Copyright for the Freelance Artist Pt. 4: A Case Study of MomoCon

In 2015, Lee Morin became a featured blogger for The Needy Animator. Here is part 4 in 4 installments concerning copyright law basics for freelance artists.

Copyright for the Freelance Artist, Pt. 4, a case study of MomoCon

by Lee Morin, Esq.

In Copyright for the Freelance Artist Pts. 2 and 3, we discussed copyright for freelance artists in the context of employment; however, we will now return to where we started with a discussion on the role that fans play in the world of animation.  Frequently, fans of animation, or manga, grow up to pursue careers as freelance artists.  My cousin graduates from SCAD this year with a degree in visual effects. When she was a kid, she collected manga and learned Japanese.  She is an example of a fan, who became a career participant. I would like to dedicate this final chapter to my cousin.

Introduction

The first time I met Christopher Stuckey, Co-Chair of MomoCon, was at Mashable’s Social Media Day in 2013. Nestled in West Midtown, we networked and learned about social media from Dorothea Volpe. I again ran into Chris at GameVidExpo, where I was a featured panelist on fair use for YouTubers, and SIEGEcon, where I presented on intellectual property law basics for game designers. I suppose it was only a matter of time before I turned my sights to MomoCon. My hope is that the information shared here will raise awareness of the risks presented by fan art, how to guard against risks, and comply with the law at a convention that is well known for its costume role play (“cosplay”), anime music videos, Artist Alley, and Dealers Room.

Background

MomoCon happens in late May every year in Atlanta, and thousands of fans of Japanese anime, American animation, comics, video games, and tabletop games flock together in celebration of their fandom. It is an all ages event, which sets the stage for adults and children alike to explore their enthusiasm for characters, fantastic worlds, and stories together. To encourage this sharing, and notch it up with some healthy competition, MomoCon presents the Craftsmanship Costume Contest, which judges hand-crafted costumes and props, and the Video Remix and Anime Music Video Contests, which judge audiovisual mashups of a variety of animations set to music.

Cosplay

The Craftsmanship Costume Contest at MomoCon features cosplay, a portmanteau of costume and role play, in which participants wear costumes and accessories to represent a character or an idea. Cosplayers draw their inspiration from manga and anime, comics and cartoons, video games, and films. In other words, few take their inspirations from solely textual descriptions, and instead depend upon graphic fixations of characters eligible for copyright.

Characters

MomoCon features animation, gaming, and comics. Under copyright law, animation falls under motion pictures[1], interactive entertainment (i.e., video games) as other audiovisual works[2], and comics as literary works[3] containing graphic works[4]. Thus, characters in graphic novels, like Watchmen, or comics, like X-Men are graphic works[5].” Characters in motion pictures[6] are more likely protected if their stories are character-driven[7]. An example of a character-driven story is James Bond. Sherlock Holmes, which is character-driven, lost protection of 50 works published prior to 1923 when a United States appeals court issued its judgment and the Supreme Court denied certiorari[8], which settled the issue. Characters in interactive entertainment, like Resident Evil, are also protected as graphic works[9], which are part of other audiovisual works[10].

Costumes

Thus, characters are protected, but are costumes? It depends. Costume makers are not necessarily in the business of fashion design, which is an applied art[11] protected under copyright law[12] with certain limitations on useful articles[13]. Useful articles such as clothing and accessories serve a function and are therefore not protected under copyright. In contrast, designs appearing upon clothing or accessories such as those created by an artist are protected designs, which can be identified separately from, and are capable of existing independently of, functional aspects of the article[14]. Thus, if a costume has an artistic design that by itself carries meaning, then that design may be protected.

Copyright owners may agree to license to costume manufacturers the exclusive right to prepare a derivative work of a character depicted in their copyrighted works (motion picture or artwork). Depending on how the license agreement is worded, either the copyright owner will be required or the licensee costume manufacturer will have the authority to enforce the copyright in the event infringement is discovered. Licensees pay dearly for exclusive rights and thus the value of that license is diminished if an unauthorized party makes and sells costumes of the same character in their market. Moreover, because there is no license agreement between parties, the licensor copyright owner has no control over the quality and delivery of the costumes being made and sold by the infringing party.

The Stormtrooper

Sometimes, infringement occurs between parties who have done business together and know each other well. In one case, the costume designer himself was the infringing party, albeit thirty years after its creation. In the famous case of Lucasfilm v. Ainsworth, Ainsworth was the English costume designer on a work for hire basis for a motion picture called Star Wars. This means that whatever he created, his employer, Lucasfilm, owned, by virtue of their employment agreement. Thus, Ainsworth never owned any rights in the artwork or motion picture, which incorporated his design for the stormtrooper[15].

