Commissioned Art: Copyright Threat, or Copyright Menace?

Standard Disclaimer: I am an attorney, but I am probably not your attorney. Nothing in this post is legal advice and nothing in it should be applied to the facts of any real-world dispute. Copyright law is heavily fact-dependent. Consult an attorney licensed in your jurisdiction and familiar with the relevant law before making legal decisions.

I am in the market for some artwork to use on the cover of a book I wrote. Being a good Internet citizen and neighbor, I have been trying to find an artist who is a member of one or more of the communities I am part of, or at least adjacent to (shut up, @boozybadger) on the Internet to provide said art, in exchange for which I propose to provide cold hard cash, or at least the digital equivalent thereof. I have done this before: for instance, the logo I use for my law firm, I commissioned from a student who makes logos to earn money for school. Cool, huh?

Legal Inspiration Logo!

However, this is not a request for quotes on artwork, this is a post about the legal questions related to commissioning artwork. Mostly, the copyright question. And it’s a doozy.

Scenario: I go online and find an artist whose style I like to draw a picture of my original fictional character, the LawLizard*. This is just a portrait of the character itself, but this scenario could cover almost any request for a drawing or any other form of protectable artwork, including a sculpture, a poem, you name it.

Anyway, we have the following exchange of emails:

Me: I love your art. I see you take commissions and charge $50 for a full-body shaded character portrait. Here is a description of my original character, the LawLizard. He is an anthropomorphic lizard-man who wears a black suit and has light greenish-yellow pebbly scales. If you will draw him for me I will PayPal you $50.

Artist: That will be fine. Please send $25 deposit to artist@artistemail.com via PayPal and I will send you a line art sketch for approval.

Me: *sends deposit*

Artist: *sends line art sketch*

Me: That’s good, but his scales are not quite so big, he should be more slender, and he has more of a roguish smirk sort of expression.

Artist: *sends revised line art sketch*

Me: Perfect! Please do the color and the shading.

Artist: *sends final shaded artwork*

Me: I love it it’s the best thing ever here is the rest of your money. *sends balance of funds*

Question: When the artist sends me the final drawing file, what have they sold me? When I send them the balance of the payment, what have I bought?

The answer may very well be, “they sold me a drawing.” Which seems tautological, but isn’t: the more helpful question is, what didn’t they sell me? And the answer to that is, “A copyright.” They probably sold me a drawing and that transaction included an implied license to the copyright on that drawing. Which is very different.

Let’s unpack that a little.

First, why didn’t they sell me the copyright for the drawing? Answer: Because copyright assignments have to be in writing. See: 17 U.S. Code § 204. Execution of transfers of copyright ownership. While these emails are writings, there is no mention of copyright assignment or ownership, and they are almost certainly inadequate to establish an intent to assign the copyright of the drawing. So I don’t own the copyright, I can’t file a copyright registration, and arguably I can’t do things like file DMCA takedown notices if someone takes my LawLizard picture after I post it on Twitter and puts it on their own website, because I don’t own the copyright and don’t represent the holder of copyright.

“But!” I hear you cry. (I keep telling you: Get rid of that Google Voice thing.) “The LawLizard is your character. Don’t you have a copyright in your character? Checkmate, greedy grabby artists!”

Answer: Maybe, maybe not. Copyrights in characters are very hard to establish, if you are just arguing that the character itself is unique enough to qualify for protection. There is nothing in the record to indicate that the character itself has become a significant enough artistic creation, absent the physical depiction, to be protectable.

“But but!” you respond, as I try not snicker at your unfortunate phrasing. “You DID describe him! The artist was just drawing what you told her to draw, so the depiction is your creation, not hers! Double checkmate!”

Okay first, double checkmate isn’t a thing. Second… maybe, maybe not. “An anthropomorphic lizard man” isn’t the description of a specific physical depiction: it’s basically an idea. And ideas cannot be copyrighted. You can’t copyright a lizard-man. You can only copyright that lizard-man. Now, I did add some more details. “Black suit, pebbly greenish-yellow scales, slender, roguish smirk.” So that’s specific enough, right?

Maybe, maybe not.

