Dear Henry…

The recent articles on copyright brought the following correspondence, (genuinely received, but here suitably disguised to safeguard the artists concerned), which provides useful and intriguing illustrations of copyright law in operation.

Dear Henry,

I wonder if you would be kind enough to consider my problem referred to in the papers enclosed. My intended enterprise is tablery, beginning with four styles each to be decorated with T’s designs adapted by me for that purpose. T died a couple of years ago and left me 3 or 4 suitable sketches in his will. I shall devise and paint the prototype using T’s colours and brush strokes. Then, these will carefully be reproduced by hand onto the tables for sale.

None of Ts drawings was done for any specific reason, though a few may have been part of some project; not, however, commissioned as such.

What I want to do is use T’s delightful designs (still in my possession) to start this little business which I am convinced has a waiting market. If I can use T’s name – ‘inspired by/based-: on/original T design’ – it would be a lure to the sort of prospective buyers I’m after. I daren’t embark upon my project until I’m sure the ground is firm. If ownership of the designs is a consideration, my right of possession and ownership surely cannot be contested.

I do hope you can give me a helpful response.

Yours gratefully, Miss X.

Dear Miss X,

Having carefully considered your letter and contents (copy of T’s will), let me say straight away that I do not believe there is any firm ground on which to base your interesting project, for the following reasons.

Dealing first with your ownership of the designs T left you in his will. You clearly inherited them in your own right and have the absolute right to do what you like with them – frame, exhibit, sell, lease, renovate or even destroy them (God forbid!) – but you cannot lawfully reproduce, publish, broadcast or film them nor, indeed, authorise anyone else to do so. You own the physical artworks i.e. the paper and the marks on the paper; you do not appear to own, in addition, the copyright. Let me explain first why I think you do not own the copyright, then discuss who might be the copyright owner.

When T made the designs (let us assume uncommissioned) he would almost certainly have become the first copyright owner. The only way he could have disposed of his copyright before he died was to have made a written assignment of it to someone else. Had he done this, he should have kept a copy of the assignment document, but may not have done so. If he was commissioned in fact (which you doubt) he may well have assigned his copyright before or after their execution as part of the commission agreement. We just don’t know.

For these reasons, therefore, it is certain that you cannot prove that you were assigned the copyright in the designs you now own before T died. It may well be that T assigned his copyright in the works you own before he died, and may have in fact given it to the persons named in his will as his ‘Special Artistic Executors’; this would have been sensible and may well have been the case. Again, we just don’t know.

In the will, T appointed two ‘Special Artistic Executors’ and gave to them ‘any pictures, paintings or drawings wheresoever they may be, whether made by me or another, belonging to me at my death, not hereby or by any codicil hereto otherwise effectively disposed of . . . upon trust’ to do certain specified things with them. This bequest did not give them the designs specifically given by the will to you (i.e. not hereby or by any codicil hereto otherwise effectively disposed of). What is more, that bequest to the Special Artistic Executors did not specifically give to them the copyright in the works they received; they got the works, not the copyright in them.

So what happened to the copyright in T’s works which was not assigned before death and not specifically disposed of in T’s will? The answer lies in the final further bequest in T’s will, namely: ‘I devise and bequeath all my real and personal estate whatsoever and wheresoever, not hereby or by any codicil hereto otherwise effectively disposed of, unto such of them the said Y and Z . . . for their own use and benefit absolutely’. ‘Personal estate’ includes all T’s copyrights undisposed of at his death. This means that Y and Z will almost certainly own T’s copyright in the designs you lawfully inherited – as I say, unless T assigned the copyright in them before he died.

In conclusion, therefore, in my opinion you appear to have no lawful authority to reproduce, publish, broadcast or film those designs now in your ownership and possession, nor to authorise others to do so. In relation to your specific intention to use T’s colours and brush strokes from those designs, let me say this. If what you produced and then reproduced on the furniture would be recognised as T’s original copyright work, you would be infringing thereby T’s copyright (now apparently owned by Y and Z). Without seeing what your work will look like, it is hard to describe what I mean; put another way, if you showed me your work with T’s work side by side, and it was obvious to me (as a non-expert in visual matters) that you had used the essence of T’s work, then that would be an infringement. From what you have said, I am sure that this would in fact be the case. Moreover, if you were to include in your work something like ‘inspired by/based on/original T design’, the causal connection between your infringing work and the original would be clear for all to see.

In all the circumstances, therefore, the way forward might be for you to contact Y and Z (who may well be unaware that they appear to be the new copyright owners of T’s work not assigned to anyone else before he died) and negotiate with them a permission for you to use the designs now in your possession. Y and Z (and their respective heirs and assigns) will continue to own T’s copyright in such works for the 50 years following T’s death.

This is my response to your letter and enclosures, but my final comment must be to urge you to consult a practising solicitor before you make any decision, in order to discuss fully the entire project and the surrounding circumstances and to receive professional advice and assistance accordingly.

Yours etc. Henry Lydiate

Dear Henry,

In 1978 I was commissioned to design and execute a stained-glass panel by a Local Authority to be sited at the entrance to a building owned by them. The panel was about 5 feet by 3 feet overall, constructed of iron bars brazed together, infilled with the glass. I enclose my original design and sketches dated in 1978; I executed the work and was paid for it in 1979.

