Between Thought and an Expression

Two different copyright queries have been received, the responses to which should prove interesting and informative.

“I was recently commissioned to produce a set of line drawings for a company who wanted to reproduce and merchandise them in three dimensions. Initial negotiations were verbal, when we agreed that I should be paid royalties of 10% of the retail price of each object made from my work. After legal advice, this verbal agreement was put into writing in the form of a ‘Commission and Licence for Use Agreement’. The copyright licence was for a period of three years. I did the artwork, which was then reproduced and retailed, but the company have now informed me that they are not now prepared to pay royalties on the grounds that the theme of the artwork is ‘Nursery Rhymes’, and that although the work is original the nursery rhymes themselves are not. They are now simply offering me a take-it-or-leave-it situation of paying me a straight fee of £X, which they say is a standard fee any art agency would charge for such work.

I feel I am being misled and would like to know whether ‘Nursery Rhymes’ artwork is excluded from ‘royalties’.”

This problem falls into three distinct parts:

  • the commission to produce artwork;
  • the copyright licence to use the artwork;
  • the refusal now to make the payment agreed.

The commission
The artist agreed to use her skill and labour to produce the required artwork on the subject ‘Nursery Rhymes’. Irrespective of whether the commission was put into writing, the artist made a contract for her services – the proof of which, together with its terms and conditions, were wisely written down for the reference of both parties (and any court of law) in the event of a dispute. It may be that it was a condition that the artist was to be paid a fee for the making of the artwork, or simply that she would be paid a royalty in the event of reproduction and merchandising. It matters not, since she was contracted to make the work in exchange for something of value. That contract/agreement/commission was fulfilled by her and she should therefore be entitled to enforce the company’s corresponding obligation to pay for the work done (and for its use, for which see below) in consequence of the commission.

The copyright licence
Additionally, the artist agreed that the company would be able to use the artwork produced in consequence of the commission for reproduction in three-dimensional merchandise. The fact that this second agreement as to the future use of the artwork was also sensibly put into writing as part of one ‘Commission and Licence for Use Agreement’ is a matter to which we will return later, and is not relevant to the legal copyright position, which must be examined first by reference to the following requirements of the Copyright Act 1956:

1. Is the artwork capable of being protected by copyright?
Protection is offered to original ‘artistic works’; drawings are ‘artistic works’ within the meaning of the 1956 Act. Originality is a qualitative requirement which should be satisfied so long as the artwork was not copied nor substantially taken from the work of another. In other words, if the artwork in question (A) was to be placed alongside any other person’s original artwork (B) and looked at by a lay person (i.e. not an expert eye), they should not be able to identify the skill and labour expressed in the one (B) and in the other (A). This sounds terribly complex, but can be simplified by using the correspondent’s problem. If she made a drawing of a Humpty Dumpty having fallen off a wall, of which the content, lines, form, colour, perspective, movement and so on were expressed in such a way that another artwork placed alongside could be adjudged by a lay eye to contain those particular elements expressed – however imprecisely an expert’s eye might judge them to be – then that would not be original. Remember, it is originality of expression, not thought, which is required.

A further requirement is that the maker of the artwork was a ‘qualified person’ when the work was being made; a UK resident, citizen, domicile or national is qualified for these purposes.

2. Does copyright still subsist?
Copyright in a drawing lasts for the artist’s lifetime plus fifty years; no problems here.

3. Who owns the copyright?
Normally the artist is the first copyright owner. If the work is commissioned, the parties to the contract are free to make their own arrangements about who shall have the copyright in the artwork. In this particular case, if nothing was agreed and specified to the contrary, the artist would have become the first copyright owner.

Did the artist/copyright owner then part with the copyright in any way? It appears not to be the case; she simply gave the commissioner a permission to reproduce the work for specified limited purposes, which we will look at shortly.

4. The rights
The artist/copyright owner had the exclusive right to do, authorise and prevent the following acts:

  • reproduction of the artwork in a material form (including three-dimensional);
  • publishing (issuing copies of the work to the public);
  • and broadcasting or diffusion through television.

5. The licence

The artist/copyright owner appears to have permitted the commissioner to use the artwork for limited purposes, which were wisely specified in the written ‘Commission and Licence for Use Agreement’. This element of authorisation in the contract was the copyright licence i.e. the copyright owner’s authority for the company to reproduce the copyright artwork in a specified way which, but for the licence/permission, would have been an infringement of the copyright owner’s legal rights.

