When I Paint my Masterpiece

Dear Henry,

Recently I was amazed to see a portrait I had painted reproduced photographically on a poster in the city where I live. I managed to acquire a copy of the poster and saw that it was offered for sale by the publishers. I was even more amazed to see that a name other than my own had been given as the painter of the painting, even the title of the painting had been changed. Of course, had they asked me for permission to do such a thing I would not have given it. I found the poster, which was a very professional product, on display in one of the city’s best-known exhibition venues and it must have been seen by many people. I am determined to take action against the publishers, and those who, I suspect sold the photograph to the publishers without my permission. I have been told by a number of people that you might be able to help. Could you let me know, or put me in touch with somebody who might?

Yours sincerely,

X

Dear X,

First, I will give you my opinion on the facts you have disclosed so far, then discuss what help might be available.

IS YOUR WORK PROTECTED BY COPYRIGHT?

There are three qualifications to check under the Copyright Act of 1956, which offers protection in such situations.

Test One: is it an ‘artistic work’?

A painting of any description is an ‘artistic work’, irrespective of artistic quality.

Passed.

Test Two: is the work ‘original’?

In this context, ‘original’ does not mean the original idea for the work, but refers to the method and manner of its creation. The law requires that the work must not be physically copied from another’s work. So long as you applied your own skill and labour in the treatment of the subject-matter (the sitter, if there was one), the composition and the technical painting skills involved, it will be ‘original’; what is required is original skill and labour in expression, rather than thought. If your stimulation was in fact the sitting of a living person, there is little doubt that your painting is an ‘original’ for these purposes. Since you do not comment on this point, let us assume that the portrait you made was also not copied from another’s painting, drawing, sculpture, print or photograph; in which case the originality test should be passed.

Test Three: was the maker a ‘qualified person’?

Your painting must have been made by a ‘qualified person’, who remained qualified for all or most of the period during which the work was being made. Qualified persons are: British Subjects; Citizens of the Republic of Ireland; Persons domiciled or resident in the UK; Companies incorporated in the UK; Citizens, residents, domiciles or companies (incorporated) in countries which are signatories to the international copyright Conventions
(this now means most countries in the world).

You will know better than I, but it’s highly likely that you were/are a qualified person.

In these circumstances, therefore, it appears that you have created an ‘artistic work’ entitled to copyright protection – both in this country and in the states which are signatories to the copyright Conventions.

DOES COPYRIGHT STILL SUBSIST?

Copyright on a painting lasts for the artist’s lifetime, plus fifty years after death. You are still alive (I hope) and so copyright still subsists in your work and for fifty years following your death.

WHO OWNS THE COPYRIGHT?

1. General Rule

The first owner of copyright in a painting, even of a portrait, is the painter; not the sitter, as is commonly believed.

2. Exception: commissioned portrait paintings

Contrary to the general rule, copyright in a commissioned portrait painting is first owned by the commissioner i.e. the person who agrees to give money or some other valuable thing to the painter for making the portrait. However, painter and commissioner are allowed by law to vary this exception to the general rule by re-establishing the artist as copyright owner; this must be done by agreement between painter and commissioner in advance of painting the portrait. In your particular case, you are silent on this point, and so there are three possibilities:

i. you were uncommissioned and therefore became the first copyright owner; or

ii. you were commissioned, but did not make any advance agreement with the commissioner to vary the exceptional rule, and thus the commissioner became the first copyright owner; or

iii. you were commissioned, did make an advance agreement reversing the exception and establishing the general rule that you were to be the copyright owner.

It would be for the person who claimed that you were commissioned to produce evidence to support their assertion; and, if that were done, it would be for you to produce evidence to support any assertion you made that one of the terms of the agreement was that you were to be the copyright owner.

3. Further and overriding exception: employees

If you made the painting during the course of your employment, or in the service of the Crown or a Government Department, then the copyright would be owned by your employer – irrespective of the general and exceptional rules discussed above. I recognise that this is highly unlikely, but mention it for completeness.

