Tuesday, December 13, 2016

Who Owns Superman? - Part IV

    This is the fourth in my series of posts on the fight over the rights to Superman. You can find the previous posts here, here, and here.     

           After the lawsuits discussed in the previous post, it appeared the litigation over the rights to Superman had ended. However, two notable events subsequently occurred: 1) DC’s parent company entered into agreements with Siegel and Shuster to pay them for the remainder of their lives, and 2) U.S. Copyright law changed allowing those who transferred the rights to their copyrights to terminate the transaction after a set amount of time passed (the timing varies depending on when the work was created and assigned).[1]
Following the ’70s litigation, the New York Times featured a story depicting the current living conditions of the creators of Superman.[2] The story described them as nearly destitute and struggling to get by while their creation had earned millions for DC.[3]  In the article, an executive vice president of Warner Communications, the parent company of DC, said that even though Warner did not have a legal obligation to do anything for Siegel and Shuster, there was a moral obligation, and he said the company intended to provide them with an annual stipend.[4]
Following the article, and other ones like it, on Dec. 23, 1975, DC entered into another agreement with Siegel and Shuster.[5] Once again, Siegel and Shuster acknowledged that DC owned all rights to Superman.[6] In return, DC paid them “modest annual payments for the remainder of their lives; provided them medical insurance under the plan for its employees; and credited them as the ‘creators of Superman.’”[7] The agreement gave each a lump sum of $17,500 and annual stipends of $20,000.[8] It was later raised to $30,000 per year, and they also received a $15,000 bonus after the success of Superman: The Movie.[9]
The agreement stated that DC/WB was under no legal obligation to provide them with these payments. However, they were doing so because of their past contributions to the company and their current circumstances.[10] The agreement also stated DC would stop making the payments if either Siegel or Shuster, or someone on their behalf, asserted any rights to Superman.[11]
The agreement also provided Siegel’s spouse with monthly payments for her life if Siegel died before Dec. 31, 1985. During the term of the agreement, DC “increased the amount of the annual payments, and on at least two occasions paid the pair special bonuses.”[12] DC later amended the agreement with Siegel providing that his wife would continue to get his benefits if he predeceased her at any time.[13]
After Shuster died in 1992, DC increased the annual payments made to his sister to $25,000 per year, which she shared with her brother, and it paid all of Shuster’s outstanding debt.[14] Shuster’s sister and brother entered an agreement on October 2, 1992 confirming the above and regranting all of “Shuster’s rights to DC and vowed never to assert a claim to such rights.”[15] DC also paid her bonuses from time to time over the next few years ranging from $10,000 to $25,000.[16]
 All told, DC paid the Siegels and Shusters more than $4 million under the 1975 agreement, as a later court found.[17]
During the same time as the 1975 agreement was being signed, Congress was revamping the Copyright Act. In 1976, a new Copyright Act was passed. Notably, it extended the duration of copyright terms and eliminated the copyright renewal term. Most important to our discussion here, it also gave artists the ability to terminate any previous transfers of their rights to their creations executed before January 1, 1978,[18] which was later extended to heirs in the ’90s.[19] However, the termination provision would not apply to works made for hire.[20]
Had the Second Circuit upheld the decision that Superman was a work made for hire, the litigation between the DC and Superman’s creators would have ended. However, the court’s ruling that Superman was created by Siegel and Shuster and the change in copyright law opened the door for more litigation. We’ll discuss these attempts to terminate the transfer of Superman’s rights in the next post.

[1] See 17 U.S.C. §304(c).
[2] Mary Breasted, Superman’s Creators, Nearly Destitute, Invoke His Spirit, N.Y. TIMES, Nov. 22, 1975, http://www.nytimes.com/1975/11/22/archives/supermans-creators-nearly-destitute-invoke-his-spirit.html?_r=0 (last visited December 12, 2016).
[3] Id.
[4] Id.
[5] Siegel v. Warner Bros. Entertainment, Inc., 542 F.Supp.2d 1098, 1113 (C.D. Cal. 2008).
[6] Id.
[7] Id.
[8] DC Comics v. Pacific Pictures Corp., No. 10-3633, at  2 (C.D. Cal. Oct. 17, 2012); Bruce Lambert, Joseph Shuster, Cartoonist, Dies; Co-Creator of Superman Was 78, N.Y. Times, Aug. 3, 1992, http://www.nytimes.com/1992/08/03/arts/joseph-shuster-cartoonist-dies-co-creator-of-superman-was-78.html (last visited December 13, 2016).
[9] Bruce Lambert, Joseph Shuster, Cartoonist, Dies; Co-Creator of Superman Was 78, N.Y. Times, Aug. 3, 1992, http://www.nytimes.com/1992/08/03/arts/joseph-shuster-cartoonist-dies-co-creator-of-superman-was-78.html (last visited December 13, 2016).
[10] Siegel, 542 F. Supp.2d at 1113.
[11] Id.
[12] Id.
[13] Id.
[14] DC Comics v. Pacific Pictures Corp., No. 10-3633, at  3.
[15] Id. at 4.
[16] Id. at 5.
[17] Id. at 3.
[18] See 17 U.S.C. §304(c).
[19] See 17 U.S.C. §304(d).
[20] Id.