The refusal to pay

The company’s permission to reproduce and merchandise was bought for the ‘royalties’ (i.e. the 10% of the retail price) specified in the contract. The ‘royalty’ element was a fundamental term of the agreement; not to comply with that requirement to pay would be a breach of the contract, entitling the artist to remedy the situation through legal action, and failure to remedy might then allow the artist also to claim breach of her copyright.

The company has agreed that the artwork is the artist’s original, but are claiming that the visual expression of nursery rhymes somehow confounds the agreed term for paying the artist. This is novel nonsense, for the following reasons. First, even if the artwork was not ‘original artistic work’, the artist would nevertheless be entitled to the ‘royalty’ payment agreed and specified; because this was a contractual term of a legally binding agreement, and failure to perform would be a blatant breach of the contract. Copyright is a pink herring at best, a smokescreen at worst. Second, even if copyright was entirely relevant to the company’s legal liability, the artwork’s protection is not to be denied simply because of the ‘theme’ represented in visual terms. From all that has been explored thus far, it can be seen that copyright law protects original manifestations in a material form experienced through the medium of the eye. My four year old’s finger-painting on paper is equally protected by copyright, notwithstanding my perception that it’s a Humpty Dumpty after the fall – nor his strong denial and protestation that it’s ‘just abstract Henry’.

The other correspondent sent this query:

“A few years ago I submitted artwork for a regular public competition/exhibition, which won a prize – a purchase prize-giving the following right: ‘Entries may be reproduced in the press or other media in connection with the event’. Recently, I received a brochure for the staging of the latest event, the cover of which sported a reproduction of a detail of the artwork turned through 180 degrees, altered in scale and colour, and without prior notification or credit.”

This problem has three elements:

  1. the making of the work and its copyright;
  2. the original competition/exhibition entry;
  3. the later use of the artwork.

The making of the artwork and its copyright

Referring back to the numbered requirements in the earlier case, I can disclose that:

  1. the artwork was capable of copyright protection
  2. the artwork was still protected by copyright
  3. copyright was first owned by the artist and had not been transferred
  4. copyright included the right to do, authorise and prevent reproduction in a material form
  5. as to a copyright licence, see below.

The competition/exhibition agreement

Entry to the original event required the artist to make a contract with the organisers, the essence of which was: the artist submitted artwork for selection with a view to possible exhibition and purchase prize-giving; in exchange for which the organisers were bound to receive, judge, select (or reject), then exhibit and consider awarding a purchase-prize; the detailed terms and conditions of which contract were specified in the entry form.

One of the conditions included the artist’s agreement that ‘Entries may be reproduced in the press or other media in connection with the event’ (my stress). Since the artist owned copyright, he was authorising/licensing the organiser’s use of his artwork for this event when he submitted his entry – that use would otherwise be an infringement of the artist’s copyright. What ‘the event’ meant or now means is a difficult question: it could be taken to mean the instant event which was then being entered; or, since it is a periodic event, it could mean the event, every time it happened. On such stuff are judges’ dreams made.

But what is clear and worth noting is that the artist’s entering the artwork and its subsequent purchase did not also transfer ownership to the collector of the artist’s copyright. Copyright ownership could only have been transferred through express written assignment, signed by the artist. This applies to the sale of any visual artwork.

The later use of artwork

From all that has been discussed thus far, it may well be that when the artist/copyright owner entered the original event, his contractual obligations included his permitting, as copyright owner, the organisers to reproduce the artwork for the event held that year and in later years. In which case, the artist would have no claim for infringement of copyright, nor breach of contract.

Finally, it should be noted that the organisers’ permission to reproduce the work for the limited purposes (arguably) agreed through the contract, does not give them permission to use the artwork for any other purposes not specifically agreed – and certainly does not give them permission to give any other person the right to reproduce, publish, broadcast or diffuse the artwork – because they do not own the copyright.

© Henry Lydiate 1985

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This article is from the Artlaw Archive of Henry Lydiate's columns published in Art Monthly since 1976, and may contain out of date material. The article is for information only, and not for the purpose of providing legal advice. Readers should consult a solicitor for legal advice on specific matters. Artists can get free online legal information from Artquest.