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.