Monday, November 14, 2016

Who Owns Superman? - Part III

            This is the third in my series of posts on the fight over the rights to Superman. You can find posts one and two here and here.

            In the late 1960s and mid-1970s, Siegel and Shuster and Detective Comics again went to court over the ownership rights of Superman. At issue between the parties were the copyright renewal rights to Superman. Before I dive in to the cases, I need to provide a brief overview of relevant copyright law at the time.
            At the time of Superman’s creation and at the time of the litigation, U.S. copyright law was governed by the Copyright Act of 1909. Unlike today where the full term of copyright protection is granted upon completion of a work, the original term of copyright protection was for 28 years from the date of publication.[1] The term of protection could be extended for an additional 28 years if a notice of renewal was filed with the copyright office.[2] The applicability of the work for hire doctrine also was different than today (see here for my previous discussion of the work made for hire doctrine). Even though the work for hire doctrine was mentioned in the Copyright Act, there was no guidance provided.[3] Instead, courts applied various tests to determine whether an employee-employer relationship existed thereby making something a work made for hire.
            After agreeing to settle the previous case over Superman and granting the rights to DC, Siegel and Shuster used the expiration of Superman’s initial copyright term and upcoming copyright renewal term in another attempt to regain control of the character they created. They filed their case in federal court in New York in 1969 seeking a declaration that they did not transfer the copyright renewal rights to DC.[4]
            DC argued Siegel and Shuster had assigned the renewal rights to DC in the various agreements they had signed over the years and while settling the previous lawsuit.[5] DC also argued Superman was a work for hire and ownership of the character belonged to DC.[6]
            The court ruled Siegel and Shuster were prevented from arguing many of their claims because of the previous settlement agreement.[7] It also ruled the language of the settlement agreement seemed to clearly state that Siegel and Shuster had transferred all ownership rights to DC, including the renewal rights.[8] Furthermore, the court ruled Superman was a work for hire because DC had instructed Siegel and Shuster on the revision and expansion of the Superman story published in Action Comics #1.[9]   
             On appeal, the Second Circuit court of appeals found the lower court had properly ruled that Siegel and Shuster were barred from relitigating the ownership of Superman due to the state court judgment in the 1948 case, and it found the lower court was correct in finding that the judgment and other agreements between the parties had transferred the copyright renewal rights to DC.[10] However, the Second Circuit did overturn the lower courts finding that Superman was a work for hire.[11]
At the time, it appeared the fight over Superman was over. Siegel and Shuster could not regain Superman through his renewal rights. However, a change in copyright law in 1976 will give them, and their heirs, another opportunity to try and take back Superman, which we’ll begin discussing next time.

[1] See Copyright Act of 1909, § 23, http://www.copyright.gov/history/1909act.pdf (last visisted Nov. 11, 2016).
[2] Id.
[3] Id.
[4] Siegel v. Time Warner, Inc., 496 F.Supp.2d 1111, 1119 (C.D. Cal. 2007).
[5] Siegel v. National Periodical Publications, Inc., 364 F.Supp. 1032, 1035 (S.D.N.Y. 1973).
[6] Id.
[7] Id. at 1036.
[8] Id. at 1037
[9] Id. at 1036.
[10] Siegel v. National Periodical Publicatoins, Inc., 508 F.2d 909, 912-14 (2nd Cir. 1974).
[11] Id. at 914.