Never the less, Ainsworth and others made and sold stormtrooper costumes without permission. In turn, Lucasfilm sued them in federal court and won a judgment for 20 million dollars[16]. Because the opinion was not reported, it is difficult to speculate on the court’s reasoning, which led them to accept the argument that the stormtrooper helmet should be protected as a sculpture under copyright law. Ironically, Lucasfilm could not enforce their judgment in English courts because of conflicts between the American and English courts’ interpretations of sculptures[17]. Perhaps Lucasfilm could have taken a different approach to enforce their copyright, one, that would have held up in English courts.

Original Designs

Thus, if you base your cosplay upon a pre-existing work, it is technically copyright infringement; however, original designs are not. Original designs based upon literary characters for which there are no illustrations, but merely textual descriptions, are less likely to be viewed as infringement because to create them requires some work of the imagination on the part of the cosplayer[18]. Furthermore, original designs based on ideas (“the evil witch,” “the sea serpent,” “the Greek/Roman goddess,”), are eligible for copyright protection as graphic works if captured first upon paper[19], which is a tangible medium, because they are expressions of those ideas.

The Rules for the Craftsmanship Costume Contest suggest that a visual reference be turned in with the application to compete in order that the contestant be eligible for accuracy points. Thus, if you want to be eligible for accuracy points, it is wise to capture your original design first upon paper, and preferably in color. You may not be eligible for accuracy points if judges are not familiar with your character. It is unclear whether “familiar with” means that the judges simply require a visual reference such as a colorful sketch of your costume, or, if it means that judges rather expect that contestants will represent characters depicted in copyrighted works.

To Litigate, or Not?

Never the less, if you base your cosplay upon a pre-existing work, it is unlikely that copyright owners will sue for infringement because actual or statutory damages and lost profits will be less than the cost of litigation. Moreover, those cosplayers, who use their homemade costumes for personal enjoyment only and not for profit, or who sell commissioned works and refrain from mass-production, might raise an affirmative fair use defense[20]. Finally, the public relations backlash for suing your fan base, which includes children, is likely to be substantial.

Copyright v. Trademark

A copyright need not be enforced each time it is infringed. This distinguishes copyright from trademark, which must be enforced in every instance where infringement occurs to prevent arguments of abandonment. The validity of a trademark arises in actual use in commerce, whereas the validity of a copyright arises because it is an original work of authorship fixed in a tangible medium of expression. Copyright owners thus have a choice whether or not to sue.

Be wary should your commissioned works of cosplay carry a registered trademark. Registered trademarks must be enforced if they are to be maintained; thus, owners will pay for a “watch service,” which mines data over the Internet and otherwise to uncover unauthorized uses of their trademarks. If noticed, you will likely receive a cease and desist letter requiring you to remove the infringing article from your storefront and cease all further use of the trademark.

Etsy and Ebay

If you sell your commissioned works over vendor platforms like Etsy and Ebay, then you also risk being labeled as a repeat offender if you are served with enough take down notices. Etsy and Ebay will take down instances of alleged infringement, which are reported by copyright owners, because they are shielding themselves from secondary liability[21]. Etsy and Ebay each have their own systems for reporting and addressing instances of alleged infringement. It is less risky to ply your wares by word of mouth than online. But if you must sling cosplay online, then it is important that you become familiar with these policies to successfully operate within them.

Anime Music Videos (AMV)

Background

MomoCon’s Video Remix (V-Mix) and Anime Music Video (AMV) contests feature audiovisual mashups of a variety of animations set to music. Th Rules and Guidelines for the AMV contest require that submissions consist of at least 50% Japanese animation, anime-style video game cut scenes, or anime-inspired stills. The V-Mix competition welcomes submissions that use non-Japanese animation, original animation, machinima, video game, cosplay, and live action footage.

Visual Aspects

Some of these materials are likely to be protected under copyright, whether in the United States or Japan, while others are more likely to stem from original works. For example, Japanese and non-Japanese animation, anime-style video game cut scenes, video game, and live action footage will all likely be directly copied from the original work. Anime-inspired stills, machinima, and cosplay footage, if based upon pre-existing works, qualify as derivative works. Anime-inspired stills and cosplay footage, if from original designs, and original animation, are the only types of footage that could be entirely original works and deserving of their own copyright protection.

