The Artist as Underdog

featherpaintings
Used with permission of the artist

It was a classic case. Canadian graphic artist Jody Edwards, noted for her realistic and original feather watercolours, spotted some of her artwork printed on shirts for sale at the retail clothier Winners. It turned out that some of the same shirts were also for sale in Canada at Marshalls and Nordstroms, via online retailer Nordstrom Rack. When she contacted both companies, Marshalls said they would stop selling the merchandise while Nordstroms said they were sold out and would not restock. However, if she wanted to pursue payment for her copyrighted work, she was told she would have to go after the supplier, a company called Bella M Inc., based in Los Angeles, and marketing under brand name Vanilla Sugar. Her story was publicized by a CBC “Go Public” report. She had turned to the program for help in tracking down the L.A. supplier, which had as many as eight different company names and thirteen different addresses.

According to the CBC report, through the network’s investigative reporters she was able to make contact with a legal representative of the supplier, which denied that the artwork in question infringed on Edwards’ copyright, but nevertheless offered to resolve the situation “amicably” through a negotiated settlement. It is likely that the retailer in Canada (TJX-parent company of Winners and Marshalls), both of whom stated that they have policies requiring vendors to respect intellectual property laws, put pressure on the supplier to make the problem go away, although according to Ms. Edwards so far there has been no settlement. According to legal experts quoted in the CBC report, Canadian law– unlike US law–does not provide for liability for secondary infringement unless it can be proven that the infringement was done knowingly. All of which left Jody Edwards with little recourse other than either to engage expensive legal counsel in the US to go after the supplier (or possibly retailers, as apparently there were also sales in the US) with threatened legal action, or, as she did, to appeal to a sort of “public ombudsman” for help through the Go Public program. This illustrates the perils of the small artist as the underdog in the digital world where it is all too easy for design and other companies to appropriate content off the internet, seeking forgiveness afterwards if caught but not bothering to secure the proper permission (and making the required licence payment) in advance. It is a widespread problem.

Policing copyright infringement requires constant vigilance on the part of the artist. It is probably no surprise that most infringement goes unnoticed unless the infringed work becomes a commercial success. That is certainly the case in regard to recent music infringement cases, where there is often a fine line between infringement and inspiration. The chances of the actual artist stumbling across copies of their work, as happened with Ms. Edwards, are relatively slight. There are lots of infringing goods out there on the Internet, but again it would take a determined sleuth to track them down. Large companies with significant intellectual property holdings protected by copyright, such as record labels or movie studios, or wealthy artists, have the means and incentive to actively enforce their rights in court. However for “struggling artists” or small businesses, getting and paying for legal assistance is a difficult proposition.

In the US, access to pro-bono legal help for small businesses in the area of intellectual property is available through programs offered by a number of law schools. One such well known program is the Center for Protection of Intellectual Property (CPIP) at the Antonin Scalia Law School of George Mason University in Alexandria, VA. While CPIP handles a range of intellectual property issues, it is a pioneer in the area of copyright support through its Arts and Entertainment Advocacy Clinic which acts “on behalf of underrepresented artists, creators, and small businesses in the arts”. Another similar service is provided by “WALA”, the Washington Area Lawyers for the Arts. Begun in 1983, some 350 of Washington’s top lawyers and law firms participate as volunteers in WALA’s legal services programs, according to the Association’s website.

To my knowledge no such program exists in Canada, although I am aware of two university-based intellectual property clinics, one, the International Intellectual Property Law Clinic run jointly by the University of Windsor Law School and the Mercy Law School at the University of Detroit, the first such program certified jointly by both the USPTO and the Canadian Intellectual Property Office (CIPO), and the other offered by Osgoode Law School in Toronto (IP Osgoode). The emphasis of these programs, important as they are, is not on copyright law however, but rather on technical innovation and assisting start up tech companies to register and protect their patent holdings. Even though some work is clearly being done in this area, there are calls from the legal profession for much more support to be provided as part of a strategy to close Canada’s innovation gap, focussing primarily on patent registration.

Just as the tech community needs assistance to protect its IP assets, protection of copyrights is equally important for the artistic community. But, as the case of Jody Edwards illustrates, there are very few places that the struggling artist can go to seek help. More often than not, the artist is the underdog seeking redress against a system where the odds seem stacked against them.

© Hugh Stephens 2017. All Rights Reserved.

5 thoughts on “The Artist as Underdog”

  1. Hugh, another fascinating and informative–if also discouraging!–blog post. I don’t know where you find such an eclectic selection of blog topics. Keep them coming. I always enjoy them and pass them on. Cheers! Joy

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  2. I feel terrible for Jody Edwards and other creatives whose artworks have been unlawfully exploited by corporations, businesses, and others.

    I, too, am a Canadian creative. And this is what I’ve observed and experienced first-hand.

    I believe that many of these “artist underdog” legal issues, to some extent, are preventable had the artists performed some business due-diligence.

    Among other best business practices, Canadian painters, writers, poets, graphic designers, musicians, photographers, filmmakers, and international artists need to pro-actively protect their artworks by doing the following:

    1) Timely register their artworks with the US Copyright Office;

    2) Affix watermarks (business logos) to works that include their name, copyright logo with year of first publication, and web URL or social media handle; and

    3) Add metadata that includes copyright attribution, contact information, and the following language: “THIS WORK IS AVAILABLE FOR LICENSING & REPRINT SALES.”

    If a Canadian entity is unlawfully reproducing artwork on apparel, merchandise, or in media, there’s a good chance it’s also being infringed elsewhere including in the United States through an affiliate or an un-approved licensee; hence, the need to timely register works with the US Copyright Office.