It’s probably getting close. But those are all still pretty abstract. The artist had tremendous freedom to interpret those abstract elements and create a unique and original embodiment (sorry, patent lawyer) of the idea of a greenish-yellow pebbly-scaled slender anthropomorphic lizard-man in a black suit. Could I argue that I own the copyright in the LawLizard, or at least am a joint author (all artists and creators are “authors” to copyright lawyers, it’s a lawyer thing) of the work? It depends. I think you could make a colorable argument to a court, but I would tell a client in this position that they were facing an uphill battle.

So. Assuming I don’t own the copyright, what do I have? And more importantly, what can I do with it without getting myself in potential legal trouble?

I have the drawing, and I have an implied license to use the drawing for the ordinary and reasonable purposes one would expect the purchaser of such a drawing to use it. The way courts usually phrase this is that I have the “normal and natural” rights which one would expect to get. Well, there’s nothing normal or natural about the LawLizard, so this license is already off to a rough start. But it certainly exists: I do have an implied license of some kind.

Before we get into what that means I should point out that the license is not exclusive, because exclusive licenses also need to be in writing. The law views exclusive licenses as a form of transfer of ownership, just like assignments, and they must be in a specific writing signed by the holder of the rights. (17 U.S. Code § 204 supra, see also 17 U.S. Code § 101.) So that means that the copyright holder can use the work for anything that my (implied) license doesn’t forbid. Which is, probably, nothing. So if they want to make t-shirts of it and sell them online, they probably can. If they want to sell it to somebody to use on the cover of a book, they probably can. It depends.

Copyright is often referred to as a “bundle of rights,” in that it includes four major and somewhat independent rights. (“Four” is an arbitrary number in some ways as they can be subdivided in various fashions and there are other ancillary rights for various kinds of works, but these are the big ones.) You can read a summary of those rights here: https://copyrightalliance.org/ca_faq_post/rights-copyright-owners-ata/. I’ll discuss each of them in turn as they related to my commissioned character drawing.

  1. The right of reproduction.
    No, not for the LawLizard to reproduce: that’s not what we’re here for and wipe that smile off your face. This is, at heart, the right to make copies. “Copies” is very broad. For instance if the artist had mailed me a physical drawing, and I scanned it in, the digital file that results is a copy. If I upload it to Twitter and use it for my avatar, the file on Twitter’s server is a copy. Et cetera, ad infinitum, ad nauseum.

    As far as my implied license, I think it would be easy to argue that as I asked for a picture of my original character, I have the right to make digital copies so I can use it for a Twitter avatar, the right to make a physical copy so I can make a con badge with it or put a printout on the wall of my office, things like that. Do I have the right to make a thousand prints and sell them? It depends, but arguably not. (Especially because of the distribution right, infra.) It would depend on context and expectations and would be heavily fact-dependent. If it were me, which for purposes of this illustration it is, I wouldn’t do that, at least not without written permission (i.e. an extension/conversion of the implied license into an explicit license) from the artist.
  2. The right to create derivative works.
    Suppose I want the LawLizard to have a gray suit instead of a black one. I load the image into the GIMP (I have Photoshop, but that’s on my Mac and it’s downstairs and I’m lazy.) and change his suit from black to gray. The new image is a derivative work. Or is it? See 17 U.S. Code §101 supra. Changing the suit from black to gray may not even be enough of an artistic act to create an “original work of authorship.” If so then my new image is just a not-entirely-faithful copy and see #1 above. But assuming that it is, or I make enough other changes to create an original work of authorship, I have infringed this right by creating it without permission unless my implied license includes the right to do this

    I think my implied license would probably encompass something like changing his suit from black to gray, or making a black and white version, or dropping him into a background that I drew or (lawfully) downloaded from the Internet. Characters are characters, they do things like that. But a more elaborate derivative work, like say making a three-dimensional sculpture? It depends. There are very famous copyright cases that address exactly this question, although there was no implied license in most of them. See e.g. Rogers v. Koons, 960 F.2d 301 (2d Cir. 1992). So basically, again, whether any particular derivative work is allowed by the license is a fact-dependent question, but most reasonable derivative works are probably going to be okay depending on the use and the potential infringement of other parts of the copyright.
  3. The right of distribution.
    This is the right to control how the work, or copies of the work, are transferred to others. If I don’t have the right to distribute, I can’t transfer the work to someone else, and I can’t transfer copies of it to someone else. Letting someone see the work is not distribution (but see the right of public display or performance infra.) So if I make a LawLizard T-shirt, I can walk around with it on and fear nothing but odd looks. But if I then try to give the LawLizard T-shirt to someone else, I am distributing a copy of the work.