Circumvention

The Digital Millennium Copyright Act enabled legislation, which former President Bill Clinton signed into law in 1998, that addresses the circumvention of copyright protected works[22]. The law states, “No person shall circumvent a technological measure that effectively controls access to a work protected under [copyright][23].” It further prohibits others from trafficking products, which serve a primary function to enable others to violate the law[24] either by granting them access to[25], or enabling the infringement of[26], any of the exclusive rights[27] granted in copyright.

Obtaining the footage required to compete in the AMV and V-Mix contests thus presents an additional layer of concern over circumvention of copyright protection systems, which are used to violate any of the exclusive rights in copyright. Contestants may use products that carry circumvention applications to rip images and video with copyright protection systems, thus infringing upon the exclusive right to reproduce a copyrighted work in copies[28] if source material is copied directly into a video, and the exclusive right to prepare derivative works based upon the copyrighted works[29] if source material is further used to construct anime-inspired stills or machinima.

To Sue, or Not?

The likelihood that any AMV or V-Mix contestant will be sued for copyright infringement is small, and for the same reasons given that cosplay contestants will likely not be sued either. First, the cost of litigation far outweighs the potential award for damages; second, the use is arguably for personal enjoyment; and third, the fan will likely not reproduce, sell, distribute, or publicly perform their entry in another venue than for the contests at MomoCon. The Rules and Guidelines prohibit entries that were submitted to any prior exhibition or contest; thus, the performance is most likely to be for this single event and not for any further competitions.

YouTubers

If the video is later posted to YouTube however, it is quite possible that the Content ID system will automatically flag any infringing material, whether audio or visual, and either remove the audio while leaving the video untouched, or remove the entire content. If that happens, and the person posting the video believes it is a fair use[30], then he or she may appeal the take down[31]; but an appeal if decided against the person posting the video will result in a flag. After three flags, or strikes, the channel is removed along with other permitted content and loses its subscribers.

Machinima

It must be noted that the history of machinima plays a larger and vital role in the development of relationships between fans and copyright owners. In 2007, two major players in the world of interactive entertainment, Microsoft and Blizzard, each developed unilateral licenses for their games, Halo and World of Warcraft. Each license varies slightly, but both grant to their fans a limited right to prepare derivative works. Such maneuvers reduce potential litigation, and serve as mechanisms by which Microsoft and Blizzard acquire good public relations with their fans.

Audio Aspects

The AMV and V-Mix contests are audiovisual in their nature. So far we have covered visual, but what about audio aspects?  The Rules and Guidelines specify for entries into the V-Mix contest, “video must only use a single audio track or a congruent audio mix.” If the contestant creates his or her own content consisting of a single audio track or mix, then there is no copyright infringement. If the contestant instead uses audio content consisting of copyrighted works without permission, then he or she is infringing copyright. The rights infringed upon include the right to copy the work[32], to prepare derivative works[33] (as part of a video), and, to publicly perform the work[34].

Can I Get a License?

The world of music licensing is convoluted and frustrating, even for professionals, who navigate it daily. For the average contestant, the licensing scheme is pointless because licensing fees are generally based on gross estimated revenue for the requested use. For example, if I were to license a song for a dramatic production, then the copyright owner would command a percentage of my gross ticket sales in exchange for permitting my use of their work in my play. Because the contestant is not profiting from their requested use, there is nothing upon which to base the licensing fee.

The Layer Cake

Allow me to parse for you the many layers of rights involved in licensing music for use in video. First, there are mechanical rights, which arise in the writing and composing of the title. Second, there are publishing rights, which arise in the placement of the title in various artistic mediums, such as film, television, podcasts, advertisements, and other audiovisual works. Third, there are master use rights, which arise in the sound recording itself. Publishers, which may be located by searching ACE, BMI, or SongFile, administer the first and second layers of rights. Record labels usually administer the third layer of rights. To synch music with video requires all three layers of rights; thus, you will spend an inordinate amount of time locating and negotiating a license.

No Means No

Even if you successfully perform the footwork to locate and begin negotiations with publishers, you will find that many artists will not permit use of their works in certain mediums to protect their reputations. Indeed, Van Halen consistently rejects use of their works in theater. Thus, it is unlikely that a contestant would have the skills or resources, much less be able to offer rights holders any benchmark upon which to base a licensing fee to use copyrighted works. In the end, it may be best to limit your use of the music and video to the AMV or V-Mix contest only.