Wednesday, October 19, 2016

Who Owns Superman? - Part II

            In this second part of my Who Owns Superman? series (you can find the first post here), I am going to briefly discuss the first lawsuit over the ownership rights to Superman.
            Before I get to the lawsuit, I need to summarize another related dispute between Siegel and Shuster and Detective Comics brewing at around the same time. As I mentioned in the previous post, Siegel and Shuster signed an agreement giving DC a right of first refusal to new stories they developed.[1] Around December 1938 and in December 1940, Siegel submitted detailed pitches for a Superboy comic.[2] In both cases, DC declined to publish it.[3] However, in 1944 while Siegel was stationed abroad during WWII, DC published a Superboy comic strip without his knowledge or consent.[4] It also obtained a copyright registration in all materials in the magazine containing the Superboy strip.[5]
            In 1947, Siegel and Shuster filed a lawsuit in New York against National Periodical Publications, the successor of DC. At issue in the case was whether the original agreement assigning Superman to DC was valid and whether DC violated Siegel’s rights by publishing Superboy comics.[6]
            In the case, Siegel and Shuster argued their previous agreements with DC should be “void for lack of mutuality and consideration.”[7] In effect, they argued the compensation DC gave them for Superman was inadequate, and it rendered the agreement void. They also raised a whole host of arguments relating to DC’s publication of Superboy without Siegel’s knowledge or consent, and its attribution of the character to him.[8]  
            The court found the original assignment of the rights to Superman to DC “was valid and supported by consideration, and that, therefore, Detective was the exclusive owner of ‘all’ the rights to Superman.”[9] The court also found that Superboy was Siegel’s creation and a distinct work for Superman, and due to DC’s failure to exercise its right of first refusal, Superboy belonged to Siegel.[10] Therefore, DC had “acted illegally.”[11]
            Both sides filed an appeal, but while it was pending, they reached an agreement on a settlement in 1948.[12] Siegel and Shuster received a payment of over $94,000.[13] DC was again declared the sole owner of the rights to Superman, and it also received all ownership rights to Superboy.[14]
            Even though the parties settled the dispute, this would not be the last time they’d battle over Superman in court. I’ll discuss the next set of cases in part 3.

[1] Siegel v. Time Warner, Inc., 496 F.Supp.2d 1111, 1114 (C.D. Cal. 2007).
[2] Id. at 1114-15.
[3] Id.
[4] Id. at 1115.
[5] Id.
[6] Id.
[7] Id.
[8] Id. at 1115-16.
[9] Id. at 1116.
[10] Id.
[11] Id.
[12] Id. at 1118.
[13] Id.
[14] Id.

Wednesday, October 5, 2016

Who owns Superman? - Part I

            I’m going try and discuss a delicate topic in the comic book community. Namely, I want to talk about the ownership of Superman. Over the years, my thoughts on this topic have shifted back and forth, between being outraged at Siegel and Shuster’s lack of compensation for their creation to thinking DC really didn’t do much wrong. To this day, I’m still not sure exactly where I stand. About a decade ago, I thought it was appalling how DC treated Superman’s creators and the sad financial state they were reduced to in their later years. I was even inspired to write an article calling for changes to copyright law to prevent an injustice like this from happening again. Fortunately, the paper was never published. It was written well, but I later realized I had a fundamental, factual error in it that would’ve been a major embarrassment. (This topic on changing copyright law might be revisited at a later date.) These days, I think I fall somewhere in-between feeling pity for Siegel and Shuster and anger at DC. Both sides have reasons why they are in the right and why they are in the wrong, and at this point, there is not really an outcome fair to either side. But, let’s start at the beginning before we come to our final analysis.
            Most people who’ve been around comics long enough know the story. Jerry Siegel came up with the basic idea of the Superman story in 1933, and he and Joseph Shuster created several weeks’ worth of material for a possible comic strip.[1] They shopped the story for a number of years without finding a publisher.[2] Eventually, they started working on some comic strips for Detective Comics, and, in 1938 it decided to finally publish Siegel and Shuster’s Superman story in its new book, Action Comics.[3] The two had already signed employment agreements stating DC owned all rights to the creations they made during their term of employment. On March 1, 1938, DC also had them execute an agreement giving all rights in the Superman strips to DC.[4] For the assignment of their rights to Superman, Siegel and Shuster received $130 as compensation from DC.[5]
            In September 1938, they again executed another employment agreement with DC.[6] The agreement was to run for five years, and they were to be paid $10 per page for their work on Superman, in addition to being paid for their work on other comic strips at a lower rate.[7] It also reiterated that DC was the owner of all rights in the Superman strips, and it gave DC a right of first refusal to future creations from Siegel and Shuster.[8] By 1947, Siegel and Shuster’s total compensation for the Superman strip was greater than $400,000.[9]        
            In the next post, I’ll discuss the first lawsuit over the rights to Superman.

