Re: artwork for a winery

On Wed, 9 Jun 1999, Vance R. Koven <vrkoven[_at_]world.std.com> wrote:
>
> On 6/8/99, Randi Millman-Brown <millman[_at_]ithaca.edu> wrote:
> >
> > We know an artist who has been commissioned to create a painting for
> > a winery. The winery is paying him a very nice fee for this work.
> > The question is does the winery then have the right to reproduce the
> > work on t-shirts, wine glasses, aprons, etc., without further
> > compensation to the artist? I am assuming it does, however, the
> > artist is demanding additional compensation and it is getting almost
> > to the point of nasty
> >
> > How on earth does the winery figure out future compensation for the
> > rights to use the image? Didn't they pay for it? Hope this makes
> > sense -- the more we try to hash it out -- the more questions we get,
> > not answers. Any thoughts?
>
> I think your and the winery's assumptions are about 180 degrees from
> where the law is at.
>
> Unless the parties have expressly agreed, or unless the
> always-intended-and-universally-understood primary use of the painting
> in question was for reproduction as you described, then the artist
> retains copyright in the painting, regardless of who owns the original
> object, and any reproduction of it or creation of a "derivative" (e.g.
> T-shirt) is exclusively the artist's right. Therefore, if the winery
> wants to be able to do this, it has to reach a licensing deal with the
> artist.
>
> One practical suggestion might be to offer the artist a percentage of
> the proceeds of sale (or better, of profits) of the licensed products,
> which would give the artist an incentive to permit maximum
> commercialization.
>
> Usual disclaimers apply: not legal advice, no client relationship,
> etc. etc.

I happen to have represented one of this country's most prolific and influential packaging designers, who designed many of the classic Australian wine labels. Household names which dominate their price-points/markets.

He was an independent contractor all that time. No contracts were ever executed (hey, it's the Stoneage we're talking about here). He still owns all the copyrights. (He's perfectly willing to sell the copyrights, but you'd be amazed how obtuse the users are - they just cannot / will not believe the stark truth that they are using these labels under a mere licence...) Good thing for them he's a nice person. Others would have pulled the plug years ago. He may still.

But I digress: I'd suggest trying a different tack form a royalty per unit approach - unless you have a system for keeping records of unit sales, it may be easier to administer an annual fee. This often suits the industry better than systems designed for industries which keep track of sales on a "per item" basis. The more successful the wine, the longer it will be used but who cares if it's a successful release? If it's not used, the fee ends.

Separate rates may need to be struck for each genre of merchandise. Can't tell from this distance. Maybe a "sundry" licence fee based on receipts would be fair. That, or make a substantial offer and buy the things outright. A multiple of the design fee would be appropriate: anywhere between twice and seven times seems to work.

And bear in mind - labels can evolve over the years. From the artist's point of view, any alteration can (a) damage the aesthetic of the original and (b) dilute his/her proprietorship. Adaptation is a danger for both parties (i.e an alteration may dilute any claim to a common-law trademark's reputation).

CS

"Galvanising Ideas"

Colin Seeger, Consultant, Management of Intellectual Property. P.O Box 3227, Tamarama, Sydney, Australia 2026 Tel: (61) (02) 9365 1186, Fax (61) (02) 9365 1286 <seeger[_at_]ozemail.com.au> Received on Thu Jun 10 1999 - 10:52:03 GMT