Pre-Cleared Content

Contestants may avoid infringement by using pre-cleared content including images, video, and audio works in their AMV or V-Mix entries. Creative Commons serves as an online gateway for pre-cleared content by providing users with access to communities, which provide platforms that allow copyright owners to upload content under a variety of Creative Commons licenses. Thus, contestants can search for content and specify whether their use is for commercial purposes, or to modify, adapt, or build upon a pre-existing work. The website is available in several languages, so contestants from all around the world can access it. Once you locate the content you desire to use, it is wise to contact the owner to confirm it is indeed under a Creative Commons license.

Public Performance

Conventions do not qualify for an exemption[35] and therefore must obtain permission to perform copyrighted works publicly[36]. A performance is public[37] when it occurs at a place open to the public, such as a performance by musicians, or, when transmitted to the public by means of any device or process, such as playback of an audio track or mix containing a sound recording on a public address (P.A.) system. Thus, to perform a copyrighted work publicly, the convention must first obtain performance rights from the copyright owner or his or her representative.

The Blanket License

Performance rights organizations (PROs) like ASCAP, BMI, and SESAC represent songwriters and publishers. They administer public performance licenses. The blanket license is specially crafted for public events like MomoCon because it permits an unlimited use of literally millions of titles without requiring the paperwork, hassle, and expense of finding and negotiating licenses with each individual copyright owner. Thus, it provides its user with reliable protection against infringement[38] while ensuring that copyright owners of music titles are paid their royalties.

Doujinshi, Fan Art, and Fan Subs

Background

MomoCon provides venues for artists and vendors to display and sell their creative works and wares to the public. Artist Alley is where artists display and sell arts and crafts. The Dealers Room is where vendors display and market their merchandise to fans of anime, comics, gaming, and costumes. Both venues attract thousands of visitors over the weekend in the City of Atlanta.

Doujinshi/ Fan Art

Doujinshi is the transliterated word from Japanese for self-published works that manifest as fan zines, manga, or novels. Fan Art is artwork that is based upon or inspired by a pre-existing work typically found in visual media such as comics, motion pictures, or interactive entertainment, and is neither created or commissioned nor endorsed by the copyright owner in the original work. It manifests as visual art, such as paintings, drawings, prints, animations, avatars, or photographs.

Infringed Rights

Doujinshi and fan art by their very nature infringe upon the exclusive right to prepare derivative works[39] in copyrighted works. If either is displayed or sold to the public, whether at a convention or online, then there is further infringement upon the exclusive right to distribute[40] and to publicly display[41] the copyrighted work. Doujinshi do not infringe upon any rights if the author prepares original works; some authors are professionals seeking to publish outside of their industries.

Cultural Treatment

Although technically illegal, doujinshi and fan art are mostly tolerated because they provide creative outlets for fans to explore and participate in fandom. This exercise is not only healthy for aspiring young talent, but it is also a wise public relations move on the part of copyright owners, who seek new audiences for their works. Though doujinshi is adverse to Japanese copyright law, twice each year Tokyo hosts Comiket, the world’s largest comic convention, where more than half a million fans gather together to exchange or sell their doujinshi.

Fair Use Defense

It is unlikely that a copyright owner will sue a fan participating in doujinshi or fan art simply because the cost of litigation outweighs the potential award of damages. Fans create infringing works for one day or weekend events and do not distribute or display them in the commercial markets. Moreover, it is arguable that such works are transformative, and are therefore a fair use of reproduction because they create new meaning in their works.

Original Aspects

It is important to note that although the underlying work in doujinshi/ fan art does not belong to the author/ artist, new or original aspects do belong to the creator and are thus copyrightable[42]. If you were to license the right to create a derivative work, then any new aspects that you develop in creating the derivative work would belong to you. This is why translations are copyrightable, because new expressions in other languages belong to the translator and are a derivative work[43].

How to Copyright Fan Works

United States copyright law does not protect original aspects of derivative works, which do not obtain permission to use the underlying work lawfully. To be copyrightable, a derivative work must not be infringing[44]. Thus, an author/ artist cannot enforce rights in the original aspects of their works unless they obtain a license from the copyright owner in the underlying works. This adds a layer of frustration in cases where the fan art is the target of impermissible exploitation.

Infringement by Fans, for Fans

I heard of one such situation, where an author of fan fiction found that another author of fan fiction had copied entire chapters of her book into her own publications and was selling them online. The author did not own the underlying work in her fan fiction; thus, she did not have the means to exclude this blatant word for word copying and profiting off of her work. She instead turned to the Organization for Transformative Works, who helped her achieve the desired result using other means such as direct correspondence with the offending plagiarist.