I also enclose a postcard image of the panel, on sale at shops and libraries in the same Local Authority’s area, which bears the statement ‘© Reserved’ and the Local Authority’s name as publisher. There is no reference to me.

I rang the Local Authority and spoke to a Director who was very sympathetic and said that 10,000 cards had in fact been published; that my name was not known to them (I had been subcontracted, as a free-lance artist, to design and execute the panel). He then declined to discuss royalties, but promised that my name would appear as artist/designer on any further runs of the print. I did not say that I was satisfied with this promise.

I am not satisfied with this, since my original brief made no mention of my giving anyone copyright, nor of postcards or any other reproduction being made from my original work.

What do you think?

Yours sincerely,

Mr. Y.

Dear Mr. Y,

There seems to me to be little you can do to prevent, or compensate for, the issuing of postcards of your original work, for the following reasons.

Your original brief was a commission to design and execute the panel, and the first question to answer is whether copyright subsists in the work. The work itself appears to be entitled to copyright protection, since it falls into the category of ‘works of artistic craftsmanship’: i.e. it is not a painting, sculpture, drawing, engraving or photograph, but is a work intended by you to have appeal to the aesthetic taste of those who would see it. Assuming (as I must) that the image made was your original design (i.e. not substantially derived from another’s work), and that copyright was not mentioned at commission stage, you appear to have made a work which is entitled to copyright protection for your lifetime, plus fifty years. You therefore became the first copyright owner and, since you did not agree in writing (before or after executing the commission) that anyone else should own the copyright in that work, you appear to be the copyright owner today.

Turning now to the postcard, there is no doubt in my mind that your original copyright work has been reproduced: the postcard you have enclosed clearly reproduces your work. To that extent it does appear that your copyright may have been infringed. However, your work is permanently situated in a public place, and the Copyright Act of 1956 makes an exception to the normal rules of infringement in such circumstances. In effect, a work of artistic craftsmanship permanently situated in a public place is not infringed by the making of: a painting, drawing, engraving, photograph, TV broadcast or film. In your case, the work appears to have been photographed, then engraved by the Local Authority in the making of the postcard. (Remember, a photograph means any product of photography or of any process etching, lithograph, woodcut, print or similar work which is not a photograph). The postcards are technically ‘photo-engravings’ and, within the meaning of the Copyright Act, are therefore almost certainly ‘photographs’. In any event, since both ‘photograph?’ and/or ‘engravings’ can lawfully be made from works of artistic craftsmanship permanently situated in a public place, it seems clear that the making of postcards – even without your authority as copyright owner – is authorised by the law.

This does not mean, though, that the Local Authority now own copyright in their postcards. To do so, their work (the postcard) has to be ‘original’, i.e. it must not have been physically copied or be substantially derived from another work. In this case, despite the application of undoubted skill and labour in the production of the postcards, that would not be sufficiently ‘original’ to satisfy copyright law. Therefore, in my view, the Local Authority etc) do not own the copyright in the postcards. Consequently, their statement ‘© Reserved’ is misleading: copyright in the original panel appears to be yours (subject to the public’s undoubted right to make paintings, drawings, engravings, photographs, TV broadcasts or films); copyright is in fact reserved to you by the law for the making of, say, another work of artistic craftsmanship which is a replica, copy or other reproduction substantially derived from your original work – or indeed a sculpture based on your original; the Local Authority appears to have no copyright at all – neither in your work nor in their postcard.

The offer by the Local Authority to publish your name as the original author is, in the circumstances, perhaps something you might consider accepting since the law does not require this to be done in such circumstances. As for royalties, since the Local Authority do not appear to have infringed your copyright, there appears to be no legal lever with which to insist upon any payment whatsoever. You may find that the sympathetic Director may be willing to, say, credit you (as they have offered already), perhaps credit you likewise at the site (with a plaque of some sort) and, indeed, pay you a gratuity rather than a royalty. But they do not appear to be under any legal obligation to do so.

Looking for a moment at the spilled milk, with an eye on the future, you might have achieved due credit both on site and on reproductions, as well as royalties, had you negotiated those things as terms of your original commission agreement. In that way, the Local Authority would have been obliged by the terms of their commission agreement to do the things you required of them at risk of being sued for breach of contract (not of copyright), in the event of a default.

In all the circumstances, I fear you are without a real remedy in your discussions with the Local Authority who may only respond to your grievances out of kindness.

These are my thoughts based on your letter with enclosures, and I must urge you to consult a practising solicitor who will be able to discuss with you the entire matter and advise and assist you accordingly.

Yours etc.

© Henry Lydiate 1984

Henry Lydiate urges all readers and correspondents to consult a practising solicitor with any legal queries they may have.

Since the recent demise of the advice and assistance service offered by Artlaw Services, the Editors have been forwarding letters of enquiry to Henry Lydiate; they are willing to continue doing so, and whilst he cannot guarantee an immediate response, Henry Lydiate will reply to all who write in.

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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.