Retouching Rights

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Altering licensed photos or other artwork is a legal no-no unless your licensing contract explicitly gives you permission to do so

What do Martha Stewart, O.J. Simpson, Dustin Hoffman, Ann Richards, and Oprah Winfrey have in common? All have had photos of themselves doctored (not necessarily in a flattering way) and then found the doctored photo presented to the public where the alteration was not disclosed or authorized.

What kind of artistic license is available in the use of a photograph or artwork? How much manipulation of a photo, artwork, trademark, or celebrity's likeness by a licensee is permitted for inclusion in a licensed product without prior clearance from the licensor? In a well-drafted license agreement, these questions could and should be covered. However, in many instances, this issue easily falls between the cracks of a contract and probably is not discussed by the parties before signing the contract. It is likely the licensee representative who negotiated the contract had no clue that the art department ultimately would make modifications or distortions nor would anyone in the subsequent chain of creating the licensed goods, after the image was presented to them for incorporation in or on the product, have any idea an earlier manipulation of the image had taken place.

Derivative Works

There has been a great deal of both commentary and litigation in this area of law. The most recent episode dealt with a Newsweek magazine cover in which the magazine altered a photograph of Martha Stewart. It unanimously was condemned as a "major ethical breach" on Newsweek's part, but is Newsweek involved in a different environment than a typical licensee? When a magazine presents a photo, people are led to believe it is an accurate representation of a news fact. Do not people who obtain a licensed product with artwork, celebrity image, or a trademark have that same expectation?

Several issues need to be addressed when reviewing these questions. One of the issues is based in copyright law. Copyright owners enjoy several different and distinct rights in their original creations. The most obvious is to prevent others from copying their work without permission. They also have the right to prevent subsequent sales or distribution of an infringing copy of their work. However, in the scenario above, the right to use the work was granted in a valid licensing agreement. The licensor gave the licensee the right to incorporate the protected image into the licensed goods. Does that right allow for the modification of the work? The right to modify a work is covered by a different subsection of the copyright law, which outlines the exclusive rights of the copyright owner: "The owner of copyright under this Title has the exclusive right to do and to authorize any of the following: ... (2) to prepare Derivative Works based upon the copyrighted work." Derivative Work also is defined in the copyright act as: "A work based upon one or more pre-existing works, such as ... art reproduction ... or any other form in which a work may be re-cast, transformed, or adapted." Therefore, only copyright owners have the right to re-cast, transform, or adapt their work of art or to grant a third party the right to do so. Making any significant changes to licensed artwork without the licensor's permission would be the unauthorized creation of a Derivative Work, a copyright infringement.

It is fairly standard in licensing contracts to provide a licensee some latitude in regard to the modification of a work so that it will be compatible with the licensed product. One end of the spectrum might be modifying some colors or elongating a piece slightly so a square piece might fit better on a rectangular object or cropping a rectangular object into a circle so it would fit on a plate. The other extreme would be significantly changing the underlying work by removing or adding elements to it, such as putting Oprah's head on Ann Margaret's body (yes, it's true). All these variations can fall under the definition of a Derivative Work.

The extent that changes must be cleared by the licensor should be in the underlining license agreement. They also might get picked up under the approval process that usually is granted to the licensor. However, if the licensee creates the product and doesn't show it to the licensor or submits it for approval to the licensor at a late stage, in addition to a breach of contract, there very well may be a copyright infringement suit at issue. A licensee can attempt to raise "custom of trade" wherein it would argue that notwithstanding what the contract says, the custom in the industry would provide that these types of changes are made by "everyone" without permission, so it is OK. The law is fairly clear that when there is not a written contract, custom of trade can be introduced to help establish the parties' rights. On the other hand, when there is a written contract, custom of trade evidence will not even be admitted for the judge or the jury to hear, let alone be a determinative fact. From a copyright point of view, the modification or alteration of a licensed image without permission either in the licensing agreement or a specific in-writing granting of permission can lead to a copyright infringement claim by the licensor, a termination of the license, and the granting of an injunction stopping the shipment of any of the goods and their ultimate destruction. Further, any retailer that sells (or sold) those goods also would have liability to the licensor.