    International artists who live in a Berne Convention country do not have to register their copyrights with the US Copyright Office to have legal standing to sue in a US federal court. However, artists are only eligible to pursue actual damages (typically the licensing fee) and the disgorgement of profits (if any!) against US-based infringers. Too often, attorney fees will out-strip any settlement or court award, making it a losing bet to go after infringers located in the United States.

    In very limited circumstances, artists can still pursue US-based infringements if their (unregistered!) work was reproduced in a large commercial advertising campaign or on packaging, as those particular infringements could potentially exceed six-figures in missed licensing fees.

    On the other hand, a “timely” register copyright (before the infringement occurs or within three-months of first-publication) provides Canadians, Americans, and international artists the right to pursue enhanced statutory money damages and the potential recoupment of attorney fees against US-based infringers. This provides artists’ (pro bono) American attorneys LEVERAGE to push for (quick) out-of-court settlements. Assuming the unlicensed artwork doesn’t fall within Fair Use, infringers who choose not to settle and don’t prevail during trial, are now liable for up to US$150,000 in damages + full legal costs (both at the court’s discretion).

    An un-timely registered copyright can still protect an artwork going forward; if the work has been infringed once, then it’s likely to be infringed again. So, it still pays lots of dividends for artists to register their works with the US Copyright Office.

    The Certificate of Registration that the US Copyright Office mails to artists is “presumptive proof” of copyright validity & ownership. I also have to believe that a Certificate of Registration issued by the United States Copyright Office could be used in other countries to prove the artist’s authorship and copyright ownership.

    With the assistance of the United States Customs & Border Protection, the Certificate of Registration can be used to stop unlicensed art products from entering the United States.

    If a watermark or metadata has been removed or changed to hide an infringement, artists are eligible to pursue DMCA/CMI (Copyright Management Information) statutory damages (US$2,500 to US$25,000) against US-based infringers (this legal option does not require the work to be registered!). Attorney fees are also available. I’m seeing more and more attorneys using this strategy to pursue US infringers:

    1) Options for Recovering Infringement Damages: http://www.photoattorney.com/?s=cmi

    2) Did Someone Remove the Copyright Notice from your Photograph? http://www.photolaw.net/did-someone-remove-the-copyright-notice-from-your-photograph.html

    If Canadian and other artists choose not to register their copyrights, they should, at the very least, affix a watermark & metadata to obtain some legal redress against infringements initiated out of the US.

    To mitigate costs, artists are currently permitted to “group-register” an un-limited number of un-published works in one US$55 eCO Standard Application (the eCO is the on-line system to register copyrights); you can NOT mix published and un-published works in the same application. It’s highly recommended to include a robust descriptive title (aka “Content Titles”) for each un-published work being registered within the group-registration. If you’re registering 15 un-published drawings, include 15 Content Titles.

    1) Which eCO application do I use: http://www.copyright.gov/fls/sl04s.pdf

    2) eCO Single Application tutorial: http://copyright.gov/eco/eco-tutorial-single.pdf

    3) eCO Standard Application tutorial: http://copyright.gov/eco/eco-tutorial-standard.pdf

    4) “Publication” definition: https://www.copyright.gov/help/faq/faq-definitions.html

    It’s also possible to register published works in one eCO Standard Application: All works must be published on the same date and in the same unit of publication; e.g., eight of your landscape paintings where all first-published in a same 12-month 2017 calendar.

    If the artist solely owns the entire copyright to her work (that’s not part of a work-for-hire assignment), she can register one work, published or not, using the $35 eCO Single Application.

    This link reinforces why international businesses (and artists) need to timely register their copyrights with the US Copyright Office: http://donahue.com/resources/publications/copyrights-registered-u-s/

    If you ever have to contact a US copyright attorney seeking counsel on how to obtain financial restitution against an American infringer, her first, second, or third question to you will be, “Did you timely register your artwork with the US Copyright Office?” That’s what happened to me. Fortunately, I received a nice out of court settlement against a publisher’s multiple infringements.

    In short, if a good part of your income comes from licensing/selling your art locally and internationally, then it has to be timely registered with the US Copyright Office to give you and your attorney options.

    Links provided are current as of February 26, 2017.

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    1. Thank you for taking the time to share this very helpful information with those who read my blog. Since not everyone reads comments, I would like to highlight this information, with credit to you, in a future blog. Can I assume you would not have a problem if I did so? Thanks. HS

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    2. The following case supplements my February 27, 2017 comments:

      From http://liebowitzlawfirm.com/liebowitz-law-firm-pllc-represents-italian-photographer-in-copyright-suit-against-buzzfeed/

      Alessandro Masi is a documentary photojournalist whose photograph was allegedly infringed by BuzzFeed. According to the complaint and information filed with the US Copyright Office (CO) (registration # VAu001261303), Masi is Italian who currently lives & works in London.

      Masi is one of only a handful of international photographers I’ve come across who has timely registered his photograph/s with the CO. Instead of pursuing actual damages and the infringer’s profits (both typically low dollar amounts), Masi is now eligible to collect enhance statutory money damages and potential recoupment of attorney fees against BuzzFeed (should BuzzFeed not settle and lose at trial).

      Though no one can predict legal outcomes, and assuming the photograph doesn’t fall within Fair Use, Masi’s attorneys are likely to be in a strong position to encourage BuzzFeed to settle and mail Masi a cheque to make this infringement problem go away.

      Conclusion: A timely registration really, really counts!

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  3. > I would like to highlight this information, with credit to you, in a future blog.

    You may. Thanks for asking before proceeding. Most ask after the fact!

    To be clear, I’m neither an attorney nor a copyright expert, just a creative whose works have been repeatedly infringed. Though I feel my understanding of US copyright law is sound, you should, nevertheless, double-check it with a US-based copyright litigator/attorney. This way your blog and commentary are sharing correct & up-to-date copyright information.

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