NYCC 2009: Intellectual Property Primer
One of the concerns for comic book creators is is protecting their rights. In support of that, New York Comic-Con had a panel on Saturday called "Intellectual Property 101", put on by three lawyers in the entertainment business. Thomas A. Crowell, Sheafe B. Walker, and Walter-Michael Lee, attorneys specializing in entertainment law and intellectual property, gave an overview and answered questions from the audience.
Several forms of rights are involved. The first is copyright. Under current copyright law, a work is copyrighted automatically upon creation. In the United States, copyrights are valid for the life of the creator plus 70 years. In "work for hire contracts", copyrights may be for 95 or 120 years.
There is no requirement have anything special in the work such as a copyright symbol, or to register it to have a copyright. However, registration of copyright was strongly recommended. Copyright registration establishes a formal legal record of a copyright’s existance, dating from when registration was made, and gives you greater ability to collect damages if the copyright is infringed. The "poor man’s copyright" practice of mailing yourself a copy of your work to establish copyright was dismissed as obsolete and not doing anything useful.
Copyright registration can be handled on line by going to http://www.copyright.gov/register, or using paper forms. The Copyright Office encourages online registration, and charges less for it. Online registration has a $35 fee, whereas paper forms will cost $45. You will need to provide contact information for the copyright holder, a copy of the work being copyrighted, and the fee.
In answer to a question, it was stated that you could use one copyright registration to copyright an entire series, as in a continuing comic book. There was no requirment for a sperate filing and fee for each issue. It is also possible, though rare, to get a copyright on a work in progress that is not yet completed.
Partnerships and work-for-hire agreements present special challenges.
In a work-for-hire agreement, someone else owns the copyright, and is paying you to write works in a setting they own. One example is books and stories based on Star Trek. Paramount owns the characters and the settings, and must approve and license work set in the Star Trek universe.
Work-for-hire may be created by an employee of the rights holder, or by an independent contractor. Work-for-hire contracts normally include an assignment of copyright clause explicitly assigning copyright to the employer.
Whether you are considered an employeee or an independent contractor will depend upon the precise circumstances, and should be spelled out in the contract. When questions arise, New York State courts look at the skill level required, equipment and training need, whether benefits are provided, whether taxes are covered by a W2 or a 1099 form, and whether other work may also be assigned in determining your status in a work-for-hire agreement.
Work-for-hire projects need a clearly written contract stating the scope of work covered and the compensation offered to avoid possible legal problems. As a general rule, the contract should be as "plain English" as possible, and if you don’t understand it, you should ask for clarification and consult a lawyer before signing.
Partnerships can be problematic because of the question of who contributed what to the finished product. Copyright law considers all partners on a copyrighted project equal. In the Second Circuit Court in New York State, joint authors must intend to merge thier work. If there is a dispute over the division of revenues a project makes, the default will be an equal share to each person listed in the copyright. If you partner with someone else on a project and do 80% of the actual work, you aren’t guaranteed 80% of the revenue. In any partnership agreement, there needs to be a contract in place that specifies the contributions to be made by each partner, and the compensations they will receive for doing so, to avoid ambiguities should a dispute arise.
"Fair Use" is a thorny area. The advice of the panel was "Don’t rely on it!" Case law has been steadily narrowing what can be considered Fair Use. And Fair Use is not something you can claim up front. It is only useful as a defense if you are actually sued for infringement. If you are sued, you can claim your usage fell under Fair Use provisions, but you’ll still have to spend the time and money to defend yourself, even if the court agrees. In general, it was recommended you err on the side of caution in quoting from someone else’s work in any medium.
Trademarks are another area where protection of rights is advised, and for a comic project, you probably do want both. The copyright will cover the content od the books. The trademark will cover things like the distinctive symbol, such as the "S" shield on Superman’s uniform, or the logo for the book. Unique names can also be trademarked. It was remarked that WWF star "Hulk" Hogan pays a fee to Marvel Entertainmant for the use of Hulk in his stage name. One major difference between copyright and trademark is that copyrights expire, but trademarks do not.
You can file for your own trademark registration, at the United States Patent and Trademark Office at http://www.uspto.gov, for a $335 fee. But the panel strongly suggested that you don’t, and that you retain a lawyer. Trademark does not work like copyright. When you go to register a trademark, the government will start by denying it. You must prove to them that your trademark is sufficiently unique, distinct from and not infringing upon any existing trademark. Convincing the goverment is simply the first step. After the Trademark office has agreed, they then put your proposed mark out for public comment, and other trademark holders can file objections and block your registration. An attorney is recommended to help steer you through the process.
Trademark registry is a necessity. In New York State, you can bring criminal proceedings against people infringing your trademark, and similar rules prevail on other jurisdictions. Copyright infringement proceedings are purely civil suits. In addition, registration confirms priority. If you register a unique name, for example, you may be able to block sonmeone else from using a name similar to yours as a trademark, because yu were there first. In addition, trademark registration provides statuatory damages from $2,000 to $2,000,000, without proof of damage, but you must have a registered trademark to bring suit.
Possible violations of trademark include infringement, which is the unauthorized use of a trademark, tarnishment, use of a trademark in ways that damage it, and counterfitting, in which someone else’s trademark is appplied to knoock off copies of trademarled products.
A question was asked about the difference between a trademark and a service mark, and that answer was that these days, thre is little legal difference. A trademark covers an actual product, and a service mark xcovers a service, but the law governing them is essentially the same.
What do you do if you discover infringement? There are five possible actions.
The first is to do nothing. This is generally not a good idea, though circumstanes may make it the best course of action. One example for that is media properties which have spawned extensive fan networks. The rights holder may choose not to take action against fan sites, even though they have not specifically granted permission gfor use of materials, because the sites are considered market for the properties which enhance the value.
The second is a cease and desist notice. This is a common tactic, where you send a formal communication to an infringer stating that, for example, their use on a web site is in violation of your rights coupled with a demand to stop. Under terms of the Digital Millenium Copyright Act, a site hosting such material is required to comply with such a request, and the person infringing may discover their account on the host has been suspended.
The third is to license the rights and get royalties. In some cases, a third-party may have come up with something based on your work that they can profitably sell. It may be in your interest to negotiate a deal with them where you specifically license the rights to produce that product in exchange for an agreed upon cut of the revenues.
The fourth is to sue the infringers. A formal complaint can be lodged in state of federal court, though federal court is preferable.
The fifth is seizure of illegal goods. This happens regularly in the case of things like counterfit DVDs or knock-off copies of designer fashions.
As in copyright, Fair Use applies, but caution is required. The example is an auto dealership selling cars. The dealership will use the registered trademarks of the brands it sells in advertising. But as with copyright, what constitutes Fair Use is being gradually winnowed away by case law resulting from court decisions. Fair USe questions are considered by the courts on a case by case basis.
The common theme of the entier panel was the necessity of clearly stating in a signed contract what was expected of all parties, and the wisdom of retaining an attorney to guide you through the percess and make sure that legal Is were dotted and Ts were crossed. The biggest threat to rights was ambiguity about what they were.
As always, this is not legal advice, nor should it be construed as such. For further information, contact your own intellectual property lawyer.