HAS COPYRIGHT OWNERSHIP MOVED?

Assuming that you are not dead or bankrupt, the only method the law accepts for movement of copyright ownership is through a written assignment of it to someone else, signed by the owner. Any gesture or statement by the first copyright owner purporting to sell or give away the copyright fails to do so in law – unless backed by a written assignment. Any attempt to do so without a written assignment may, however, be a valid copyright licence (see below). Whoever, is the current true copyright owner, that person alone has the exclusive right to: reproduce the work in any material form; or publish the work; or include the work in a TV broadcast; or transmit the work to subscribers of a TV diffusion operation; and to prevent others from doing these ‘restricted acts’.

If you are the true copyright owner, and have not assigned copyright, you clearly could have prevented the making of the reproductions; and can take action to remedy the situation. If you are not the true copyright owner, then only the true owner could have done or can do these things. But before looking at remedies we must look at copyright licences.

HAS THE COPYRIGHT OWNER GIVEN A COPYRIGHT LICENCE?

The true copyright owner also has the right to authorise others to do what would otherwise be restricted acts. Such authorisations are known as copyright licences – not assignments, because they are not giving away copyright, merely permissions. A licence need not be in writing (unless it is intended to give the licensee the exclusive right to do the restricted act); thus, any purported assignment or exclusive licence which is not in writing signed by the copyright owner, but is an attempt to give permission, may well be a valid copyright licence; and any simple permission, written or verbal, from the copyright owner will likewise be a valid licence.

Again, if you are the true copyright owner and did not give permission, you should have a remedy; if not, only the true owner could have given permission for the reproductions and, if it was not given by that person, only he or she should have a remedy. But Gist we must consider whether an infringement has occurred.

HAS THE COPYRIGHT WORK BEEN INFRINGED?

An infringement is committed by anyone who does a restricted act to a copyright work – without authorisation; there are certain exceptions and defences (see below). In your -case, the making of a photograph of your painting, then reproducing and publishing it on a poster, is clearly a restricted act-unless authorised or done by the copyright owner.

Let us now check the infringement rules.

1. Is the reproduced work a copyright work?

2. Is there a connection between the copyright work and the reproduction?

This should be straightforward to establish; presumably you dated the painting when it was finished, showed it to at least one other person, or perhaps even exhibited it – thus determining its date of creation; presumably you would be able to explain how those who made the reproduction would have been able to get access to the painting in order to take the photograph.

3. No need to prove an intention to infringe: simply to confirm that you do not have to be able to prove that the infringers knew about your copyright ownership (or the absence of theirs) and/or lack of authorisation, nor that they intended or wished to infringe your copyright; the fact that they did so is sufficient.

4. Is the reproduction of a substantial part of your copyright work? This can be a tricky point sometimes, but in your case a pure photographic copy – irrespective of changes in size, colours, printing techniques and so on – will clearly be sufficient to establish infringement.

5. Was the reproduction made for research or private study, criticism or review, background use in TV or film, judicial proceedings, or for very limited use in educational establishments? In your case, these exceptions and defences do not appear to apply.

It appears, therefore, that we have an infringement on our hands. So, what are the remedies?

REMEDIES FOR INFRINGEMENT

There are a number of possibilities, starting with choice of venue: civil proceedings in the County Court or High Court; or criminal proceedings in a magistrates’ court.

