Work-made-for-hire and Copyright Termination

 

                I recently came across an article discussing a copyright lawsuit involving the original script to Road House. You can read the article here. But, in short, the original writer filed for a copyright termination of transfer to reclaim ownership of the script, and the studio counterclaimed stating that the work was done as a work-made-for-hire and is therefore ineligible for copyright termination of transfer. The wrinkle in this story is that the company employing the writer was the writer’s own company. This is a good reminder to be aware of who you are structuring your business deals and making sure you are not inadvertently losing your IP rights.

                It is common for many creators to start an LLC or company. In many cases, it can be financially advantageous to do so. However, if you are contracting with other companies through your own company, it is possible that the work you perform for your own company could be considered a work-made-for-hire for your own company.

                I covered the basics of copyright termination previously, but to recap, after 35 years, an author can file to reclaim ownership of a copyright that they previously transferred. However, this right does not apply to works-made-for-hire.

                If you work through a company, you should carefully consider how the company is structured and set up and the contractual arrangements you enter via it. If you are concerned about copyright ownership issues and want to preserve your ability to terminate a copyright transfer, you should consult with an attorney to evaluate your options.

Do you need media liability insurance?

 

                Something that I often ask the artists and writers I work with is if they have insurance. In particular, I ask if they have media liability insurance. Most don’t, but it is a type of insurance coverage more artists and writers should consider obtaining.

                In most publishing contracts, you are guaranteeing the publisher that your work will not infringe upon another’s intellectual property nor will it cause harm to a third party via defamation, libel, etc. If you or your publisher is sued because of your work that they published, you are likely responsible for paying their legal fees because you agreed to indemnify them.  

                These types of lawsuits can be very expensive. If you have basic insurance, typically known as a CGL (Commercial General Liability), it likely will not cover your expenses and legal fees. However, if you have media liability insurance, you are more likely to be covered. A typical media liability policy should cover the following: defamation, invasion of privacy, emotional distress, copyright and trademark infringement, misappropriation, and negligent publication.

                If you do have one, or you decide to get one, make sure that any agreement you sign complies with any requirements in the policy. If you sign an agreement that does not comply with your policy requirements, then the insurance company may not provide coverage.

                A media liability insurance policy may not be right for everyone, but if you are worried about being sued for copyright or trademark infringement or any of the other areas mentioned above, you should strongly consider obtaining one.

The name of the policy may differ depending on the insurance carrier. It may fall under an E&O policy (errors and omissions) or a professional liability policy. It is a good idea to ask questions and make sure the insurance carrier offers the coverage you are looking for.

Should all comics be considered works-made-for-hire?

 

                Recently, the American Bar Association’s Forum on the Entertainment and Sports Industries’ Entertainment & Sports Lawyer periodical published a new article of mine. The article is titled “Heroes for Hire No More: Rethinking the Presumption That Comic Books Qualify As A Work-Made-For-Hire Under the Copyright Act of 1976.” You can read the article in its entirety via the link, but I will provide a brief summary below.

                I have spent a fair amount of time thinking about this over the years, and I do not believe that comic books automatically quality as a work-made-for-hire under the Copyright Act of 1976. In order for a work to be considered a work-made-for-hire under the Copyright Act, it must either (i) be created by an employee or (ii) fall into one of nine specific categories and be part of a written agreement.

                As most people know, the comic book industry primarily runs on freelancers and contractors. Because most comic book creators are not employees, that primarily rules out the ability to claim comics as works-made-for-hire under the first prong. 

Comic books also do not fall neatly into any of the nine categories that can be designated as works-made-for-hire under the Copyright Act. Comic books are joint works, with each contributor considered to be a joint owner in the work, and joint works are not a work-made-for-hire category. The only way for comic books to be considered a work-made-for-hire would be if they are considered a compilation or collective work. Both of these require many copyrighted works be put together with each work having different ownership.

In my opinion, in order for a comic book to be a work-made-for-hire, it must be published in a format that contains multiple creative works owned by different owners. Based on this criterion, it is uncertain if a monthly issue of a comic book or a graphic novel would meet this standard. A trade paperback, anthology-style work, or collected edition might meet the standard if they contain multiple works owned by different owners.

Whether or not comic books can be considered to be work-made-for-hire is an important question for publishers and creators. If they are not, then publishers would have to rethink how they employ creators or how they publish their books. For creators, it means that they may have additional rights, such as termination rights, that they would not have been entitled to if a comic book was a work-made-for-hire.