[1] Siegel v. Time Warner, Inc., 496 F.Supp.2d 1111, 1113 (C.D. Cal. 2007).
[2] Id.
[3] Id. at 1114.
[4] Id.
[5] Id.
[6] Id.
[7] Id.
[8] Id.
[9] Siegel v. National Periodical Publications, Inc., 508 F.2d 909, 911 (2nd Cir. 1974).

Monday, September 12, 2016

Copyrights & Costumes

As we enter September, most people’s attention starts to shift to fall foliage, football, and pumpkin spice lattes. For the legal profession, our attention turns to the first Monday in October when a new U.S. Supreme Court session begins. This year, one of the cases I will be following closely is the copyright case pitting two manufacturers of cheerleading outfits against each other. The court will be addressing the question of “What is the appropriate test to determine when a feature of a useful article is protectable under §101 of the Copyright Act?”[1]
In 2015, the Sixth Circuit Court of Appeals decided the case of Varsity Brands, Inc. v. Star Athletica, LLC. Varsity Brands created cheerleading uniforms bearing chevrons, stripes, zigzags, and color blocks on them, and it obtained copyright registrations for some of these designs.[2]  It noticed its competitor, Star Athletica, selling cheerleading uniforms with similar designs and sued.[3] The district court found “that a cheerleading uniform is not a cheerleading uniform without stripes, chevrons, zigzags, and colorblocks, and therefore Varsity’s copyrights are invalid.”[4] The Sixth Circuit overruled the district court and found the graphic designs on Varsity Brands’ cheerleading uniforms are copyrightable subject matter.[5] The court looked at a number of different tests used by other courts to determine whether a pictorial, graphic, or sculptural work on a useful article can stand independently of the useful article and is therefore entitled to copyright protection.[6] Eventually, it adopted and applied a hybrid approach of its own design.[7] Star Athletica appealed to the Supreme Court seeking to have the court rule on two questions, but the court agreed to only address the question mentioned above.
Why does this case matter? The Supreme Court’s ruling could have a profound impact on the copyright protection afforded to clothes, costumes, and any other items that combine usefulness and art or design. I used to work as an attorney for an online retailer of Halloween costumes, and I still follow industry trends. A ruling by the Supreme Court that extends the copyright protections afforded to costume designs could have a major impact on the industry. Typically, there are officially licensed costumes, and there are more generic costumes that evoke a licensed property. The generic ones have been able to survive and thrive because copyright protection has generally been limited to designs that can be separated and stand apart from the clothing. Usually, copyright protection has not been interpreted to include color selection, blocking, lines, etc., or other design additions necessary to the design of the costume or unable to stand on its own from the costume.  However, if the ruling in Varsity Brands is upheld, the costume industry could see an increase in demands for licenses from intellectual property holders and lawsuits, and the generic costume industry could be in trouble.
To a lesser extent, the cosplay industry could be impacted in a similar manner. If you are creating a costume for your own personal use, you are unlikely to find yourself embroiled in a copyright lawsuit. However, if you create a detailed replica of a copyrighted character/costume, and start to profit from it by selling photos of yourself in the costume or selling your replica costumes, then you will likely be noticed and could face threats of a lawsuit.
One final thing about this case that amuses me: oral arguments are scheduled for Halloween. How fitting.   

[1] Petition for Writ of Certoriari, Star Athletica, L.L.C. v. Varsity Brands, Inc., (No. 15-866).
[2] Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 471 (6th Circuit 2015).
[3] Id. at 474.
[4] Id. at 471.
[5] Id. at 492.
[6] Id. at 484-87.
[7] Id. at 487. 

Tuesday, August 30, 2016

Tattoos and Copyrights

This week’s post discusses a growing lawsuit trend in the entertainment industry. Namely, tattoo artists suing content producers when the work they tattooed upon a famous individual is reproduced in a movie, video game, etc. The trend began a few years ago when the artist responsible for tattooing Mike Tyson’s face sued Warner Bros. before the release of The Hangover Part II. The basis for the artist’s claim was the movie recreating Tyson’s tattoo on Ed Helms' character’s face. The case ended up settling out of court, and there was no ruling on the extent of copyright protection for tattoos being reproduced in other forms of media.

