A

recent private ruling handed

down by the United States Copyright Office on a dispute involving the reproduction of artwork has the potential to throw the ownership of hundreds of thousands of posters, limited edition prints, and photographs into question.

The effect of this ruling could be to divest artists and publishers of ownership in reproductions made by outside printing firms. This ruling could also represent a windfall to many unsuspecting printers.

The Copyright Office recently rejected a series of copyright applications by an artist who sought to register her underlying artwork and the photo-mechanical offset reproduction made by her printer.

On The Law

For the last decade, the artist has been registering her underlying artworks and the prints made from them on a single application, following instructions provided to her by the Copyright Office. In order to comply with state print disclosure laws, the artist included, in small print at the bottom of the reproduction print (in an area usually covered by the frame), the size of the edition, the method of reproduction, and the name of the printer.

While reviewing some of her recent applications, the Copyright Office noticed the name of the printer and contacted the artist. After ascertaining the reproductions had not been printed by the artist herself, it ruled the printer's contribution added

nough orginality to the process to

make the reproductions derivative works (a position disputed by the artist), and that the copyrights in the reproductions were therefore owned by the printers.

The artist, in a series of phone conversations and correspondence with the Copyright Office, explained the printer's contribution in creating the offset lithograph was merely mechanical, that its sole contribution was to reproduce the original as closely as possible, and that she had the absolute right of approval on all aspects of the final prints.

The Copyright Office, notwithstanding these explanations of the nature of the contribution of the printer or of the artist's actual control over the final product, maintained its holding that the amount of originality nec

The Copyright Office maintained its holding that the amount of originality necessary to hold a copyright in a derivative work is minimal, and that the printer owns the copyrights in the prints.

essary to hold a copyright in a derivative work is minimal, and that the printer owns the copyrights in the prints.

The artist dealt with this ruling in a pragmatic fashion: she had the printers she had hired assign any and all rights they may have had in the prints back to her, thus avoiding the expense and necessity of suing the Copyright Office in federal court to try to force a change in the ruling.

Taking the position of the Copyright Office to its logical conclusion, not only would a printer be deemed the reproduction copyright owner, but so would a copy center that makes color copies for which an operator had adjusted the contrast. tint and

other

If one accepts the Copyright Office position, an artist or publisher that asks a printer or atelier to create a reproduction of a pre-existing work is granting them a copyright license for the creation of a derivative work.

A derivative work is "a work based upon one or more pre-existing works. such as a translation... art reproduction... or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions . . . or other modifications, which, as a whole, represent an original work of authorship, is a derivative work.”

Whoever creates an authorized derivative work is generally entitled to copyright it in their own name. For example, if a movie is based on a book, the film is considered a derivative work of the book, and the copyright in a movie will be held by the movie company, not the book's author.

The same would hold true for songwriters and record companies. The composer may own the copyright in the song itself, but the record company will own the copyright in the sound recording.

The owner of a derivative work has the same rights to its work as any other copyright owner, except if limited in its original grant of rights. All such limitations should be clearly expressed in any license agreement.

In a situation such as noted in this column, there was probably no discussion whatsoever regarding the nature of the license being granted to the printer, as the artists and/or printers probably had no idea the printer was being granted any rights in the underlying reproductions

The right to publicly distribute a copyrighted work is one of the rights inherent in the copyright owner. By returning the limited edition prints. reproductions, or photos to the artist or publisher, the printer has probably granted them an implied license to distribute the reproductions. However, since any copyright license that is not in writing is deemed non-exclusive, the printer could also grant distribution rights to others.

In addition, as with many other contracts, a copyright license without a specified term or time limit may be considered terminable at will. Thus, a printer could cut off an artist's rights to distribute the works and deny the artist the right to acquire additional copies of the work.

The precious rights held by the printer and the artist or publisher will vary from case to case, depending on the nature of the correspondence.purchase orders, and conversations between the parties. However, what is clear is printers do have certain rights in the reproductions they have created.

What can an artist or publisher do? As to pre-existing works. a legal analysis must be used to determine whether the rights of the printer are sufficient to cause a problem. If they are, the artist and publisher would need to negotiate an assignment of all rights the printer may have in the derivative work.

Depending on the relationship of the parties, this might be an easy. economical, insubstantial matter, or if might be a complex problem which could end in expensive litigation. It is something that needs to be closely examined on a case-by-case basis.

Prospectively, each and every artist and/or publisher should, as a matter of routine in dealings with printers, obtain an assignment of any and all rights in and to the derivative work (i.e., reproductions made by the printer) before any work is performed.

While the assignment can be and should be part of any contract or purchase order, a separate document of assignment should also be obtained. This document would not have to contain any of the financial aspects of the transaction. It would be a public document to be recorded with the Copyright Office.

It is important to note copyright assignments must be in writing to be valid. Thus, the oral agreement of the printer to assign all its rights will not necessarily be recognized or effective.

Under the Copyright Office's current policy, to register an artwork one would still use the standard form VA and could use the lithographic reproductions as copies of the best editions for the purposes of deposit. A derivative work owned by the printer would require a separate registration.

January 1993

If you acquire an assignment and register the reproduction, in form VA, section 4, under "Transfers," you would state you acquired the copyright by assignment and could attach the assignment to the application. In section 6 of the form, under "6A, Preexisting Material," you would list the name and nature of the underlying artwork.e.g., watercolor by Jane Doe, and in "6B, Material Added to this Work," you would put "reproduction of watercolor by photo-lithography."

While the Copyright Office's position may or may not be correct, its implications will likely cause some major waves in the art world, depriving artists and publishers of copyrights they thought they had, and giving those rights to printers who neither asked for or bargained for them. O

Joshua Kaufman, Esq.. is an art law expert He successfully argued the 1989 landmark copyrigh case. CCNV vs. REED. before the United States Supreme Court He has taught art law at the Corcoran School of Art and teaches entertainment law at the American University Law School He is the Executive Director of Volunteer Law. vers for the Arts DC.. and is based in Washing ton. D.C