PUBLISHED APRIL 1999
by Ivan Hoffman, Publishing Attorney —
In what appears to be a frequently occurring situation, publishers seem to pay cover artists and illustrators to do work on the publisher’s books without having sufficient writing covering the issues about who owns the rights to the artist’s/illustrator’s work as well as other clauses. Or there’s no contract at all. In such a situation, the publisher loses and the artist/illustrator wins.
Here is the basic premise of the United States’ copyright law: the creator of any copyrightable work owns all rights in and to that work, unless there is a sufficient, written agreement, signed by the creator, transferring some or all of those rights to another.
This means that if you, as a publisher, have not entered into a legally sufficient written agreement with your artist/illustrator, you as the publisher probably own no rights to use the artwork except on the cover or inside of the book, but not for any other use whatsoever — not for use on the Internet, not for use in merchandising, not for use in marketing. You probably have no rights to use the cover if you translate your book into other languages nor any rights to use it if you make reprint deals in the English language anywhere in the world on that book. You probably have no right to use that artwork in book club editions nor other editions of the work. You probably cannot use the cover art for a softback book if your original edition was hardback. Or vice versa.
You probably cannot create derivative works based upon that artwork and those derivative works can be of extreme importance. For example, you probably cannot use that artwork from the book when you create a CD-ROM based on the book. You probably cannot use that artwork for the cover if you turn the book into a Saturday morning children’s television program. And so on.
In sum, you probably have no rights to use the artwork in any manner except the nonexclusive right to use the cover or internal art in or on the particular edition of the particular book for which the artwork was done.
And what having no such rights means is that you are probably without any opportunity to reuse the art, especially the cover art, for any other purposes or in any other markets, which means you may have missed out on a potentially huge source of income. Cover art, for example, can be extremely valuable and the owner of those rights in the cover art may be in a position to reap large rewards as a result of that ownership.
But I Have Paid for It!
The response of many publishers is: “But I paid the artist for the work! Therefore, I must own it.”
And the reply to this statement is that merely paying for the work creates no right of ownership of the rights in the work. The mere ownership of the physical embodiment of a copyrightable work does not create the ownership of the underlying rights in that work. That is more basic United States copyright law.
Moreover, if you read what little paperwork is often generated in this type of transaction — an invoice from the artist/illustrator to the publisher — you may find an express statement to the effect that the artist/illustrator retains all rights to the artist/illustrator’s work. And even if there is no such statement, that is the effect of the United States copyright law because there is no express transfer of rights in a valid, written, signed agreement.
Additionally, what also seems to occur is that the publisher awakes to the fact that the publisher needs a contract after the work has been done and after the money has been paid to the artist/illustrator. In my nearly quarter of a century of practicing law, it is my experience that coming then to the artist/illustrator and trying to get that artist/illustrator to sign a contract after the fact is often quite expensive compared to the deal that could have been made had the contract been done in advance of the work being done and the money being paid. This does not make the artist/illustrator evil, just a good business person. It is the nature of free market capitalism that each side protects their rights to the fullest, and if the other does not, then it is the other’s fault.
What Kinds of Contracts Are Necessary?
The artist/illustrator’s contribution can perhaps be the subject of a work made for hire contract since it is likely that the publisher “specially ordered and commissioned” the artist/illustrator’s work and that the artist/illustrator’s work may fall under one of the legally acceptable categories of work made for hire situations, and that the contract is sufficient in language to qualify as a work made for hire. But preparing a work made for hire agreement requires certain very specific language.
The contract between the artist/illustrator and the publisher may also be a transfer of some or all of the rights but it must be sufficiently broad to include language transferring these rights to the artist/illustrator’s work to the publisher, if that is the intent of the parties. And the rights must be clearly set forth, in express language, so that both parties understand the meaning of the transfer. A contract is supposed to solve more problems than it creates, and if the language is vague and uncertain, the contract may become the source of dispute and litigation, thereby tying up the rights for a long time.
In these contracts, and in the underlying deal, the artist/illustrator can adjust his or her price to reflect a larger transfer of rights to the publisher. This can be in the form of a flat fee, a percentage of the rights exploitation, or some variation on those themes. Therefore, this type of transaction is one in which both sides can win. But the publisher must be given the exclusive right to control, administer, and exploit the rights even if the artist/illustrator participates in the income from such exploitation. Without this exclusive right to administer, you have a potentially confusing situation, one in which both sides may exploit the rights and the net effect is that neither side can effectively do so.
Publishers frequently seem to approach their relationships with artist/illustrators without the benefit of a valid, written contract. This can only inure to the benefit of the artist/illustrator and to the detriment of the publisher. This one-sidedness can be avoided quite easily by the simple exercise of sound and wise business planning in the form of a valid, written contract.
If you are a publisher, protect your rights and have such a contract done before you start paying out any money.
Ivan Hoffman (photo right) is a publishing, copyright, Internet law, recording, and music attorney as well as a published writer and author. He practices in the Los Angeles area. You may reach him at firstname.lastname@example.org or 818/342-1762.