Recently, a company sued the maker of the NBA 2K video games for copyright infringement for recreating NBA players’ tattoos in the game. Due to a favorable initial ruling for the video game maker reducing its possible liability, the game maker is asserting some strong claims against lawsuits of this type, including that the use should be considered a fair use and is a de minimus use, meaning it's too trivial to merit consideration. It would be helpful to have judicial decision directly addressing the issue of recreated images of tattooed individuals.

Personally, I find this trend, and the mere fact that these lawsuits exist, annoying. While I’m inclined to acknowledge some tattoos can be creative enough to merit copyright protection, I cannot comprehend copyright law being used to sue third parties because they recreated a true-life representation of the tattoo artist’s client in some form of media. With the prevalence of tattoos on many people, the risk to content producers can be very high unless they take precautions to protect against such lawsuits. The primary methods to avoid being sued are to seek a license from the tattoo artist, have the tattooed person seek permission and/or indemnify you, or do not reproduce tattoos at all.  

Hopefully, the courts or congress (yeah, right) will address this issue and clearly define the copyright rights of tattoo artists and their patrons as it relates to portrayals in media. It seems to me if a patron obtains a tattoo he should be allowed to be photographed or otherwise reproduced without having to receive the tattoo artist’s permission. It should be an assumed part of the deal—an implied license for the patron to give consent to others who are reproducing his image. Copyright law should not be used to prevent someone from being truthfully depicted in various forms of media just because he is tattooed.     

As of right now, there have not been any lawsuits in the comic book world, but if you are in the habit of drawing famous tattooed people, or otherwise drawing tattoos on individuals in your work, you should proceed carefully.

For more on the NBA 2K lawsuit, read The Hollywood Reporter story here.

Side note: If you’re famous or on a career path where your image will be reproduced and you want to get a tattoo, you may want to have the artist sign a release giving you complete control over the design and reproduction rights. Your production partners will thank you. 

Monday, August 15, 2016

Protecting Your Work Online Using the DMCA

Protecting Your Work Online Using the DMCA

            I have recently been asked a number of times about what to do if someone is distributing your work online without your authorization. It is a great question, and there are a few options.
Obviously, you can reach out to the person distributing your art online and ask them to take it down. Frequently, this will be enough, and it is an approach that you can take in just about every instance where someone has posted your work online. The potential downside to this option is in how the person reacts. Sometimes, he will ignore you, and you will have to resort to the options below. Sometimes, he will engage you in a conversation about what he has done and what you are doing, and this can be an opportunity to educate him about your work and your rights. Sometimes, however, he will be defensive and argue with you, which can be stressful and an unproductive drain on your time. Even with the downsides, this is still a good option in many cases.
Another option, and the harshest, is to sue him. If someone is using or posting your work online without your permission, it is likely to be a copyright infringement. However, this can take a long time to wind through the courts, cost a lot of money up front, and, depending on the circumstances, it can make you look like a bully.
My favorite option to remove infringing content from the internet is to send a Digital Millennium Copyright Act takedown notice. Depending on where the work is posted, sending a DMCA takedown notice is the easiest way to enforce your rights. The DMCA was enacted in the late 1990s, and it includes a provision that limits online service providers’ liabilities for copyright infringement if they register with the Copyright Office a designated copyright agent to receive notice of infringement, post the information on their website for the public to access, and if they promptly respond to proper takedown requests sent to this copyright agent.[1] Online service providers are not required to take down material that is alleged to be infringing. However, if they receive a takedown notice and do not act, then they have been placed on notice of infringing materials, and they may face liability as a secondary infringer.[2] Due to the way this law is structured, online service providers almost always take down allegedly infringing material as soon as they are notified. Personally, I find this method to be one of the easiest ways to quickly remove infringing material from the internet, particularly if one website has a lot of infringing materials on it.
For example, if you are an online marketplace like Etsy where people are uploading and selling homemade items, you would not want to be held liable for copyright infringement for any infringing items being sold on your website by your users. So, you would register a copyright agent with the Copyright Office, usually someone in your legal department, and you would list the copyright agent’s email address in an easily accessible area. If your copyright agent receives a proper takedown notice from someone who believes their copyrighted work is being infringed, and your website acts quickly to remove or disable the allegedly infringing content, then your website would not be found liable for secondary copyright infringement.  
In order to send a DMCA takedown notice, you must send the following information in writing to the designated agent of the service provider:

(i)                 “A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.
(ii)               Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site.
(iii)             Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material.
(iv)             Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted.
(v)               A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.
(vi)             A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.”[3]

 Once you have sent a takedown notice containing all of the information above to the designated agent, a site will typically remove or disable the allegedly infringing material in a few days. The alleged infringer does have the ability to challenge your takedown and have the material reposted, but if it is clearly an infringement, they won’t.
The DMCA takedown notice is an effective and quick way to protect against the unauthorized distribution of your work online. Once you know how to use it, it will quickly become your favorite method of removing infringing material from websites.

