing to be on the lookout for is royalties. The royalties or cost to license the music should take into account every right or use you are granting. Some of these things may not be negotiable, though, when licensing to places such as iTunes. Most often, those contracts are not negotiable.

With regards to your second question, there is definitely a way to put something in writing that keeps thing casual but still protects your interests as best you can. Most parties do things on a handshake, and to involve lawyers and complicated contracts sometimes puts bad tastes in people’s mouths, which strains the relationships. At our firm DangerMilana, our primary goal in reviewing/drafting or negotiating any contract is to talk with the parties as though the contract is more like a collaboration agreement. Everyone’s goal is to continue working together and keep things moving, rather than slow things down going back and forth with negotiations. The contract should also be drafted in as plain English as possible, without all of the legalese. For small gigs like DJing weddings, etc., a contract is of utmost importance as it can be the difference in months of headaches and not getting paid. It also sets the expectations from the beginning.

Those types of contracts should be friendly, basic and no more than two pages at most if at all possible. I would still recommend a lawyer to draft this document, though, because they can maximize protecting your interests in as little wording as possible.

I recently won a publication contest for a book of short stories. I then received a contract to sign. This will be my first published book and so I had no agent and knew no lawyers with specialties in this area. I joined the Author’s Guild for an annual fee of $70 or so, and they reviewed the contract for me and sent me a lengthy response with proposed changes. I was then left more or less on my own to negotiate with the publisher based on their advice. Can you recommend a better way to do this?

Even after I won the prize, I still felt that I was extremely lucky to have found a good publisher for a collection of literary short stories, and although it seems to me the publisher negotiated in good faith, I still felt like I had very little leverage. Should I have acted tough? Should I have gone in swinging? Or should I just be grateful? And let’s say I had hired a lawyer, what should I have expected to pay?

Published but perplexed

Dear Published,
First of all, congratulations on winning the publication contest.

Second, unfortunately there are not a lot of better options. The best option is to have a lawyer do the negotiating if possible. That can be difficult though as lawyers can be expensive. One option is to request the attorney to simply negotiate the really important clauses like price or rights. This can cut down on the cost immensely and protect your interests in the area you are most concerned about.

Regarding your second question, I wouldn’t suggest going in swinging or just being grateful either. As I mentioned in another answer, our goal with any contract negotiation is that the parties are going to be working together and likely want to preserve the ability to work together in the future. As to what you could expect to pay, firms charge all different types of rates, some flat, some hourly. To give you a sense, though, our firm’s hourly fee is typically $300. However, we charge a flat fee for certain services such as contract review. For a review of a contract of less than five pages, we have the artist come in to sit and talk about their concerns (which which typically takes a good hour or so). But our flat rate for that ($150) would be significantly lower than our hourly rate. So when you approach a lawyer be sure to clarify what the rate is – and which type of rate it is – for the service you require. Be aware that some services may have a minimum retainer.

At our firm, we try and work with artists, and depending on the project, can offer a pricing level to fit the artist’s situation. Every artist is different, as are their needs. Some lawyers will be a better fit than others, so don’t hesitate to ask around until you find representation that fits your needs.

Jenny Milana, a partner at DangerMilana, specializes in arts, media, and entertainment law.

If you have any questions for a future “Ask an Arts Attorney” post, send them here.