The Paper Trail

 
Lawsuits can be discouraging, to say the least. There are exorbitant costs, ongoing uncertainties, and emotional tolls. Opponents can be expected to cause court delays. Some may even resort to less than honorable and potentially illegal tactics, such as contacting you directly with threats and warnings. They will try everythingto wear you down, mentally and financially. I learned all this quickly when I found myself, an American citizen, fighting a foreign copyright infringement in Vienna, Austria. This unexpected occurrence hurled me straight into the trenches, having never attended boot camp.

    Before I tell you my story, I’ll begin with an important piece of advice: Leave a paper trail! Leave it long, leave it detailed, and above all, delete NOTHING! I can’t express how well this paper trail will serve you (even if you never end up in a lawsuit). Organize the trail with detailed folders and categories, such as project, contact person(s), business papers, specs, artwork, etc. Whatever works for you, just organize it. Keeping such detailed records not only supported my case but also helped keep costs down over the course of a three-year lawsuit, when explaining my position came with a price tag averaging $300 an hour. A paper trail also helps to keep facts in the forefront and emotion out of the way, a not insignificant factor when you’re being put through the wringer.

    My dispute began in spring 2013, when I discovered a client I had been illustrating children’s books for had give my artwork to a third party without my consent. My first action was to try to clarify the situation with a friendly but austere email to my client requesting information regarding how my design came to appear on a set of skis. My client in turn warned me that it was “the wrong moment” to discuss the product, promising we would “talk about everything” once work on the current book was complete. Not wanting to alienate my longtime client and believing my interests would eventually be honored, I agreed to wait for further discussion. The following fall, I again began inquiring. I expressed my belief that the ski design in which my artwork appeared was outside the scope of our contractual agreements and that their use without further compensation was inappropriate.

I wrote in an email on October 7, 2013: “As stated to you before, the designs I have produced are only to be used for the books. ... I need to know if my design has been used for items other than the books. If so, we must determine a reasonable compensation for my work.” My clients responded the same day that the art director on the project had created the artwork in question “from scratch” despite the fact that the images clearly came from the covers of three children’s books I had illustrated. I promptly hired an intellectual property attorney.

My clients continued to deny my authorship, so with my hand forced, I took action against the third party responsible for producing the skis. After a year of negotiations that went nowhere, it was time to bring the case to the Austrian courts. I hired a litigator in Vienna known for the restitution of works by Egon Schiele and Gustav Klimt stolen from the Jewish people in Nazi Germany. I was in very good hands for my next stage of the battle. In November 2015 I traveled to Vienna to attend the first hearing. I had waited so long to present my case that finally finding myself in Vienna moving forward was a great relief. It was unusual for an American artist to travel all the way to Vienna for a lawsuit, so the case drew some attention. Twenty Viennese law students came to witness the proceedings. As is standard, the judge asked for both parties to try to settle. After an hour it became clear this appeal wasn’t going to change either of our respective positions, so the hearing was called to order. I took the stand to testify. I was comfortable and wellprepared, and two hours on the stand went quickly. Every piece of counter-evidence presented by my opposition was easily dismissed and proven untrue. The position my opponents tried to argue was so ridiculous that a few well-placed one-liners on my part had the judge laughing right along. I stepped off the stand and court adjourned for a short break. When we returned my opposition was much more willing to talk. My (ex-)clients were present at the hearing and acted as “advisors” for the third party. A settlement was proposed, with a “revoking clause” agreement conditioned on the third party being reimbursed by my clients. They had a month to comply. One week before the “revoking” deadline, I received a letter demanding my written agreement that I would not “come after” my ex-clients in the future. This demand was not a part of the agreement reached in court and came with no additional incentive, so I refused. In turn, they refused to comply, and the settlement offer was revoked.
Follow-up attempts of a lowered settlement offer were made via the third
party, to which I did not agree.

This spring, with my ex-clients now trying to avoid contact with the
third party they put in this compromising position of infringement, a new trial has been scheduled for June 13, 2016. All parties appear to believe the judge will rule in my favor, so our attorneys are still attempting to negotiate a settlement, but I’m ready for the trial an the judge’s ruling. It’s been a long road that could continue for a while, but for now I am grateful for having had this opportunity to stand up for my rights as a professional artist.

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John R. Darakjian, the intellectual property attorney who prepared my case with impeccable detail and fortitude, offered the following guidelines onregistration and contracts:

On registration:
While it’s true that all artistic works are automatically granted copyright protection upon completion, formally registering visual works with the Copyright Office is relatively cheap and easy—and can be very helpful if your work is ever unlawfully copied. The digital nature of the Internet means it’s easier than ever to locate, copy, and re-use without permission—someone else’s artwork. A certificate of registration will prove the work was created by you and when. Should your work ever be used without your permission, registration will allow you to look past the infringer’s profits—which may be non-existent or at the very least difficult to prove—and instead seek statutory damages as high as $150,000 per infringement. It’s generally not financially viable to register everything you create, but work with broad appeal and obvious commercial value should abso-lutely be registered.

On contracts:
No matter how friendly or casual a business relationship begins, if your work will be used in any way that might be commercial, a contract should exist between you and the party seeking to use your art. All contracts should be reviewed by a competent attorney, however if you just can’t afford one there are certain things to ask yourself before signing on the dotted line. First, does the agreement represent a full sale of your work or is it simply a license for use? When language is broad (“all right, title, and interest”) or specific terms are used (“transfer,” “assignment”) we likely have a full saleof your work. Alternatively, when thecontract language places limits on theother party—e.g., where and how they canuse the work, for how long—we likely havea license where some rights may remainwith the author during the period of theagreement and where, at the contractedterm’s end, all rights will be returned.

Whenever entering into a formal agreement with another party, particularly a non-local entity, check a contract’ choice-of-law clause. These clauses, often found near the end of the contract, determine what state’s or nation’s law will apply should the parties enter into a legal dispute and often limit where such suits can be brought. Failing to negotiate an agreeable choice-of-law clause could find you arguing your case in a court thousands of miles from where you live and work—or prohibiting you from arguing one at all due to the expense of travel or the complexity of dealing with a foreign copyright regime.

Steven J. McDonald, RISD's General Counsel, generously shared the following online resources for artists:

Art Law, a detailed treatise on the law ofart; available at URI and other librarieswww.pli.edu/Content/Treatise/Art_Law_/_/N-4lZ1z12nuz

Will Fair Use Survive? Free Expression inthe Age of Copyright Controlwww.fepproject.org/policyreports/WillFairUseSurvive.pdf

Bound by Law: Tales from thePublic Domainwww.web.law.duke.edu/cspd/comics/digital.php

When Works Pass into the Public Domainwww.copyright.cornell.edu/resources/publicdomain.cfm

The United States Copyright Officewww.copyright.gov

The United States Patent andTrademark Officewww.uspto.gov

A Guide to Filing a Design PatentApplicationwww.uspto.gov/web/offices/com/iip/pdf/brochure_05.pdf

Volunteer Lawyers for the Artswww.vlany.org

Clancco: The Source for Art and LawSince 2005www.clancco.com/wp

The Art Law Reportwww.artlawreport.com