Your Best Resource

The Organization for Transformative Works (OTV) is the world’s largest advocate for derivative works, including fan fiction, anime music videos, and real person fiction. Its primary focus is to protect fan fiction, fan art, videos, and other transformative works from lawsuits and commercial exploitation. It offers an open-source, non-commercial, and non-profit archive of fan fiction, a wiki for preserving oral history, legal assistance to fan communities, historical preservation, a peer-reviewed academic journal entitled, Transformative Works and Cultures, and tutorials.

Artist Alley Packet

The Artist Alley Packet addresses copyright infringement by artists in its Policies. It states, “Artists are left to their own discretion regarding the copyright of their characters. If contacted by a copyright holder or representative, MomoCon will fully comply with all requests.” The effectiveness of this policy is unknown until it is tested. The chance that MomoCon will be held liable for secondary infringement is akin to the likelihood that any of its participants in Artist Alley will be held directly liable for copyright infringement. The chances are slim to none.

On the last page is an “Original Agreement,” which though not a traditional contract serves as a pseudo-contract, which requires dates and signatures by both artist and MomoCon authorized representatives. The artist promises, “I agree to refrain from selling non-legitimate materials.” This promise serves as a warranty to MomoCon; however it is missing one key provision.

Indemnity Clause

Indemnity provides an extra layer of protection against any liability arising from any acts or omissions by the artist. In the case an artist sells “non-legitimate materials,” then the indemnity clause will trigger to shield MomoCon from liability arising from the broken promise.

Fansubs

Fansubs are a form of fan art, but they are less transformative than doujinshi or fan art. A fan sub is a redubbed version of animation from one language into another. The aim of this fan art is to make certain works accessible to fans from other countries and that speak different languages. Thus, the exclusive rights infringed upon to make and distribute a fansub include the right to reproduce a copyrighted work[45], the right to prepare derivative works[46], the right to distribute[47], and the right to display a copyrighted work publicly[48] if the fansub is displayed for sale or trade.

National Treatment

There is no international copyright law, but there is national treatment. The Berne Convention is an international treaty, which provides its signatories with similar protections afforded copyright in all nations. Nations can make laws that require more strict copyright regulations, but they cannot make laws that fall below the basic principles agreed to under the Berne Convention. The United States and Japan are both signatories to the Berne Convention and its amendments. Thus, a work protected in Japan is afforded “national treatment,” by the laws of the United States.

The Berne Convention grants the exclusive right to translate expressly to the copyright owner. The United States grants the right to translate to the copyright owner under the exclusive right to prepare derivative works of copyrighted works[49]. Thus, any fan sub that creates an unauthorized translation is infringing not only United States copyright law, but also copyright law of Japan.

The Berne Convention further expressly grants the exclusive right to reproduce copyrighted works in copies to the copyright owner, but makes a provision for fair use. The United States also grants the exclusive right to reproduce copyrighted works in copies to the owner, but also has a limitation entitled fair use[50]. In my opinion, fansubs will not benefit from the fair use limitation on the justification that there is no market for the products they purport to supply. The privilege to enter the market sits with the copyright owner; thus, fansubs are infringement.

Third Party Infringement

Fansubs create additional layers of infringement beyond what has already been discussed. Fan subs may contain content from third parties, such as companies who fund animations. If sponsorship agreements fund animations, then they may contain company logos and product placements that are protected under trademark law. Moreover, music synched with animations is a separately licensed right as previously noted; these licenses are narrowly tailored and non-transferable.

Dealers Room

It therefore comes as no surprise, that fansubs are expressly prohibited not only in the Artist Alley Packet, but also in the Vendor Contract at MomoCon. MomoCon does a much better job with identifying their rights to eject any vendor selling infringing material without warning and without refund; and, to inspect or eject “questionable” material at any time. MomoCon also identifies vendor’s obligations to obey all relevant laws regarding the sale of infringing material and to have documentation on-hand of proper licenses to sell materials that require permission.

Indemnity Clause

While I appreciate the effort that MomoCon makes in tightening up this provision on intellectual property, it would be even tighter if it carried its own indemnity clause. Simply stating that you are not responsible does not mean that the vendor expressly agrees to be liable for any claims.

Paragraph 22 is a general indemnity clause and does not cover any claims arising from any acts or omissions on the part of the vendor, but rather on the part of MomoCon. Thus, it is important that Paragraph 12 contain its own indemnity clause, such that vendor agrees to hold MomoCon harmless from any acts or omissions arising from any breach of promises by the vendor.

DISCLAIMER: THE INFORMATION CONTAINED IN THIS BLOG IS FOR INFORMATION PURPOSES ONLY AND IS NOT LEGAL ADVICE.