Re: Do I own this?

On March 3, 1998, Bob Miller <rmill[_at_]hotmail.com> wrote:
>
> I have a question on ownership of copyright. I am in Florida in case
> that makes any difference.
>
> I am a printer and have been in business for a while and thought
> I knew what the law says but I am not so sure in this instance and seek
> some advice and guidance from folks who have been there.
>
> Several weeks ago a long-time acquaintance and customer (we'll call
> him John) walked into my shop and wished to have us do an order for
> political signs for a campaign he is involved in. As usual, he had no
> camera-ready copy nor so much as a pencil sketch. And again, as
> usual, he wanted us to computer set his graphics.
>
> I gave him a tablet on which to rough sketch the layout and when he
> was done I told him I'd have something in a few hours. Taking that
> sketch I did a complete layout including font selection, etc. After he
> returned he saw the laser-print draft, marked up some changes and I did
> the corrections. Only this time he was peering over my shoulder and
> doing some (very) slight directing.
>
> Cutting to the chase - we did one order. A re-order (by the
> candidate when picking up the initial order) with slight color changes
> was canceled when it was 1/4 done. In negotiating a payment and
> disposition of the work in progress which was halted, I discovered that
> the campaign purchased comparable signs from another vendor local to
> their area and the signs were identical to mine (doubt there is even a
> 1/16" difference in the overall size/layout). I raised some hell
> with a staffer who should know better (he is associated with a weekly
> newspaper). His retort was that John claimed ownership of the
> artwork. I claimed it was my work product and stated I did not assign
> it to anyone plus I only charged a nominal $25.00 for the computer time
> and multiple print-outs. If it matters, the going rate in this area
> would be $85.00 - $100.00 for a comparable camera-ready, made to scale
> layout for a sign this size. (We don't do layouts for non-customers as
> we are far too busy)
>
> Question: Who owns the copyright, John or I?
>
> Question: Does the campaign have the right to use my art in the
> manner they did?

     DISCLAIMER: The following does not constitute legal advice. If you want legal advice, you should consult an attorney. The following is only intended to help you intelligently discuss these issues with your attorney.

     Ownership of copyright is governed by 17 U.S.C. section 201. There are three possibilities: either John owns the work entirely, or you own it entirely, or you are joint authors (and therefore joint owners).

     John would own the work entirely only if it were a "work made for hire." Section 201(b) provides that "In the case of a work made for hire, the enployer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright." Under section 101, a work made for hire is either a work made by an employee in the scope of his or her employment (not applicable here), or a work specially ordered or commissioned IF it falls within one of the nine categories listed in the statute, AND there is a written and signed instrument in which the parties agree that the work is a work made for hire. Since there does not appear to be anything in writing between you, this category won't apply either (and it is unlikely that it would fall within any of the nine categories in any event).

     You would own the work entirely only if you were the sole author, rather than a joint author. Under section 101, a "joint work" is "a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole." Since the two of you intended that your contributions be merged into the final poster, you MAY be joint authors. There are, however, a number of cases that interpret this language, so you need to consult an attorney for more specific guidance. In particular, some courts require that each joint author contribute something original (and therefore copyrightable) to the final result. Based entirely on your short description, my own personal opinion is that you probably are joint authors, but there may be a viable argument that you are the sole author.

     If you are the sole owner, John has infringed your copyright. If, however, you are joint authors, then John was within his rights to do what he did. A joint author cannot be liable to another joint author for copyright infringement. John, however, would have a duty to pay you half of any money he made by using the work. (In this case, that MIGHT include any money he "saved" by getting the work done more cheaply by you rather than somewhere else.)

     You might also have a state law cause of action for breach of contract (if you had an express or implied understanding that if you helped design the work, he would give you the printing work), or for misappropriation or unjust enrichment. Some state law causes of action are preempted by the Copyright Act, but I imagine the breach of contract claim, at least, would survive preemption.

> Question: If I find it necessary to sue, would a court in my county
> be appropriate venue? (The candidate's county is a
> 2-hour drive from my shop.)

     Well, that depends. If you and your attorney decide that you have a cause of action for copyright infringement, then the federal court has exclusive jurisdiction, so you would have to sue in federal court.

     An action to establish ownership of a copyright, however, is not an action for infringement, and could be brought in state court. Likewise, if you and your attorney decide you have a cause of action for breach of contract or some other state-law claim, you could sue in state court. Whether your county would be a proper venue would then be determined under Florida law, and I have no idea what Florida's venue statute provides.

> Question: Is there anyplace on-line that has a generic
> cease-and-desist letter that I can copy/edit and
> mail to the campaign and the idiot printer who
> did the job?
>
> Question: If suit is necessary to resolve this, would I really
> need an atty. and if so, what are the chances of the
> court awarding me atty. fees per the law?

     I'll leave the fourth question to others, although I doubt it. But it shouldn't cost too much to have an attorney draft one for you. And remember, if the election hasn't happened yet, probably the last thing John wants is bad publicity about how he ripped off a local businessman in order to save a few dollars. Not the sort of candidate I'd vote for.

     As for the last question, the answer depends. If you need to bring a full-blown action for copyright infringement in federal court, absolutely you need an attorney. The copyright statute permits the court to award attorney fees to the winning party, but it is in the discretion of the court; and even if you get them, you would still have to collect. Assuming from your description that a fairly small amount of money is at stake, this may not be your best course of action.

     If you decide to try a state-law cause of action, such as breach of contract, and your damages are small, you may be able to bring suit in small-claims court. In California, the monetary limit for small-claims court is $5000; I don't know what it is in Florida. In small-claims court, in most states you would not be allowed to be represented by an attorney, so you couldn't recover attorney fees (but you probably wouldn't have any fees to recover, except for the initial consultation). Small-claims court is more like The People's Court on TV; you get rough justice fairly quickly. A small-claims court is unlikely to care much about the subtle nuances of copyright law that I have attempted to describe.

     You may be thinking: isn't this a ridiculously complicated answer to a fairly straightfoward question? Yes, but that's the result of 200-plus years of legal evolution. It has resulted in laws that are wonderfully intricate and flexible, but that nobody can afford to administer in all their arcane glory. [Obviously, it takes an academic to appreciate all that complexity.] That's another good reason to see an attorney whom you can trust, to cut through all of this and give you the hands-on, practical advice you need to deal with this situation quickly and inexpensively.

Tyler T. Ochoa
Associate Professor
Whittier Law School
tochoa[_at_]law.whittier.edu Received on Wed Mar 04 1998 - 20:44:24 GMT