The Layered Look: Copyrights and Visual Arts

People are generally aware that a painting, photograph, sculpture or other works of art are subject to copyright protection but many are less aware that copyright has many layers of possible protection which can present legal traps for the unwary.

An original work of art which may be a painting, photograph or sculpture, is subject to copyright from the time of creation of the work.  The copyright is owned by the artist or creator unless the work was produced as a work for hire where the creator is an employee acting within the scope of his or her employment duties, or by written agreement between the creator and a party who commissioned or ordered the work.

The exclusive rights of copyright for a visual work include:

• The right to make copies;
• The right to make derivatives;
• The right to distribute copies;
• The right to publicly display the work; and
• The right to reproduce the work on any article or item.

Here are a few examples to ponder in relation to these rights.

A photograph may itself be a separately copyrightable work apart from an original work being photographed.  For example, an old master painting may not itself be the subject of a copyright by reason of its age but a photograph of that master painting can be a copyrightable work of the photographer, or other owner if a work for hire.  The copyright owner of the photograph is entitled to control its copying and public display.

What if you wish to photograph a painting that is copyrighted?  Without permission of the copyright holder such a photograph will be a violation of copyright.

The risks of infringing a copyrighted work are heightened by today's ease of electronic transmission by use of the Internet, social media, cell phones, etc. What if you photograph a copyrighted painting or sculpture and post it on your Facebook page?  That posting can be considered copying and also considered a public display, both of which are violations of the owner's copyright, if done without permission.

Another right of copyright is the right to publicly display a copyrighted work or copies of that work.  Say you purchased an Ansel Adams photograph of a Yosemite landscape, you may display that photograph for your own enjoyment or within you usual social circle but you have no right to publicly display that photograph unless you were granted that right of public display by the copyright owner.

What if you take a copyrighted photograph and Photoshop it into an altered image?  As one of the rights of copyright is to make derivative works, your Photoshopped image would be a non-authorized derivative and also an unauthorized copy of the original work.

Can you put a commercial photo of your favorite band on a tee shirt?  You cannot (absent permission) since the copyright owner has the right to reproduce the photo on any item.

Liability for copyright infringement can be significant.  An owner of a registered copyright can claim damages based on actual provable economic loss or more often statutory damages which can be in the range of $750.00 to $30,000 for each infringement, as a Court may determine.  In cases of willful infringement, a Court can award costs and attorney's fees.  A court may also issue an injunction against ongoing infringement.

In a case of willful infringement under certain circumstances generally relating to commercial piracy of copyrighted works, there can be criminal liability for copyright infringement with penalties including fines and/or imprisonment.  
A defense to an assertion of copyright infringement is the right of fair use of the copyrighted work, which generally allows non-commercial use or copying for purposes of criticism, comment, news, teaching, scholarship and the like.

It would be safe to assume that copyright attaches to most paintings, photographs, sculptures and other visual arts and you should seek permission for any intended commercial activity. Permission may be sought directly from the copyright owner or most conveniently from various licensing organizations which exist for the purpose of providing such permissions.  Usually the permission is for a fee in an amount which depends upon the extent of intended use of the work. Well known licensing organizations for the visual arts include Corbis, Getty Images, Artists Rights Society (ARS), and stock photo companies, among others.

That’s Patentable? The Far-Reaching Definition of an “Invention”

U.S. patent law provides that “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor,” 35 U.S. Code §101. This leaves open a broad range for potential patent protection. The categories of a “machine, manufacture, or composition of matter” provide for many traditional concepts of an invention, such as devices, chemicals or other physical objects. Focusing on these physical items as being invention ignores the “process” category. The process (or method) type of patent has been used to cover a broad range of technologies – from manufacturing techniques to medical procedures. It is this category’s open-endedness which has presented a number of extraordinary patent opportunities as well as a fair share of headaches.

Concerns that method patents may be used to cover broader concepts than is appropriate has caused many to struggle to determine what types of technologies should be allowed to receive patents. The myriad court decisions and United States Patent and Trademark Office rules in the past few decades alone have created a complicated thicket of patent eligibility rules. Despite these issues some interesting ideas and non-traditional concepts have been granted patents. While some might argue that such patents are not appropriate, the Patent Office’s willingness to grant such patents introduces some leeway into determining what might be patentable and that might otherwise be overlooked.

In some cases, patents have been issued for processes used to play card games. One patent that has reached a particular level of notoriety (or infamy) is US 5,662,332. This patent covers a method of playing trading card games where each player constructs a deck of cards. The claims include coverage for “designating the [card] being brought into play by rotating the [card] from an original orientation to a second orientation.” Further claims cover a rotating, or ‘tapping,’ to make players are aware the trading card is in use.

Patent protection has also been awarded to methods involved in the presentation used in computer games. Patent US 6,935,954 was awarded for a sanity system used in a video game where the “character may experience hallucinations as a result of the sanity level.” During game play, the sanity level of the game character is modified based on a character reaction and an amount of character preparation. As the game continues, game play is impacted by varying game effects according to the game character sanity level.