As stated above, this is a brief summary. If you want to read about this in more detail, you can read the original article here.

An Invincible Lawsuit - Part 2

 

                Following up on a post from two years ago detailing the the lawsuit filed by colorist William Crabtree against Robert Kirkman over Invincible , the case has now settled. The two sides reached a confidential settlement, and the case was dismissed.

                In November, the judge overseeing the case issued a declaratory judgment ruling that denied some of Crabtree’s claims and allowed some to proceed. In particular, the court allowed Crabtree to pursue claims related to breach of contract and to seek invalidation of the Certificate of Authorship he signed in 2008, but only to the extent relating  to lack of consideration given for the agreement or to clarify the meaning or scope of the agreement. Due to the statute of limitations, the court denied Crabtree’s claims to seek declaratory relief that he was a joint author of Invincible, claims for promissory fraud, and invalidation of the Certificate of Authorship due to fraud.

                As I pointed out when it was first filed, this case could have been an interesting case to shed light on the copyright ownership rights of colorists. Does the work of a colorist entitle them to an ownership in the copyright of a comic book? Can their work be considered work-made-for-hire? Unfortunately, the court found that Crabtree waited too long to file the lawsuit. Under the copyright act, there is a three year statute of limitations in which to bring claims. The court found that Crabtree had definite notice in 2012 that Kirkman was denying his claims of ownership and waiting until 2022 to file the lawsuit exceeded the time to bring a claim.

                This is an important reminder to understand your rights, and if you feel they are being denied, to seek an attorney’s advice on next steps. Had the lawsuit been filed earlier, then the case may have turned out differently.

Adventures in Fan Fiction - Lord of the Rings Edition

                Recently, a few decisions were issued involving an unauthorized sequel to The Lord of the Rings (“LOTR”). In one, a court found that Amazon and the Tolkien Estate did not infringe upon the author’s book. In the second, the court found that the author’s book infringed upon the rights of the Tolkien Estate.

                Demetrious Polychron filed a lawsuit in April against Amazon, the Tolkien Estate and many others. In the filing, Polychron claimed that he wrote a sequel to LOTR called The Fellowship of the King. He sent copies to Tolkien’s grandson asking for the work to be published, and he did not receive a response. He subsequently published the work himself, and he intended to publish a seven-book series. Polychron’s lawsuit claimed Amazon’s Rings of Power series copied elements from his works and constituted copyright infringement. He sought at least $250,000,000 from the parties involved for copyright infringement.

                In a summary judgment ruling, the court found that Amazon’s Rings of Power did not infringe upon Polychron’s book. In fact, the court found that because Polychron’s book was an unauthorized derivative work based on LOTR, he was precluded from bringing a copyright infringement claim.[1] In analyzing the work, the court reiterated the rule that copyright owners have the exclusive right to prepare or authorize derivate works based upon their preexisting work. Polychron’s work used characters from LOTR and was a direct continuation of the work. As such, it was a derivative work and not entitled to copyright protection[2].

In the second case, the Tolkien Estate filed a copyright infringement lawsuit against Polychron. The court recently issued an permanent injunction forbidding Polychron from making further derivative works based on LOTR and to destroy any existing copies of the current works.

This case continues a fairly strong line of cases showing that unauthorized derivative works will likely be found to infringe upon copyright. When a work utilizes characters, worlds, and plot elements from a previous work, it runs the risk of a copyright infringement claim. The risk significantly increases when the work is being sold for profit and directly competes with the market for the original work. The only derivative works that have been found to be fair use are those that tend to provide commentary on the original. A work that is just a continuation of the story in the original will likely not be a fair use.

If you want to write fan fiction, it is important to be aware of these cases, and if possible, structure your work in such a way as to avoid a copyright infringement claim.

Final notes about this case:

1)      Polychron received a copyright registration for his work. This is a reminder that the copyright office does not usually weigh the merits of whether a work is an infringement when processing registrations.

2)      Polychron sold his work. Selling your fan fiction for profit raises the chances of a lawsuit.

3)      Suing the original copyright owner for infringement of your unauthorized derivative work rarely turns out well.

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[1] See page 10, Order Granting Defendants’ Motions to Dismiss the First Amendment Compaint, 2:23-cv-02831-SVW-E.

[2] Id. at page 12. 

Comic Book Recommendations - 2023

            It’s the end of another year, and it’s time to recommend some of the comic books I read this year. As I mentioned in previous years, I tend to primarily focus my recommendations on creator-owned titles, these will mostly be graphic novels/trade paperbacks, and they may not all have been released this year.

