The
Art Directors' Rights
In Commercial Photography
Just When Photographers Thought They Had Worked Out The "Work Made For Hire" Claims To Copyright In "Their" Work, An Even More Vexing Problem Arises!
by:
James Lorin Silverberg, Esq.
Director of Litigation, The Intellectual Property Group PLLC
Copyright 2002 James Lorin Silverberg
On February 15, 2002, the Ninth Circuit Federal Court of Appeals turned the Art Directors' relationship with the professional photographic community on its head. It is a decision leaving Art Directors questioning just how much in residual revenues from photographic shoots they re entitled to claim from the Photographers with whom they have worked during the last one hundred or so years; one leaving the professional photographic community with the unpleasant question of how many tens, hundreds, thousands, hundreds of thousands, or even millions of dollars they may owe to the Art Directors overseeing their shoots; a decision in which the Ninth Circuit ruled that Art Directors can qualify as co-authors of the photographs they art direct. This further means that as a co-author, they are also co-owners of the photographic copyrights, which in turn can entitle them to revenues from residual sales extending back to work created under the Copyright Act of 1909.
According to the Court's opinion, Phillip Collins, not an Art Director, per se, was a book author who had done numerous books and calenders featuring photographs and memorabilia. He hoped to publish a book on vintage television, and so he proposed to Garry Brod, a Photographer, that Brod do the photographs. Brod assented, and ultimately there was produced "The Golden Age of Televison." For the purpose of creating the work, Collins arranged to photograph a collection of televisions, and he and Brod traveled together to the site of the shoot. The two collaborated in the photography sessions, cleaning and setting up the televisions and props. Collins viewed a preliminary Polaroid test photograph of each image, and made suggestions regarding any changes he thought appropriate. Brod triggered the shutter, and developed the photographs in transparencies and delivered them to Collins. A situation we all know, the Court's description of what transpired depicts what we may understand as being the epitome of an Art Director supervised photography shoot.
Litigation ensued when Brod discovered that the book was published, Brod claiming that his photographs were wrongfully marketed and published in the book. However, and perhaps to his surprise, the Court rejected Brod's claim. Recognizing the principle that an author could not infringe a copyright which the author himself owns, the Court examined Collins involvement in the photo shoot, and determined that it was sufficient to render him a co-author, a co-owner of copyright, and thus not an infringer of the rights. In ruling thus, the Court set out a four prong test for determining the co-ownership of copyrights in photography; a test which may ring the cash register for art directors, and which may be leaving photographers with many future sleepless nights.
Prong One: Is There a Copyrightable Contribution?
At the outset of its opinion, the Court ruled that Collins selected the subject matter of the photographs, located the televisions that were used, he collaborated on the photographic composition by selecting and positioning both televisions and props, and he suggested camera angles and changes before Brod triggered the shutter. In view of this the court ruled that Collins' contributions were sufficiently original and expressive to constitute a copyrightable contribution to the photographs even if Brod was the one pulling the photographic trigger. Little imagination is required to envision the similar if not more involved role the Art Director may play in the photo shoots they direct.
Prong Two: Was There Artistic Control?
The Court also found that Collins met another necessary prong of its test. He had "artistic control" over the work. He inspired the idea, located and obtained permissions to use the vintage televisions, contacted Brod to collaborate on the project, arranged for the composition for each shot, directed Brod to make changes to the camera angles, selected the photographs for use in the book, and enhanced the images for book publication. Collins also alleged that he gave final approval of the position of the subject matter and camera angle, before Brod triggered the shutter in each photograph. In fact Brod admitted that Collins was at least "the Art Director of the television shoot." The court found overall that Collins inspired and directed the production, and thus had sufficient artistic control over the photographs to be considered a co-author as a matter of law, not merely an "over -reaching contributor." Is such involvement not a typical occurrence in the life of the Art Director?
Prong Three: Was There Co-authorship Intent?
Addressing the copyright law's requirement that co-authors must express a shared intent to be co-authors, the court made clear that the intention of co-authorship refers to the intention to collaborate as authors, and not whether there was an intention to create a particular legal result. Thus, reciting the facts of Collins' and Brod's respective artistic endeavors and their respective actions that resulted in the creation of the work, the court noted that Brod manifested his intention that Collins be a co-author by collaborating with him, deferring to his judgments on composition, and positioning, agreeing that the photographs were for use in a book about vintage televisions, and by delivering the transparencies to him. For the court, this was enough to manifest Brod's intent that Collins be a co-author, even though Collins procured a copyright registration in his name alone, and even though Collins gave Brod sole authorship credit for the photographs! These matters, according to the Court, were relevant less to their agreement to collaborate as "co-authors," and were more relevant to their intentions for the legal outcome; an apparent intention as to legal outcome which came to an opposite legal result.