[1] Online Service Providers, U.S. Copyright Office, http://www.copyright.gov/onlinesp/ (last visited July 5, 2016).
[2] Id.
[3] 17 U.S.C. §512(c)(3)(A)

Friday, August 12, 2016

Wizard World Chicago

I'm excited to announce that I will be presenting my Comics Startup 101 panel at Wizard World Chicago on Saturday, August 20 at 4:00. If you will be attending the show, I hope you'll stop by.

Joining me on the panel will be Wesley Sun, writer and communications director for Sun Bros. Studios,  Ali Cantarella, creator of The Hasty Pastry and founder of The Wet Stain, and Dirk Manning, the creator of Tales of Mr. Rhee and Nightmare World and author of Write or Wrong: A Writer's Guide to Creating Comics. This great trio of creators has a diversity of experiences, and they will share their knowledge and insights on the business and legal issues of making comics with those in attendance.

Friday, August 5, 2016

The Power of the Olympic Trademarks

          This is my first non-comic book related post, but as it says in the header, this is a comics and entertainment law blog. As such, it seems like the right time to look at an issue you will be seeing over the next few weeks, if you haven’t noticed it already. The 2016 Summer Olympics start today in Rio, and the United States Olympic Committee (“USOC”) is notoriously aggressive in defending its trademarks. If you are not an official sponsor of the Olympics and are thinking about trying to capitalize on the games through marketing or social media, you may want to think again.
In the U.S., and in all countries that have hosted the games, there are laws protecting the intellectual property associated with the Olympics.[1] In the United States, the Ted Stevens Olympic and Amateur Sports Act gives the United States Olympic Committee the “exclusive right to use:
(1) the name “United States Olympic Committee”;
(2) the symbol of the International Olympic Committee, consisting of 5 interlocking rings, the symbol of the International Paralympic Committee, consisting of 3 TaiGeuks, or the symbol of the Pan-American Sports Organization, consisting of a torch surrounded by concentric rings;
(3) the emblem of the corporation, consisting of an escutcheon having a blue chief and vertically extending red and white bars on the base with 5 interlocking rings displayed on the chief; and
(4) the words “Olympic”, “Olympiad”, “Citius Altius Fortius”, “Paralympic”, “Paralympiad”, “Pan-American”, “America Espirito Sport Fraternite”, or any combination of those words.”[2]

The statute also gives the USOC the exclusive right to license the trademarks to sponsors,[3] and it allows the USOC to file a civil action against any party using the Olympic trademarks without its permission.[4] The Supreme Court has even ruled that unlike in traditional trademark lawsuits where a suing party must show a likelihood of confusion, there is no such requirement for the USOC to enforce its rights and typical trademark defenses are not available.[5] Additionally, the Supreme Court found that the First Amendment does not provide protections against using the Olympic trademarks in commercial speech.[6]
            Through the Stevens Act and court decisions, the USOC has a broader and stronger trademark interest than any other trademark owner. It has also not been shy about enforcing its rights. Recently, it even went so far as sending out letters to companies who sponsor athletes but not the Olympics warning them to not (i) post about the Olympic Trials or Games on their social media accounts, (ii) share or repost media from official Olympic accounts, or (iii) use hashtags involving USOC trademarks such as #Rio2016 or #TeamUSA.[7]
            While this seems ridiculous, based on the statute and court decisions, the USOC just might be able to enforce it. Even though you may be tempted to try and trade on the Olympics to promote or support your brand, doing so could be costly if the USOC finds out.    

[1] http://www.inta.org/TrademarkBasics/FactSheets/Pages/ProtectionofOlympicTrademarks.aspx (last visited August 3, 2016).
[2] 36 U.S.C. §220506(a).
[3] 36 U.S.C. §220506(b).
[4] 36 U.S.C. §220506(c).
[5] San Francisco Arts Athletics, Inc. v. United States Olympic Committee, 483 U.S. 522, 531 (1987).
[6] Id. at 535.
[7] Rovell, Darren. USOC sends letter warning non-Olympic sponsor companies, ESPN.com, July 21, 2016,  http://www.espn.com/olympics/story/_/id/17120510/united-states-olympic-committee-battle-athletes-companies-sponsor-not-olympics (last visited August 3, 2016).