    So can I make a thousand prints and sell them? Can I give away LawLizard T-shirts at my promotional rallies? It depends, but arguably not. There’s nothing in the email about doing things like that, and the question would then become whether I had a reasonable expectation that I was getting valuable distribution rights when I paid fifty dollars for a drawing. If I were me, and I was once, I would not do this without written permission (i.e. an explicit license) from the artist.
  4. The right to control public display or performance.
    This is just what it sounds like: the right to control when the artwork is displayed (for static artworks like drawings or sculptures) or performed (for dynamic artworks like musical compositions, plays, motion pictures, or video games yes I’m looking at you Twitch streamers) where the public can see. What constitutes the “public” is not super explicitly defined by the statute: it says “public” display is “[display to] persons outside of a normal circle of a family and its social acquaintances.” (17 U.S. Code §101 supra.)

    We may all be one big happy family, metaphorically speaking, at SuperFunCon, but it still probably counts as a public display if I run around the hotel with my LawLizard flag. (Of course I have a flag. Why wouldn’t I have a flag?) Happily, while it (say it with me!) depends, the creation of an original character drawing almost certainly includes a reasonable public display right, including the right to make and carry the proud flag of the Final Republic, which displays LawLizard on a field d’or with the stirring motto ‘Veritas est Magna, Et Prevalebit!’ Said flag is, arguably, a derivative work as well, but we already talked about that.

    Now, do I have the right to make a ten-foot tall copy of the picture and set it up in the hotel lobby, assuming I can ditch security long enough to get away with that? Maybe, maybe not. That might not be a public display which my implied license would cover. Again, it would be heavily fact-dependent and context and understanding would be key. Hypothetical Me probably wouldn’t do that without a more explicit license, but it wouldn’t worry me nearly as much as some of the other examples I’ve given.

Okay, so what does all this mean to you, who is not Hypothetical Me, but rather instead either an artist who wants to be fair to patrons but not sell valuable rights too cheaply or without intending to, or a patron who wants the reasonable right to use their commissioned art but understands that you get what you pay for and you should pay for what you get?

Well, it’s complicated.

Sorry, I know that’s not as helpful as it might be, but it is what it is and what it is is complicated. But here is some general guidance (NOT LEGAL ADVICE.)

  1. If you are an artist, you should make clear on your website what your terms are when you do a commissioned work. For instance, you might very well offer an exclusive license to commissioned works, but retain the right to display them for purposes of promoting your own services. Whatever you want to offer is what you want to offer: just make it clear.
  2. If you are a patron, you should make clear in your commissioning request, and confirm in association with your payment, what you expect to get. If you want the right to make copies and sell them, whether as prints, or on T-shirts, or as the cover of a book, you should explicitly say so. If you don’t want anyone else to use the image for anything, you should ask for an exclusive license or an assignment of copyright – and you should be ready to pay for it. If you just want to use the thing for a Twitter avatar and a con badge, you don’t necessarily need an assignment of copyright, but if you don’t want others using it you do need to make clear that you want an exclusive license.

All that being said, let me be clear about something. In the end, paying a few tens of dollars for a commissioned work from an online artist rarely results in significant legal battles. Do you need to hire a copyright lawyer every time you want a new OC avatar drawing? Of course not. That’s ridiculous, and if you want to send another batch of assassins because I said that, American Bar Association, bring them on. (The last ones were delicious.)

But if you’re a patron and money is going to be involved after you pay for the drawing – if you’re going to use it to make money directly by selling copies or indirectly by using it to promote commercial activity – then you need an agreement, in writing, that says you are allowed to do that, and ideally that nobody else is.

And if you’re an artist who wants to be fair to your patrons and be reasonably compensated for the valuable rights associated with your work, you need to make clear what you’re selling and you should probably consult an attorney to help you draft a standard commission agreement and/or term sheet.

Thank you for reading: as always, questions and comments are welcome!

– Marc

*The LawLizard was created for purposes of illustration (ha!). The book I mentioned does not contain any anthropomorphic lizard-men, suited or unsuited. If you want to draw the LawLizard, you go right ahead.

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