Prong Four: Audience Appeal.
While noting that the fourth prong of the co-authorship test, whether "the audience appeal of the work turns on both contributions and the share of each in its success cannot be appraised," no evaluation was done by the Court on the application of this test to the case. Perhaps it was obvious that the photographs which resulted from Collin's and Brod's efforts, had an audience appeal that turned on both of their labors, and that the respective contributions of each could not be separated from the other. Whatever explanation there may be for that, Art Directors and Photographers are ultimately faced with the need to make perhaps unsettling adjustments as to how they may have understood their legal relationship, rights ownership, and financial claims to date.
The Conflicting Claims of the Art Director and Photographer.
Difficult as it is to see how an Art Director supervised photographic shoot could materially vary from the Collins-Brod relationship, at least in most circumstances, the case leaves Art Directors to ponder their financial interests in all those copyrightable photographs rendered with their now found "co-authorship." And just when the photographic community may have come to sort out their ownership claims under work for hire law, (the law that holds that they will retain copyright ownership in work which they create as independent contractors, not as employees, as long as they do not sign a work for hire agreement or otherwise assign their rights), Photographers are now faced with the nemesis that Art Directors may have a joint copyright ownership interest in "their" work under the joint authorship rules.
The Conflicting Financial Interests.
Sorting out the Art Directors' financial interests in all that photography is another matter. Under the copyright law, either joint author may use or license a joint work without their co-author's permission. However, the use or license is subject to a duty to account to the co-author for a proportional share of profits. The first thing which jumps to mind is the Art Directors' financial interests in all those stock photography residuals, and the various other licensed re-uses which the Photographer may have contracted for. For the seasoned Art Director, with years of photographic supervision, this raises a mind boggling number of dealings with Photographers and an even more mind boggling number of works, which these Photographers have generated, all of which are subject to the Art Director's financial interests wherever joint authorship is found. Putting statutes of limitations issues aside, millions of dollars are at stake industry wide.
The Future of The Industry and the Art Director-Photographer Relationship.
In an industry where the Art Director and Photographer have both arrived at a heightened appreciation of the rights vested in them by copyright, it seems that a battle cannot help but be brewing. With each claiming copyright in their copyrightable expression, it is difficult to see how either will defer to the sole authorship or exploitation of photographic work by the other. Now, as always before, the necessity of fixing the rights ownership relationship in writing is apparent. But, that tricky task of properly wording a contract to address the threats of, or benefits of, joint authorship is now more onerous than ever. Contract wording which merely speaks to "retaining rights," or which conditions an "assignment" or license upon payment or further permission may no longer be sufficient for the photographer. Now, Photographers must recognize the possibly painful reality that the Art Director may be a co-owner of the copyright in "their" photography, even if rights by the Photographer are "retained" or are not "assigned." And peril to the Photographer whose contract says the wrong thing, or nothing, only to find himself with an inventory of work in which the Art Director is ready to cash in. No doubt, there are many Photographers who face that situation today, and countless cases which will address it in the future.
For downloadable legal forms addressing the joint authorship issue, visit www.Artlaws.com and click on "The Art Law Library", "Photography" forms, or go directly to www.Artlawlibrary.com.
James Lorin Silverberg, Esquire, is Director of Litigation for the Intellectual Property Group, PLLC, whose practice focuses on the representation of clients in the art, advertising, design, entertainment, communications, film/video, Internet, media, publishing, and related industries and professions. He has litigated copyright cases in California, New York, Maryland, Virginia, Colorado, Minnesota, Illinois, The District of Columbia, and North Dakota. Mr. Silverberg is one of the founding members of AIGA/Washington, and was organizing counsel for AIGA/Baltimore. Mr. Silverberg has served as a Professor of Law at the Washington College of Law, and as Adjunct Faculty or Lecturer at The American University, The George Washington University, Virginia Commonwealth University, and The Corcoran College of Art, teaching the subjects of copyright, entertainment law, arts management, studio management, publishing, and related topics. Mr. Silverberg has represented hundreds of commercial artists and photographers across the country for more than 20 years. He is a graduate of The George Washington University, J.D. 1980 and SUNY/Purchase, B.A. 1977. He can be reached through the DC office of The Intellectual Property Group, PLLC, 3600 Clipper Mill Road Suite 278, Baltimore, MD 21211, at 410-338-2787 or toll free 888-749-2787. The firm's web site "The Art Law Center" can be accessed at www.Artlaws.com.