Monday, August 1, 2016

What is a work made for hire?

What are we talking about when we talk about a work made for hire, also known as a work for hire? Basically, we are talking about work made by an employee for an employer, or a written agreement to create work specifically made by one party for a commissioning party that falls into one of the categories established in the 1976 Copyright Act. Under the work made for hire doctrine, the employer or the commissioning party are considered the authors of the work.
The 1976 Copyright Act defines a work made for hire as “(1) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a “supplementary work” is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an “instructional text” is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.”[1] Later in the Act, it further adds that “the employer 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.”[2]
Under the Act, there are two ways that a copyright eligible work that you create might belong to another: (1) if you are an employee, and it relates to and was made during your employment, or (2) if you entered into a work made for hire agreement and it falls into one of the nine categories listed above.
If you are a creator, you need to be aware of the work made for hire doctrine and how it impacts you. First, if you are working as an employee for an employer, or in a relationship that can be categorized as an employer-employee relationship, then any work you create that is related to your employment or is created for the benefit of your employer will be considered work made for hire. This means that your employer will be treated as the author of the work for copyright purposes. Second, if you are hired to work on someone else’s work, it could be considered a work made for hire if you have entered into an agreement stating such, and if the work falls into one of the nine categories listed above. In both of these instances, your copyrightable contributions to the work will be considered to be owned by the person paying you.
At this time, it is not clear that non-employee contributions to comic books fall under the work made for hire doctrine. If they do, it would be under the collective work provision, and this is the approach typically taken by the major publishers like DC and Marvel. The Act defines a collective work as “a work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.” As you can see from the definition, it is possible that the work someone contributes to a comic book would not fall under the work made for hire doctrine. In order to protect themselves and their intellectual property, the major publishers also include language in their agreements requiring the freelancer to assign any and all rights they may in contributions to the comic book to the publisher. While this is a good alternative solution, it is not as ideal for the publisher. If the work is a work made for hire, then the publisher owns the copyright rights outright. However, if it is an assignment, then the Copyright Act has a provision that would allow creators to reclaim copyright assignments after 35 years.[3] Obviously, this is something a publisher would prefer to avoid.
If you want to create a comic book, then you also need to make sure you understand the work made for hire doctrine, and how it might impact your rights. For instance, if you want to hire a freelancer to work on your comic book, then you would need to have her sign a work made for hire agreement in order to prevent her from obtaining any copyright interests in your book. This agreement should have a provision stating that she is entering a work made for hire agreement, and that all contributions she makes to the work will belong to you. Additionally, in order to further protect your work, it should also include language assigning all of her possible rights in her work to you. This should prevent the freelancer from unintentionally gaining a copyright interest in her contribution to your work. Obviously, if you want the freelancer to have a copyright interest in her contributions to her work, then a different contractual approach should be taken.
If you are being hired to work on someone’s comic book, then the reverse of the above situation would apply. When you are hired to work on someone else’s comic book, they should have you sign a contract. If they do not have you sign an agreement, then you might be able to claim a copyright interest in your contributions to the work. If you do sign an agreement, make sure you understand what it says and what, if any, rights you will be giving to them.
 By understanding the work made for hire doctrine, you will be better positioned to protect your own creative works when you hire freelancers, and you will be able to understand what rights you are possibly giving away when you sign a work made for hire agreement.

[1] 17 U.S.C. §101
[2] 17 U.S.C. §201(b).
[3] 17 U.S.C. §203

Monday, July 25, 2016

Comics Startup 101 - The Infringement of Others' Intellectual Property - Part III, Copyright

Comics Startup 101: Legal and Business Tips for the Independent Comics Creator
Part 9: The Infringement of Others' Intellectual Property - Part III, Copyright

           This post is part of a series that grew out of my Comics Startup 101 panel I presented with comics creators at various comic book conventions around the Midwest. You can find the first post discussing doing a clearance search here, the second post discussing choosing a business entity here, the third post discussing contracts (part I) here, the fourth post discussing contracts (part II) here, the fifth post discussing an overview of intellectual property here, the sixth post discussing ways to protect your intellectual property here, the seventh post discussing infringement of the right of publicity here, and the eighth post discussing the infringement of another's trademark rights here. Today, we'll discuss copyright infringement lawsuits involving Superman.
           As always, I must disclaim that this is not meant to be an in-depth guide, nor is it meant to be complete legal advice. Any information provided in these posts is general in nature and should not be relied upon as legal advice. Meaningful legal advice cannot be given without a full understanding of all relevant facts relating to an individual’s situation. As such, you should consult with an attorney for specific legal advice that you might need.