1. Civil remedies

i. who can sue: the copyright owner or exclusive licensee.
ii. what to sue for: a selection, or all of the following
– an injunction to prevent further breaches which would then be a contempt of court (as well as a further infringement), punishable also with a fine or imprisonment;
– an account of profits made by the infringer, ordered by the court to produce all trading documents and accounts to show what profit has been made – in order to compensate the victim;
– delivery up of infringing articles i.e. copies, plates, stones, blocks, moulds, matrixes, transfers, negatives or other appliances used or intended to be used for the making of infringing copies;
– damages i.e. a court order to pay compensation to the victim either for any loss or simply representing the value of the unauthorised copies, plates and so on, depending on the circumstances of the case.
iii. who is liable: any person who was not the copyright owner or who did not have a licence from the copyright owner, who
– did any restricted act to the artistic work
– whether innocently or not i.e. in your case, the photographer, printer and publisher;
– authorised the commission of any restricted act;
– traded with the infringing articles, knowing they were made without authorisation i.e. in your case, the gallery in question and/or the publishers again – so long as you could establish the necessary knowledge by them.

In these circumstances (and assuming you own the copyright), the photographer, printer and publisher should each be liable to you for the unauthorised making of the posters; and the publishers (again), distributors and the gallery for the selling and so on, by way of trade – if you can prove knowledge.

2. Criminal remedies

These are an alternative remedy, though rarely used because they can only succeed when the victim can prove that the infringer knew at the time of the restricted act that it was an infringement. However, in your case, it may well be possible to prove knowledge in respect of the original copier/photographer, at least.

Proceedings are brought in the magistrates’ courts (the defendant has no right of trial by jury in the Crown Court), they cost nothing to commence (unlike civil proceedings), are normally much quicker than civil proceedings, and can achieve a similar, if not better, result than civil proceedings. The infringer, if convicted, can be fined or imprisoned, be ordered to deliver up copies, plates and so on, be ordered to pay compensation for loss and costs of the prosecution; moreover, even if the infringer is not convicted, the court can still order delivery up of copies and plates – or their destruction.

Your choice of remedy should be made with the benefit of detailed legal advice from a solicitor, after you have acquired and given further information; of course, your solicitor will no doubt try to achieve a negotiated setttlement with all parties concerned to avoid the angst and costs of proceedings to all parties.

FALSE ATTRIBUTION OF AUTHORSHIP

We should clarify here that in your case you cannot avail yourself of a further remedy given by the Copyright Act in cases of false attribution of authorship. This remedy only applies to artists whose names have wrongly been attributed to works they did not make; not to artists whose names have wrongly been taken off their own works. Thus, there is no remedy for false denial of authorship; only for false attribution of authorship.

In your case, the only person with the remedy is the person whose name has been attributed falsely as author; s/he might also have a further remedy by bringing a common law ‘passing off action, but only if s/he had achieved a reputation in the market place which has been damaged by this ‘passing off’ of your work as theirs.

Sadly, therefore, the wrongful denial of your authorship must remain unchecked – unless, of course, you are the copyright owner (as discussed above). Incidentally, and importantly, in France and some other European States, there have been enacted special laws giving artists the so-called ‘paternity right’ – one of the bundle of “Moral Rights” or “Droit Moral” which are given to protect the integrity, honour and reputation of artists and their works against derogatory and prejudicial abuses, and irrespective of the economic protection of copyright. Your case is a classic example of the need for a legal right to be given to artists in this country, particularly when such abuses very often do not amount to a breach of copyright and, even if they do, the artist may well not own it. In your case, by taking action using the copyright laws, your authorship grievance will be dealt with simultaneously – by good fortune, not by good legal provision.

And so, at the end of the day, you have a very promising case indeed, in my opinion. You would now be well advised to consult a practising solicitor, versed in such matters, who can receive from you the further information I have outlined and advise and assist you accordingly; further or alternatively, yours seems to be a classic case for DACS (The Design and Artists Copyright Society), whose work I discussed in Art Monthly No 78. They will no doubt be pleased to pursue the matter on your behalf if you wish and/or assist you in instructing a solicitor: they can be contacted at FREEPOST, London El 7BR (No stamp needed); Telephone 01- 2471650.

Yours sincerely,

Henry Lydiate

© Henry Lydiate 1984

 

 

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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.