As always, I’ve provided links where I can. Links to Amazon will be affiliate links. Anywhere else is not. Even so, if you’re intrigued by these books, try to buy them from your local comic shop or book store. You can find previous years’ recommendation by clicking on the corresponding year: 2020, 2021, 2022.

Fairlady, vol. 1, by Brian Shirmer and Claudia Balboni

A fun fantasy comic with a detective bent. Each issue is self-contained with hints pointing to a larger narrative.

Love Everlasting, vol. 1, by Tom King and Elsa Charretier

An interesting riff on romance comics of yesteryear with a neat twist. I always look forward to picking up the next installment in this series.

Know Your Station, by Sarah Gaily and Liana Kangas

Set on a space station in the future, Know Your Station is a sci-fi/horror series with class-conscious bent.

Dead Eyes, vol. 1, by Gerry Duggan and John McCrea

Readers of the blog may remember my posts (here and here) about this book when it first came out and found itself in trademark trouble. After changing the title from Dead Rabbit to Dead Eyes, the series was released. It’s a gritty, mobster-inspired tale set in Boston following the exploits of an old criminal returning for one last score.

It’s Lonely at the Centre of the Earth, by Zoe Thorogood

One of the most original books I read this year, the art and layout push against the norms of stereotypical comic book, and the subject matter, the author’s mental health during a turbulent year, is compelling and challenging.

 

Dead Legends II, by James Maddox and Gavin Smith

A sequel that picks up after the first Dead Legends (a glaring omission from last year’s list), Dead Legends II is  a martial arts book that features excellent action-oriented art and a solid story of revenge, honor, and family.

 

Andre the Giant: Life and Legend, by Box Brown

This book chronicles the life of the wrestler Andre the Giant. The art may be deceptively simplistic-looking, but the story alternates between funny and heartbreaking. An excellent biographical comic.

Fables of the Public Domain - Part 2

 

This is the second post discussing Bill Willingham’s announcement that Fables is now in the public domain. You can find the first post here.

Previously, I discussed the problems surrounding the actual act of dedicating a work to the public domain before its copyright term has expired. Today, I will discuss some of the other problems arising from Willingham’s announcement.

The second problem we encounter when discussing Willingham’s statement is that you have to be the owner of the works in order to dedicate them to the public domain. Willingham claims that Fables is a creator-owned work, and that he is the sole owner of it.[1] The few records at the copyright office I skimmed are inconclusive, with the majority showing DC Comics and Willingham as co-owners and some registered solely in DC’s name.  In a response to Willingham’s declaration, DC stated that the works are still protected by copyright, and they are not in the public domain. 

Willingham claimed in his post that DC breached their agreement by claiming ownership in his works, and that he alone is the sole copyright owner. Without knowing the exact details of the agreement between Willingham and DC, it is impossible to know with certainty if Willingham owns all of the rights to Fables.

If he doesn’t, then it seems likely that he would not be able to dedicate Fables to the public domain. Comics are a joint work, and absent an agreement to the contrary, joint authors share rights equally in the work. I do not believe it is possible for one author to dedicate a work to the public domain without the other joint author’s consent. It is actually a tricky question that needs more research as to whether a joint author could dedicate their own part of the work to the public domain, for instance the scripts Willingham wrote.

Finally, even if he did have the right to dedicate his works to the public domain, he may be in breach of contract by doing so. If DC has the publishing rights, and he damages their ability to exploit them, then, depending on the contract language, he could be found to be in breach of the agreement. There are probably other types of legal claims, based in tort law, that DC may also be able assert against Willingham.

                In a follow up comment Willingham reportedly made on Twitter, he stated that the rights he has granted do not “include the right to reprint previously published Fables books and stories.”[2] A fundamental aspect of the public domain is that other people are free to do whatever they want with the work. If people are not free to exploit the work however they want, then it’s not really in the public domain. This comment suggests he is acknowledging DC may have some rights to the works, either via copyright or contract. It also suggests that what Willingham is doing is not really dedicating Fables to the public domain, but an attempt to encourage others to make derivative works.

Willingham’s attempt to dedicate his work to the public domain during a dispute with his publisher is actually quite fascinating. Whether he can do so, and whether he will be successful, may take some time to play out. Either way, I am following this closely.

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[1] https://billwillingham.substack.com/p/our-amazing-sunday-afternoon-update

[2] https://www.comicsbeat.com/dc-comics-fables-not-in-the-public-domain/