Case Studies

One case of particular interest is that of Jeffrey Hunter vs. Winterland Productions and the San Diego Yacht Club. Hunter is a professional photographer who signed a licensing agreement with Winterland in San Diego, allowing the company to manufacture silk-screen-printed apparel using slides of photographs he had taken of the America's Cup Yacht Race. The license allowed the defendants the use of the photos as guides, models, and examples for illustrations to be used on screen-printed T-shirts and other sportswear. Several years later, Winterland and the San Diego Yacht Club created a new line of America Cup T-shirts that displayed digitally altered versions of the images from Hunter's photographs. Hunter sued and lost at trial, but he prevailed on appeal where the court found that the altered use of the photos exceeded the terms and scope of the license and, therefore, was an unauthorized use and infringed on his copyrights. Winterland argued that flipping the images, pasteurizing the colors, and changing the backgrounds transformed the images on the T-shirts from the photographs into illustration, and that made its actions appropriate. The court did not agree that destroying the original images' photographic quality in any way gave Winterland the right to make these changes.

What if you have a license to use the name and likeness of a celebrity, but to better fit the ad campaign or product, the celebrity's image is modified? Such an action would be covered by the earlier copyright discussion as to the photographs, but as to the celebrity image, a new and different set of issues arises. Depending on the nature of the transformation, there may or may not be liability. In a case involving Dustin Hoffman not long after he appeared in the movie, Tootsie (in which he dressed as a woman), an article was published in Los Angeles magazine's 1997 "Fabulous Hollywood Issue." Part of the article was a section called "Grand Illusions" in which the magazine used computer technology to alter famous film stills to make it appear the actors were wearing spring 1997 fashions. The article had 16 different Hollywood icons' photos including the still of Hoffman from Tootsie. However, the magazine replaced Hoffman's body (in the original he was decked out in a long-sleeve red-sequined dress) with that of a male model wearing a spaghetti-strapped cream-colored silk evening dress and high-heeled sandals. Hoffman took umbrage at this new portrayal of himself and the fact that the magazine did not have his permission to use his likeness in this manner. His suit was unsuccessful as the court agreed with the magazine that its use was a parody and, therefore, protected by the First Amendment. However, that ruling did not address the issue that the magazine's use of the photo created the false implication that he approved of the use of his name and likeness and that he somehow was associated with the magazine. The court found this to be a much closer question, but since it was a news magazine and a non-commercial use, the magazine prevailed. However, in a purely commercial context, the same result might not have been reached.

As an example, Muhammad Ali successfully sued Playgirl magazine when back in 1978 it created a photo depicting a nude black man with Ali's face seated in the corner of a boxing ring. The attorneys for Playgirl claimed the critical question was whether it was a protected use to portray an individual who's in the limelight and very much a public figure in a magazine of general distribution. The court found this was a commercial use "for purposes of trade" and there was no information of a newsworthy dimension to the use of Ali's imageā€”and Ali got his injunction.

Resist the Urge

Finally, if you decide to use a look-a-like because you can't get a celeb's permission to use his or her image, you probably will end up on the losing end of a lawsuit. There was a string of look-a-like cases several years ago in which the original celebrity prevailed. The leading plaintiff in several of them was Woody Allen.

Licensees: If you have an overwhelming urge to modify a licensed image or likeness because you think you can enhance it or if you need to make changes so it better fits your product or ad campaign, resist the urge, get permission, or stick with the unaltered artwork unless those rights are clearly spelled out in your agreement. Even if you think giving a star a buff body and removing 20 years from his or her face would be appreciated, don't count on it.

Joshua Kaufman, Esq., is a partner in the law firm of Venable, LLP. Based in Washington, DC, his practice is national in scope. He also is an adjunct professor of law at American University Law School and has published more than 200 articles on various topics in copyright, art, and licensing law. Many of his articles can be read and downloaded from www.jjkaufman.com.

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