In another patent, US 8,082,499, the graphical interface for an interactive dialog is presented. A dialog choice indicator is shown which has a number of directional choices. Dialog responses corresponding to a particular emotion are then provided in a consistent location/direction.

In 2014, the U.S. Supreme Court decided CLS Bank International v. Alice Corp which invalidated claims that were determined to be drawn to an abstract idea. In response to this case, the USPTO has adjusted their stance regarding patentable subject matter and has rejected many applications held to be too “abstract”. However, this has not prevented the Patent Office from still issuing patents directed to some intriguing methods.

Patent US 8,920,245 is directed to a video game award method. According to the claimed method, the player is awarded a digital gaming object while playing a first game and is then able to use the digital gaming object within a different game.

A language-based video game method is protected by US 8,825,492. In this method, the game display shows an animated portion of a human head related to speech to show a pronunciation of selected text. The text is then transformed into a non-textual form which can be used by the avatar to overcome at least one challenge, for example, a letter of the alphabet may be transformed into a rope which can be used to overcome a rock climbing challenge.

In another post-Alice patent, protection extends beyond graphic displays. US 8,721,415 covers a computer-based solitaire game with stack-based pay table. The player is provided a payout which is calculated based on a per-card payout award and the actual number of cards transferred during the game.

These examples demonstrate that patentable inventions can be made in non-traditional fields. Simply because an invention is not incorporated in a physical object, such as a motor or a chemical composition, or relates to an industrial process, doesn’t mean that patent protection is unavailable. While care must be taken to ensure the claims comply with patentable subject matter restrictions, great opportunities still exist for patenting concepts which might otherwise be overlooked. 

What Can Go Wrong – It's Just A Non-Disclosure Agreement

A Non-Disclosure Agreement (“NDA”), also known as a Confidentiality Agreement, is an agreement that precludes the use of confidential information provided by one party (a “Disclosing Party”)  to another party (a “Receiving Party”) for any purpose other than that expressly contemplated by the agreement.  Such agreements are routinely used in business. For example, when one party desires to enter into discussions with another party with respect to a potential business relationship or transaction, it is frequently necessary for the disclosing party to communicate confidential business and/or technical information to the other party in furtherance of the relationship or transaction. 

 

NDAs can be either unidirectional or reciprocal.  A unidirectional NDA contemplates disclosure of confidential information from only one of the parties to the other.  A reciprocal NDA contemplates the disclosure of confidential information from each party to the other and obligates each receiving party to maintain in confidence the other’s confidential information upon the terms set forth in the Agreement. 

Things Can Go Wrong

It should not come as a great surprise that from time to time, a party will utilize a form of NDA they have found on the Web, an NDA that may have been appropriate from some other transaction or an NDA provided by the other party without a lot of consideration for the content of the agreement.  This can be a colossal mistake.  Perhaps, since NDAs have a well understood premise – i.e. that the receiving party should hold the received information in confidence – these agreements are dealt with more casually than some other agreements.

 

I am reminded of a situation in which a potential client advised he had disclosed quite a bit of his confidential technical information to a large company.  He was considering granting a know-how license that would permit the large company to utilize his “confidential information.”  When I inquired whether an NDA had preceded the disclosure of his information to the potential licensee I was assured that this had been addressed by his office manager.  As it turned out, an NDA had in fact been signed, although upon review of the NDA, it was discovered that the signed NDA was a unidirectional NDA that protected confidential information disclosed by the potential licensee.  The NDA included no limitations with respect to the use or further disclosure of the information already disclosed by the potential client.

 

The complexity appropriate to any NDA can vary considerably based on the contemplated business relationship or transaction.  The provisions in any NDA should be commensurate in complexity with the transaction under consideration. One would seldom need a 20 page NDA for a small value transaction. 

Terms For Consideration

Some terms to consider when entering into an NDA are listed below:

1. What uses should be permitted by a receiving party with respect to a disclosing party’s confidential information?
2. Should the NDA be unidirectional or reciprocal?
3. How long should the receiving party be required to maintain the received information as Confidential Information?
4. Who, at the receiving party, should have have access to the confidential information of the disclosing party?
5. What information of a disclosing party should not be considered Confidential Information even if so designated by the Disclosing Party? Typically, the recipient of information deemed confidential by a disclosing party is not bound to retain the information in confidence if the information is publicly known, already known to the recipient or if the information falls within certain other classifications of information  for which no expectation of confidentiality would be appropriate.
6. When is the NDA terminable by a party and what are the obligations of the parties upon termination of the Agreement with respect to the return or destruction of a party’s Confidential Information?
7. Should the receiving party be precluded from using information obtained from a disclosing party to fashion or amend patent claims in a pending patent application of the receiving party?
8. Other terms involving ownership of information, disclaimers with respect to accuracy or completeness of disclosed information, injunctive relief in the event of a breach by a receiving party, non-solicitation of employees of the other party, governing law and arbitration provisions, among others may be appropriate for specific circumstances.

Generally, it is recommended that NDAs be prepared or reviewed by counsel prior to execution.