Booklocker.com, Inc. v. Sartain, No. 07-0176 (D. Me., Filed November 21, 2007). [Download the Complaint]
Online, on demand book publisher Booklocker.com has filed a declaratory judgment action against Utah-based artist Julie Sartain, in response to a cease and desist letter Sartain sent to Booklocker alleging copyright infringement. In the case, Booklocker seeks a determination by the United States District Court for the District of Maine that Booklocker’s use of artwork on book covers does not infringe on any copyright right held by Sartain.
The allegations are a bit sparse, as one may expect to see in federal pleading, but it appears that Booklocker believes Sartain does not own the copyrights in the cover artwork, but that such artwork is owned by the authors who have Booklocker print their books on demand. In the alternative, Booklocker asserts that it has some sort of implied license to reproduce the artwork through the course of dealing between the parties during the past four years.
In asserting that the individual authors — and not Sartain — own the copyrights in the individual pieces of cover art, Booklocker is putting a lot of faith in the process whereby the authors may have commissioned Sartain to create those works. The complaint says that there are more than a thousand works at issue. Are we to believe that there is a detailed, written agreement in place for each one of those works, in which Sartain assigned her copyright rights to these authors?
November 27, 2007
It's funny, the practice of filing a decl relief action in response to a C&D letter has gotten more prevalent. When you have a discrepancy b/w the parties or an obvious attempt to cause discomfort by forcing the would-be plaintiff to litigate in a distant forum courts are typically resistant to this practice.
On the merits you are right, seems awfully risky for a business to not have the clearance issue fully ironed out prior to using the work.
December 8, 2007
There doesn't have to be any individual transfer of copyrights if the projects were done under a work-for-hire agreement.
December 8, 2007
Kate:
Are you suggesting that the cover artwork falls within the definition of "work made for hire" under the Copyright Act?
December 20, 2007
I'm pretty sure I didn't say that or make any direct comment about the case in question. I'm just pointing out that if such an agreement or legal understanding between the two parties existed, then transfer of copyrights is unnecessary.
I've been working in media (newspaper and book publishing) for 25+ years and it's been my experience that work-for-hire is the usual scenario in these cases. I worked for a major text book publisher as a sub-contractor quite recently and that was the agreement and it's currently my agreement with all of my contracts.
Furthermore, if she used licensed images on any of the book cover designs, she probably doesn't own the copyright to the covers. It's common practice with almost 100% of the stock art agencies to include in the EULAs a derivative product clause.
For instance, take a look at the EULA of one of the top three agencies, Jupiter Images:
Modify or alter the Image(s) as necessary for your use, subject to the terms of Section 4, and provided that if such modification or alteration constitutes a derivative work you do not acquire any copyright ownership or equivalent rights in or to any of the Image(s) or any other property of JUPITERIMAGES or its licensors and you shall only use such derivative work in accordance with this Agreement. If requested by JUPITERIMAGES, you agree to execute a written assignment of any such rights, including copyrights, at no cost to JUPITERIMAGES.
Other agencies actually state they then own copyright of the derivative.
I'm not sure how American Copyright works, but is it possible to claim copyright on a cover if a large portion of the design is not yours?
I'd also like to point out that even if the artist owns the copyright of the designs, was she aware of the fact that she was granting royalty-free rights to use the design in printing and on promotional products? It's all over the site in question. If she worked for them for four years it would not have been possible for her to be unaware of the company's terms. And if she worked directly with the authors, then her agreement on usage would have been with them also, as the company in question is not the only party making use of the design. In the POD world, the author does most of the promotional work.