Legal Update: Copyrights

Basic principles of Copyright Law for Newspaper Advertisements & Independent Photographers/Writers

Newspapers may run into the application of copyright laws in the following situations: running advertisements and publishing works by feature writers or independent photographers. These are discussed below.

Advertisements

Let's consider the following situation. A newspaper receives an ad from an advertiser or ad agency which includes art and materials supplied to the advertiser/ad agency by an outside graphic artist. After the newspaper runs the ad, the advertiser (or the newspaper) wants to use the ad material elsewhere. The graphic artist, however, contacts the advertiser/ad agency or newspaper and tells one or all that the artist owns the art and if it is to be used elsewhere it needs to be purchased and licensed for that particular publication.

Or, consider the case where the graphic artist provides some input but the newspaper's own staff generates most of the work in creating the ad. Can the newspaper use the ad elsewhere or for other purposes?

In these or similar situations, the following questions often arise: Who owns the copyright - the artist, the newspaper, or the advertiser/ad agency? Does the artist have to provide notice of the copyright and other formalities? What is the importance of a written agreement between the parties? These common questions are addressed as follows.

What Ads Are Copyrightable?

The first question is whether the ad is even copyrightable. Under the federal copyright law, an advertisement is accorded copyright protection if it contains a modicum of creativity. For example, pictorial or graphical advertisements may be properly classified as a "pictorial, graphic, and sculptural work" and a textual ad may be classified as a literary work. Any minimum expression of originality is sufficient.

On the other hand, facts or raw data themselves are neither original nor creative but are in existence and publicly available. Thus, for example, a real estate ad that lists only the attributes of a property is a listing of facts and raw data and is not entitled to copyright protection. However, the manner in which those facts are presented may be.

Who Owns the Copyright?

If an ad is eligible for copyright protection, the next question is who owns the copyright: the artist, newspaper or advertiser/ad agency? For advertisements prepared and placed by the advertiser/agency or an artist, the general rule is that advertisements are treated like all other contributions to collective works. That is, unless there is an express transfer of the copyright, the owner of the copyright in the collective work (the newspaper) is presumed to only have the right to reproduce and distribute the contribution as part of that collective work. Thus, the newspaper obtains only a license as to certain uses of the advertisement, while the copyright ownership of an advertisement developed and prepared by others such as the artist, advertiser, ad agency or other "author" remains with that entity. Nimmer on Copyrights, section 2.08[G][2].

However, newspapers are frequently capable of supplying the artistic, pictorial and graphic material to develop ad layouts for an advertiser. In such cases, where the newspaper develops the layout, the newspaper would ordinarily be entitled to copyright protection as the author. However, in certain circumstances advertisers may claim that despite the fact the newspaper developed the ad, they are entitled to the copyright based on the "work for hire" section of the copyright law.

Under the current version of the Copyright Act, an advertisement prepared by the newspaper can be deemed a work for hire owned by the advertiser only when a writing exists signed by both parties. Thus, for example, if the advertiser uses a newspaper's ad production department, in order for the advertiser to claim a copyright there must be some form of work for hire agreement. Absent such writing, the newspaper preparing the ad owns the copyright to it and can prevent the advertiser from reproducing the ad elsewhere. See Nimmer on Copyrights, section 2.08[G][4][a]; Brunswick Beacon, Inc. v. Schock-Hopchas Publishing Co., 810 F.2d 410, 414 (4th Cir. 1987).

It is also noted that an ad may be created by both the newspaper and the advertiser. In such situations, both parties might own the copyright, unless, again, there is a written agreement setting forth the ownership rights.

Is Notice of Copyright Ownership Required?

With passage of the Berne Convention Implementation Act (BCIA) of 1988, notice (and other formalities such as registration) is no longer a condition to copyright protection for copyright claims arising after that date. Thus, lack of notice does not automatically invalidate the copyright. However, BCIA did not do away with notice altogether: the notice provisions of the copyright law are still on the books, and they are useful tools to secure procedural advantages. For example, in infringement cases, lack of notice can strengthen defenses raised by the defendant infringer. Nimmer, section 7.02[B].

Where notice is provided, the form of notice for advertisements is different from the form required of other contributions to collective works. Ordinarily, only a single notice is required for the entire collective work. However, in the case of advertisements, a separate notice in the name of the copyright owner of the ad is necessary. Nimmer, section 2.08[G][4][a].

Since the copyright notice provisions are quite complicated, newspapers should consult with counsel on whether and what form of notice should be provided.

What is the Importance of a Written Agreement?

As noted above, the parties' entitlement to copyright protection will be governed by whatever agreement the advertiser enters into with the newspaper. For example, in the situation where both the artist/advertiser/ad agency and the newspaper create the ad, can the newspaper provide the ad for use by its online networks? Without a written agreement, the answer will be unclear. It is important that agreements be formalized and that the written agreement is crafted to accurately reflect the parties' intent regarding ownership of copyrightable advertisements. In particular, written agreements should anticipate and deal with potential "work for hire" problems before the ad is published.

Independent Writers or Photographers

Another common area where copyright law can come into play for newspapers concerns work by feature writers or photographers. What if a newspaper publishes a story or photograph in several editions of the paper that the author/photographer later claims goes beyond the "oral agreement" of the parties and the payment via check by the newspaper?

Copyright ownership cannot be transferred from the author to another party unless the agreement is in writing. Therefore, an oral agreement with the author could not have transferred ownership to the newspaper. Because there is no written agreement or notation on the check, the photographer/author owns the copyright. Depending on what was orally agreed between the parties, the newspaper might be able to argue that it had an implied license to run the story or use the photograph in subsequent or other publications. However, there are a number of cases on this issue, and some courts have found in favor of the photographer or author, in which case statutory damages could run between $750 and $30,000.

As can be seen, an oral agreement can rapidly lead to problems. To avoid this, the newspaper should enter into a written agreement with writers and/or photographers supplying work that outlines the status of the writer/photographer as an independent contractor and the scope of the license that writer/photographer is granting the newspaper.

Form Agreement

A copy of a draft agreement is available in the members-only section of the CPF Web site. Newspapers may also want to add nondisclosure and non-compete-type provisions. You should consult with your own legal counsel regarding the use of this form agreement.

If you have misplaced your username and password for the CPF members-only site, please contact Barbara Holmes at: CPFDisplayAds@aol.com.

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