The Infringement of Others’ Intellectual Property – Part III, Copyright
In the last two posts, we discussed DC being sued for right of publicity and trademarkinfringement. The final set of cases we’ll discuss in the Comics Startup 101 series also involve DC Comics. However, this time they are the ones doing the suing.
The first case is a precursor to the Captain Marvel case I discussed previously. In Detective Comics, Inc. v. Bruns Publications, Inc., et al., DC sued Bruns because it believed its Wonder Man character infringed on DC’s Superman copyrights.[1]  The court found that Wonder Man did infringe on DC’s copyrights due to the fact they are both “a man of miraculous strength and speed[,]” the “antics” of both characters are “closely similar[,]”  each hides their identity “beneath ordinary clothing” and when removed stands in “skintight acrobatic costume[,]” each is shown crushing a gun in his hand, each is “termed the champion of the oppressed[,]”  each is pictured stopping bullets, each are “endowed with sufficient strength to rip open a steel door[,]” and “[e]ach is described as being the strongest man in the world and each as battling against ‘evil and injustice.’”[2] Of particular note in this case is the court’s statement that even though Superman might be derivative of a Hercules, or other “heroes of literature and mythology[,]” since the Superman comics “embody an original arrangement of incidents and a pictorial and literary form” they are subject to copyright protection.[3] The court stated, “So far as the pictorial representations and verbal descriptions of ‘Superman’ are not a mere delineation of a benevolent Hercules, but embody an arrangement of incidents and literary expressions original with the author, they are proper subjects of copyright and susceptible of infringement because of the monopoly afforded by the act.”[4]  After winning this case and establishing their copyright interests in protecting Superman, and proving that a comic book character can be subject to copyright protection, DC initiated the lawsuit against Fawcett over Captain Marvel.
After their two successful attempts protecting their Superman copyrights in the ’40s and ’50s, DC tried again to sue under this theory in the ’80s. They believed the television show The Greatest American Hero infringed on their copyrights to Superman.[5] Part of what appears to have prompted the dispute was that after the success of Superman: The Movie, ABC sought to license Superboy for a television series.[6] After failing to secure a license, ABC created a television series about a normal guy who becomes a superhero.[7] The television series “contain[ed] several visual effects and lines that inevitably call Superman to mind, sometimes by way of brief imitation, sometimes by mention of Superman or another character from the Superman works, and sometimes by humorous parodying or ironic twisting of well-known Superman phrases.”[8] The character also had powers similar to Superman’s.[9] However, the court found that the lead character in The Greatest American Hero did not infringe DC’s right to Superman because the way he looks and acts “marks him as a different, non-infringing character who simply has some of the superhuman traits popularized by the Superman character and now widely shared within the superhero genre.”[10]
Our lesson from the Wonder Man and The Greatest American Hero cases: any similarities to an existing character could leave you susceptible to an infringement lawsuit. Personally, I believe that over the years courts have become more adept at analyzing the differences and similarities between characters in a way that promotes creation, which partially explains the different outcomes DC obtained in the Wonder Man and Captain Marvel cases and the result in The Greatest American Hero case.
The end?
This post brings to an end my initial series of Comics Startup 101 posts. I hope you enjoyed reading them as much I enjoyed writing them. Fear not, there will still be plenty of useful posts in the future dealing with similar topics.   
Do not let anything contained in these posts frighten you from making your works. The intent is not to frighten you, but to educate you about possible problems that could arise. None of the things we discussed should scare you away from making the comic book you want to make. Even though I barely scratched the surface of the issues you will need to be aware of as you start your business, I believe I have given you a great base of knowledge with which to proceed forward.
As you start your career making comics, keep in mind the topics and lessons we discussed. If you choose to start another type of business, the lessons learned here should still prove useful. These issues are universal to most businesses, and understanding them and learning from them will help keep you and your business out of trouble.

[1] Detective Comics, Inc. v. Bruns Publications, Inc., 111 F.2d 432, 433 (2nd Cir. 1940).
[2] Id.
[3] Id.
[4] Id. at 433-34.
[5] Warner Bros., Inc. v. American Broadcasting Companies, Inc., 720 F.2d 231, 238 (2nd Cir. 1983).
[6] Id. at 236.
[7] Id.
[8] Id. at 237.
[10] Id. at 243.